Superconductor Technologies, Inc.

Trademark Trial and Appeal Board

Aug 6, 1997

EX (T.T.A.B. Aug. 6, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG 6, 97
Paper No. 10
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Superconductor Technologies, Inc.
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Serial No. 74/633,855
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Corrine M. Freeman of Lyon & Lyon for Superconductor
Technologies, Inc.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Superconductor Technologies, Inc. has appealed from the
refusal of the Trademark Examining Attorney to register
SUPERFILTER for "filters, namely cryogenic electronic
filters and cooled electronic filters formed from
superconductive materials."1 Registration has been refused
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1), on the ground that applicant's mark is merely

1 Application Serial No. 74/633,855, filed February 13, 1995
and asserting a bona fide intention to use the mark in commerce.
Ser No. 74/633,855
2
descriptive of its goods. Specifically, the Examining
Attorney asserts that the mark consists of the generic name
for the goods, FILTER, and the laudatory term, SUPER, and
that when these terms are combined as SUPERFILTER, the mark
directly conveys to consumers that the filters are superior.
Applicant and the Examining Attorney filed briefs. An
oral hearing was not requested.
In support of her position that the mark is merely
descriptive, the Examining Attorney has made of record
dictionary definitions for the word "filter" which include,
inter alia, "a porous substance through which a liquid or
gas is passed in order to remove constituents such as
suspended matter"; "a device containing or composed of such
a substance so used"; and "an electric, electronic, acoustic
or optical device used to reject signals, vibrations, or
radiations of certain frequencies while allowing others to
pass" and definitions of the prefix "super" which include
"superior in size, quality, number, or degree" and
"exceeding a norm."2 We also judicially notice the
definitions of the word "super" as meaning "of a superfine
grade or quality" and "of great worth, value, excellence, or
superiority."3

2 WEBSTER'S II New Riverside University Dictionary (1994).
3 Webster's Third New International Dictionary, unabridged
(1976). The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd. 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 74/633,855
3
In addition, the Examining Attorney has pointed to a
line of cases in which marks comprising the word SUPER
combined with the generic term for the goods have been held
to be merely descriptive. See Quaker State Oil Refining
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361 (CCPA
1972) (SUPER BLEND found to be merely descriptive of blend
of motor oils); In re United States Steel Corp., 225 USPQ
751 (TTAB 1985) (SUPERROPE held merely descriptive of wire
rope); In re Carter Wallace, Inc., 222 USPQ 729 (TTAB 1984)
(SUPER GEL held merely descriptive of lathering gel for
shaving); In re Samuel Moore & Co., 195 USPQ 237 (TTAB 1977)
(SUPERHOSE! held merely descriptive of hydraulic hoses made
of synthetic resinous material).
Applicant argues that the present situation is
distinguishable from these cases because SUPER, as used in
its mark SUPERFILTER, does not have only a laudatory
significance with respect to its goods. Applicant contends
that the sophisticated purchasers of the identified goods
will recognize SUPER as a suggestive reference to the
superconductor materials used in the goods, and also as a
reference to the source of the goods--applicant,
Superconductor Technologies, Inc.4 As a result, applicant

4 The Examining Attorney has made of record excerpts from the
Acronyms, Initialisms & Abbreviations Dictionary, 20th ed.
(1996), showing that "super" is not a recognized abbreviation
for "superconductor" or "superconductive." Thus, aside from any
question of whether SUPERFILTER has a laudatory descriptive
significance, this evidence tends to support applicant's
position that SUPERFILTER would be suggestive, and not
descriptive, of filters made from superconductive material.
Ser No. 74/633,855
4
asserts that the consumers of the goods will realize that
SUPER, as used in the mark, is not meant to be laudatory.
Applicant also analogizes this case to Blisscraft of
Hollywood v. United Plastics Co., 294 F. 2d 694, 131 USPQ 55
(2d Cir. 1961), in which POLY PITCHER was found not to be
merely descriptive of polyethylene pitchers because, in
addition to indicating the plastic ingredient of the
product, it suggested the historical figure Molly Pitcher,
and to Application of Colonial Stores, Inc., 394 F. 2d 549,
157 USPQ 382 (CCPA 1968), in which SUGAR & SPICE was found
not merely descriptive of bakery products because, in
addition to describing the ingredients of the products, it
evoked the nursery rhyme.
Whether a given mark is suggestive, and therefore
registrable without evidence of acquired distinctiveness, or
merely descriptive, depends on whether the mark immediately
conveys knowledge of the ingredients, qualities, or
characteristics of the goods with which it is used, or
whether imagination, thought, or perception is required to
reach a conclusion on the nature of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). The
Courts have long recognized that there is often but a thin
line of distinction between a suggestive and a merely
descriptive term, and it is frequently difficult to
determine when a term moves from the realm of suggestiveness
into the sphere of impermissible descriptiveness. See In re
Recovery, Inc., 196 USPQ 830 (TTAB 1977)
Ser No. 74/633,855
5
That determination is made even more difficult in the
present case, because the application is based not on use in
commerce, but on an intention to use the mark. Thus, we
have no specimens which could help us in assessing the
reaction of consumers for the identified filters. In these
circumstances, and in view of applicant's assertions that
the clearly sophisticated consumers of these goods would
view SUPERFILTER not as a laudatory term for filters of
superior quality, but as a suggestive term indicating the
material from which the filters are formed, we believe, at
the very least, that doubt exists about the mere
descriptiveness of the mark.5 Such doubt must, as is well-
established by trademark law, be resolved in applicant's
favor. In re The Gracious Lady Service, Inc., 175 USPQ 380
(TTAB 1972).6

5 We also note that the Courts and the Board have treated SUPER
marks somewhat inconsistently. Although, in general, marks
consisting of SUPER combined with the generic term for the goods
have been found to be merely descriptive, there is at least one
case where a "SUPER mark" was found to connote a vague desirable
characteristic or quality, such that the mark as a whole was
held to be not merely descriptive. See In re Ralston Purina
Company, 191 USPQ 237 (TTAB 1976) (SUPER SLUSH for concentrate
for making a slush type soft drink).
6 We would point out, however, that if the specimens which
applicant submits with its Statement of Use show that the mark
SUPERFILTER clearly conveys to consumers a laudatory descriptive
significance of a super or superior filter, it would not be
inappropriate to refuse registration pursuant to Section 2(e)(1)
at that time. See TMEP Section 1105.05(f)(ii).
Ser No. 74/633,855
6
Decision: The refusal of registration is reversed.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board