Lebanon Chemical Corp.

Trademark Trial and Appeal Board

May 11, 2001

No. 75739273 (T.T.A.B. May. 11, 2001)

5/11/01
Paper No. 8
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lebanon Chemical Corporation
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Serial No. 75/739,273
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John V. Moriarty of Woodard, Emhardt, Naughton, Moriarty &
McNett for Lebanon Chemical Corporation.
Jon Schiffrin, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Chapman, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Lebanon Chemical Corporation has filed an application
to register the mark PLANTING for “mulch containing paper
and fertilizer for lawn, garden and commercial use.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark,
if used in connection with the goods identified in the
application, would be merely descriptive thereof. The
1 Serial No. 75/739,273, filed June 29, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
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refusal has been appealed and applicant and the Examining
Attorney have filed briefs. An oral hearing was not
requested.
The Examining Attorney maintains that the term
PLANTING is merely descriptive of a use or purpose for
applicant’s mulch. He argues that mulch is used as a part
of the planting process and has made of record several
excerpted NEXIS articles as evidence of the correlation
between planting and mulch, of which the following are
representative:
Mulch your plantings. Mulch reduces weed competition
and permits the easy removal of seeds and foreign
grasses. It also reduces the amount of watering
needed.
The Times-Picayune (February 3, 2000);
Mulch is an ideal conclusion to the planting process,
Owings said. Pine straw is a good mulch.
Sunday Advocate (Baton Rouge, LA)(February 13, 2000);
350 yards of fresh topsoil and mulch were trucked in
for planting “all the herbs and vegetables I could
possibly grow in this climate,” Kuleto says.
The San Francisco Examiner (March 5, 2000).
The Examining Attorney argues that applicant’s mulch not
only protects the plants, in the manner of an ordinary
mulch,2 but since applicant’s mulch contains fertilizer, the
2 The Examining Attorney has made of record the dictionary
definition of a mulch as “a protective covering, usually of
organic matter such as leaves, straw, or peat, placed around
plants to prevent the evaporation of moisture, the freezing of
roots, and the growth of weeds.” The American Heritage Dictionary
of the English Language (3d ed. 1992).
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mulch would be used in the planting process to add this
component.
Applicant takes the position that although mulch may
be used in planting, it is only a supplemental item such as
a garden hose or a wheelbarrow, rather than a necessary
product in the planting process. Thus, applicant argues,
the consuming public would not be likely to immediately
associate mulch with the term PLANTING. Applicant contends
that although its mulch may be used by consumers in the
manner of conventional mulches, this is not the perceived
use for its fertilizing mulch. The added benefit of its
mulch is that it can be placed around struggling or
unhealthy shrubbery and plants without the need for
supplemental fertilizer.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a characteristic or feature of the goods or services with
which it is being used, or is intended to be used. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). Whether or not a particular term is merely
descriptive is determined not in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the designation is being or
will be used, and the significance the designation is
Ser No. 75/739,273
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likely to have to the average purchaser as he or she
encounters the goods or services bearing the designation,
because of the manner in which it is used. See In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary that the term describe all the characteristics or
features of the goods or services in order to be merely
descriptive; it is sufficient if the term or phrase
describes one significant attribute thereof. See In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
We agree with the Examining Attorney that a mulch, by
definition, is directly associated with the planting
process. The NEXIS evidence introduced by the Examining
Attorney fully substantiates this association. Mulch is
not merely a supplemental item similar to a garden hose or
wheelbarrow which may be used for various purposes, one of
which is planting. As shown by the NEXIS articles and the
dictionary definition, mulch is used to protect new
plantings, as part of the planting process. Thus, whether
we view the term PLANTING as a descriptor of the process
during which the mulch is used or as a descriptor of the
plants or plantings around which the mulch is placed,
PLANTING is merely descriptive of the mulch with which
applicant intends to use the term.
Ser No. 75/739,273
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The question is not whether the consuming public would
be likely to associate the term PLANTING with a mulch such
as applicant’s, but rather whether the public would be
likely to grasp the informational nature of the term
PLANTING when encountered in connection with the mulch.
The term is not to be considered in a vacuum, but rather in
relation to the particular goods with which the term is
intended to be used. Applicant acknowledges that its mulch
may be used in the manner of conventional mulches, which
are used in the planting process or at the time of
planting. While applicant’s particular fertilizing mulch
may provide the additional benefit of eliminating the
separate need for fertilizer, we see no reason why this
would detract from the descriptiveness of the term
PLANTING. The mulch remains a mulch for use in the
planting process and for the benefit of plantings and the
descriptive significance of the term PLANTING, when used in
connection therewith, would be readily understood by the
purchasing public.
Accordingly, we find the term PLANTING, if used, as
intended, in connection with applicant’s mulch containing
paper and fertilizer, would be merely descriptive thereof.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
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