American Fastsigns, Inc.

Trademark Trial and Appeal Board

Sep 20, 2000

No. 75357678 (T.T.A.B. Sep. 20, 2000)

Paper No. 14
GFR
9/20/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Fastsigns, Inc.
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Serial No. 75/357,678
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Alton W. Payne of Payne, Lundeen, D'Ambrosio & Arismendi,
L.L.P. for American Fastsigns, Inc.
Jessie W. Billings, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney).
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Before Hohein, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
American Fastsigns, Inc. has filed an application to
register "FASTSHIP" as a mark for services identified as
"expedited delivery of signs, namely, digital color
graphics, design ideas, logos, symbols, trade show
displays, vehicle graphics, magnetics and signage."1

1 Serial No. 75/357,678, filed September 16, 1997, asserting
December 27, 1996 as a date of first use and first use in
commerce. Applicant included a claim of ownership of
registrations for: "FASTSIGNS"; "FASTSIGNS THE ONE DAY SIGN AND
LETTERING EXPERTS"; "FOR A QUALITY SIGN THAT'S RIGHT. ON TIME.";
and "QUALITY DISPLAYS. IN JUST DAYS."
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/357,678
2
Registration has been refused under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that, as
used in connection with applicant's services, the mark is
merely descriptive of them.
When the Examining Attorney made the refusal final,
applicant appealed. Briefs were filed, but an oral hearing
was not requested.
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods.
In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The
entirety of the Examining Attorney's argument in support of
the refusal is that one feature of applicant's services "is
the speedy delivery of signs. The applicant's specimens
state that with FASTSHIP the exhibits and displays arrive
in 24 hours.2 When the mark is used in connection with the
services being provided, it is clear to a consumer that the
wording refers directly and immediately to the type of
shipping provided by applicant."
Applicant argues that its services "are more than the
expedited delivery of signs" and include personal services
from sign experts; that even individuals in the signage or

2 The specimen advertisement includes the following: "Exhibits &
Displays in 24 Hours with FASTSHIPsm."
Ser. No. 75/357,678
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shipping industry would not view the FASTSHIP as
descriptive because the term has multiple meanings; that
potential purchasers of the services confronted with the
mark would not readily derive the nature of the services
from the mark and would have to exercise imagination,
thought or perception to deduce the nature of the services;
and that applicant knows of no use of the term by another
to identify shipping services. In addition, applicant
paraphrases dictionary definitions of the terms "fast" and
"ship" and concludes that, given so many different meanings
for each term, "it is impossible for the viewer [of
FASTSHIP] to forthwith be apprised of the meaning with
respect to the goods or services."
It is well settled that a term is considered merely
descriptive of services, within the meaning of Section
2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof,
or if it directly conveys information regarding the nature,
function, purpose or use of the services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218
(CCPA 1978); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
It is not necessary that a term describe all of the
attributes of the services in order for it to be merely
Ser. No. 75/357,678
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descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them.
Moreover, whether a term is merely descriptive is
determined not in the abstract, but in relation to the
services for which registration is sought, the context in
which it is being used on or in connection with those
services and the possible significance that the term would
have to the average purchaser because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Consequently, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark
alone is not the test." In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985).
We take judicial notice of the following pertinent
definitions for "fast" and "ship":
"fast 1. moving or able to move, operate,
function, or take effect quickly; quick; swift;
rapid"
The Random House College Dictionary 480 (Revised
Ed. 1982)
"ship 6. to send or transport by ship, rail,
truck, plane, etc."
The Random House College Dictionary 1214 (Revised
Ed. 1982)
In view of the above, when "FASTSHIP" is considered in
conjunction with applicant's expedited delivery services,
and in the context in which it is being used by applicant,
Ser. No. 75/357,678
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as demonstrated by the specimens of use, we agree with the
Examining Attorney's conclusion that purchasers of
applicant's services will, without the need for thought,
imagination or perception, conclude that applicant's
"FASTSHIP" services are an expedited delivery service
offering quick or swift shipping and transport. Cf. In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505
(CCPA 1980) (QUIK-PRINT descriptive of fast and prompt
printing services); In re Miteyfast Service Centers, Inc.,
223 USPQ 1154 (TTAB 1984) (MITEY FAST descriptive of auto
maintenance services provided with great speed).
Applicant argues that its services involve more than
just expeditious delivery of its goods, and include
"personal services from sign experts." We, however,
consider whether applicant's asserted mark is descriptive
only in conjunction with the identified services, i.e.,
expedited delivery of signs.3 Moreover, to the extent
applicant may be arguing that its services, as identified,
involve other aspects apart from expedited shipping and

3 The qualifying language in the identification, which follows
the term "namely", does not expand the nature of applicant's
services. It is viewed as introducing terms that merely provide
greater particularity for the phrase that precedes the term, not
as identifying additional services. See, e.g., TMEP §804.08(c).
Whether applicant intended this identification, which was
introduced by amendment, to indicate a broader range of services,
we cannot tell. In any event, the question of the true scope of
applicant's services is not before us.
Ser. No. 75/357,678
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delivery, "FASTSHIP" is still properly refused registration
as merely descriptive because it readily describes a
significant aspect of the services. See Eugene Biro Corp.
v. Empire Diamond Corp., 40 USPQ2d 1527, 1530 (SDNY 1996)
("The fact that the mark does not specify that the service
is aimed at wholesalers, that it is wholly automated, or
that it allows a caller to specify various characteristics
of the stone sought does not alter the essentially
descriptive nature of the mark.")
Even if we accept applicant's unsupported argument
that there are no others who use this term to describe
expedited delivery services, that does not lessen the
readily descriptive connotation for the term as used by
applicant. It is well settled that the mere fact that one
is the only user of a descriptive term does not render the
term registrable.
Decision: The refusal of registration is affirmed.
G. D. Hohein
T. E. Holtzman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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