T. M. Shea Products, Inc.

Trademark Trial and Appeal Board

Apr 10, 2003

No. 76279120 (T.T.A.B. Apr. 10, 2003)

Mailed:
April 10, 2003
Paper No. 10
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re T.M. Shea Products, Inc.
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Serial No. 76/279,120
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Douglas J. McEvoy of Gifford, Krass, Groh, Sprinkle,
Andersen & Citkowski, P.C. for T.M. Shea Products, Inc.
Susan R. Stiglitz, Trademark Examining Attorney, Law Office
103 (Daniel Vanovese, Acting Managing Attorney).
_______
Before Cissel, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark PROMOSTRIPS (in typed form) for goods
identified in the application, as amended, as “elongated
cardboard strip merchandising displays for use with
existing gondola display units and other existing
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/279,120
2
merchandise supporting structures for merchandising
products,” in Class 16.1
The Trademark Examining Attorney has refused
registration on the ground of mere descriptiveness. See
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). When
the refusal was made final, applicant filed this appeal.
The appeal is fully briefed, but no oral hearing was
requested. We affirm the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). Whether a term is merely descriptive
is determined not in the abstract, but in relation to the
goods or services for which registration is sought, the
context in which it is being used (or intended to be used)
on or in connection with those goods or services, and the
possible significance that the term would have to the
1 Serial No. 76/279,120, filed July 2, 2001. The application is
based on applicant’s asserted bona fide intention to use the mark
in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Ser. No. 76/279,120
3
average purchaser of the goods or services because of the
manner of such use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). Finally, “[w]hether
consumers could guess what the product is from
consideration of the mark alone is not the test.” In re
American Greetings Corporation, 226 USPQ 365, 366 (TTAB
1985).
Applying these principles in the present case, we find
that PROMOSTRIPS is merely descriptive of the goods
identified in the application.
The dictionary evidence submitted by the Trademark
Examining Attorney shows that “promo” is short for
“promotional,” the adjectival form of “promotion,” which
itself is defined as "the act of furthering the growth or
development of something; especially : the furtherance of
the acceptance and sale of merchandise through advertising,
publicity, or discounting."2 Applicant’s goods are
“merchandising displays,” and we find that the word
“promotional” or its shorthand and legal equivalent,
“promo,” directly describes this feature, function or
purpose of applicant’s goods. Applicant admits as much in
2 Merriam Webster’s Collegiate Dictionary (online edition
accessed at www.webster.com/cgi-bin/dictionary).
Ser. No. 76/279,120
4
its reply brief: “In fact, the term ‘promotion’ can
connotate [sic – connote] a number of different meanings,
only one of which being directly related to products
utilized in merchandising displays.” (Emphasis added.)
This direct descriptive significance of the term as applied
to applicant’s goods suffices to render the term merely
descriptive; it is not dispositive or material that, as
applicant further contends, the term “can also reference a
wide variety of wholly unrelated goods and services.” In
re Bright-Crest, Ltd., supra.
Likewise, the term STRIPS is merely descriptive of a
feature or characteristic of applicant’s goods, i.e., their
physical form or shape. Indeed, applicant’s goods are
identified in the application itself as “elongated
cardboard strips.” (Emphasis added.) The Trademark
Examining Attorney’s dictionary evidence shows that “strip”
is defined as “a long narrow piece, usually of uniform
width.”3 Applicant, in its reply brief, essentially admits
that this definition is directly applicable to applicant’s
goods: “With further regard to the term STRIPS, it is
submitted that this term also potentially refers to any of
a great number of different definitions, only one of which
3 Merriam Webster’s Collegiate Dictionary (online edition
accessed at www.webster.com/cgi-bin/dictionary).
Ser. No. 76/279,120
5
is a cardboard strip merchandising display.” (Emphasis
added.) Again, it is this merely descriptive significance
of the term as applied to applicant’s goods that is
relevant here; it is immaterial that the term may have
other meanings in different contexts. In re Bright-Crest,
Ltd., supra.
Thus, applicant’s mark is composed of two terms, PROMO
and STRIPS, each of which is merely descriptive as applied
to applicant’s goods. We find that these terms are as
merely descriptive when considered together as they are
when considered separately. That is, combining PROMO and
STRIPS (whether into the two-word composite PROMO STRIPS or
into the compound term PROMOSTRIPS) does not create a
composite which is incongruous or unusual, and does not
vitiate the mere descriptiveness of the two terms
considered separately.
PROMOSTRIPS is the legal equivalent of “promotional
strips,” a term which the evidence of record shows to be
used in a merely descriptive manner in the advertising and
merchandising field. See, for example, the printout from
the website of a merchandising display company called MDI4,
which refers to a “free-standing display unit” comprising a
4 Accessed by the Trademark Examining Attorney at
http://www.mdiworldwide.com/cus-r-b1.htm
Ser. No. 76/279,120
6
“three-sided promotional kiosk,” one side of which “has a
divider track to accommodate one 18”H graphic, and tracks
to hold 8 promotional strips.” (Emphasis added.) See also
the following excerpts of articles obtained from the Nexis
database and made of record by the Trademark Examining
Attorney:
Milkcaps were found in or on specially marked
packages flagged by a promotional strip.
(Marketing News, September 9, 1996);
…Billboards and signs seem to suggest a fashion
convention more than an athletic event. There
are plugs for jewelry, luggage, leather goods,
Swiss watches, skimpy bathing suits and filmy
lingerie. Court Central is surrounded by a
collage of promotional strips for upscale
apparel… (The New York Times, May 24, 1992).
For the reasons discussed above, we find that
PROMOSTRIPS is merely descriptive of the goods identified
in the application. We have carefully considered
applicant’s arguments to the contrary, including any
arguments not specifically discussed in this decision, but
we are not persuaded of a different result.5
Decision: The refusal to register is affirmed.
5 However, we have not considered the third-party registration
evidence attached to applicant’s reply brief or applicant’s
arguments with respect thereto, inasmuch as that evidence is
untimely. See Trademark Rule 2.142(d). Even if that evidence
had been made of record properly, it would not warrant a
different result in this case.