Barcrest, Inc.

Trademark Trial and Appeal Board

Oct 3, 2003

No. 76341740 (T.T.A.B. Oct. 3, 2003)

Mailed: October 3, 2003
Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Barcrest, Inc.
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Serial No. 76341740
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Joseph L. Johnson of Lathrop & Gage L.C. for Barcrest, Inc.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Seeherman, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Barcrest, Inc. has filed an application to register the
term "SHOTFINDER," in the format reproduced below,
for "accessories for hunters, namely[,] electronic devices for
detecting and signaling the presence of metal objects in the
flesh of game animals."1
1 Ser. No. 76341740, filed on November 26, 2001, which alleges a date
of first use anywhere of March 15, 2001 and a date of first use in
commerce of May 18, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76341740
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "SHOTFINDER" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter 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). It is not
necessary that a term describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely 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 goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
Ser. No. 76341740
3
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).
Applicant, while acknowledging in its brief that it
"does not deny that it may be asserted that Applicant's mark
suggests that the goods could be used to locate shot (metal
pieces from a shotgun shell)," argues that the term "SHOTFINDER"
is suggestive rather than merely descriptive of its accessories
for hunters, namely, electronic devices for detecting and
signaling the presence of metal objects in the flesh of game
animals. Among other things, applicant asserts that "SHOTFINDER
is not a 'dictionary word', nor is it, as far as Applicant is
aware, a word which had any existence in the common vernacular
until Applicant coined it." Applicant urges, in view thereof,
that such term "is a short, catchy way of suggesting unique
characteristics of the goods" and that any "potential competitors
(of which there are presently none, due to the novel and
proprietary nature of Applicant's business and products) would be
able to describe similar products and advertise them without the
use of the term coined by ... Applicant." According to
applicant, "the word SHOTFINDER suggest[s] to consumers what the
goods are capable of doing, namely[,] locating shotgun pellets or
bullets, but [it] does not specify or suggest how they will be
located, from where they will be located or what happens once
they are located."
Furthermore, applicant notes that incongruity in a term
"is a strong indicator of suggestiveness" and contends that "the
Ser. No. 76341740
4
coined term SHOTFINDER" (stylized) is particularly incongruous
because no one has ever produced or marketed a device for
locating metal shot in game animals." Applicant thus maintains
that the coined term "SHOTFINDER," "including the stylized 'look'
of the mark," is not merely descriptive of its goods. In
addition, applicant insists that, even if the words "shot" and
"finder" are regarded as merely descriptive of its goods by
themselves, the combination thereof into the term "SHOTFINDER"
results in a valid mark which is not merely descriptive, citing
In re Chesapeake Corp. of Virginia, 420 F.2d 754, 164 USPQ 395,
396 (CCPA 1970) ["SUPERWATERFINISH" for kraft paper held
registrable, and not merely descriptive, in view of showing of
acquired distinctiveness inasmuch as such term is neither generic
nor so highly descriptive as to be incapable of registration] and
In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA
1968) ["SUGAR & SPICE" for bakery products found registrable as a
suggestive rather than merely descriptive term].
The Examining Attorney, on the other hand, argues that
the term "SHOTFINDER" is merely descriptive of applicant's goods,
pointing out in his brief that The American Heritage Dictionary
of the English Language (3rd ed. 1992) defines "shot" in relevant
part as "8. a. A solid projectile designed to be discharged from
a firearm or cannon. b. plural shot Such projectiles considered
as a group. c. plural shot Tiny lead or steel pellets,
especially ones used in a shotgun cartridge. d. One of these
pellets" and lists "finder" in pertinent part as "1. One that
finds: a finder of great hidden treasure." Based on such
Ser. No. 76341740
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definitions alone, which are of record, the Examining Attorney
contends that, "[l]iterally, applicant's mark means something
that finds shot" and that the "metal objects" which applicant's
electronic devices detect and signal the presence of in the flesh
of game animals include "shot," in the sense of lead or steel
pellets used in a shotgun cartridge. Thus, the Examining
Attorney maintains that the term "SHOTFINDER" "is at least prima
facie descriptive" of a characteristic or feature of applicant's
goods.
Moreover, in his brief the Examining Attorney further
points out, in support of his position, that as shown on the
front of the packaging for applicant's goods which applicant
submitted as specimens of use:
The specimens of record indicate that
applicant's goods "[d]etect elusive pieces of
shot before cooking", [e]liminate discomfort
of biting into shot" and "[m]akes traditional
Game Bird cleaning obsolete". In addition,
the specimens implore purchasers to "[u]se
SHOTfinder to ensure your gourmet creations
are SHOT-FREE!" "
The back of such specimens, we notice, also contains the
following information about applicant's goods (bold in original):
IN THE FIELD
Clean your game birds as you normally would.
Remove any visible shot .... Then turn your
SHOTfinder on .... Next, while holding the
SHOTfinder away from any metal, adjust the
sensitivity control carefully to the critical
point at which the internal beeper silences.
Begin scanning the parts of your game bird
intended for consumption by slowly passing
the detecting unit (front lower area of your
SHOTfinder) thoroughly over each area
intended for consumption paying particular
attention to those areas where shot may have
appeared to enter. When shot is detected,
the LED indicator lights will illuminate and
Ser. No. 76341740
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the internal beeper will sound. .... Press
the on/off button to turn your SHOTfinder off
when you are finished scanning.
NOTE: Scanning too quickly, avoiding close
contact with your game bird or scanning with
the wrong area of the detecting unit may
prevent your SHOTfinder from sensing and
alerting the presence of shot.
IN YOUR KITCHEN
While most shot will be detected and removed
during field processing, a thorough scanning
with your SHOTfinder at this stage of game
bird preparation is suggested to help detect
and eliminate any elusive shot. .... Pay
particular attention to any area where shot
appears to have entered. .... It is
recommended that you fillet when possible to
allow access to both sides of your desired
servings for effective thorough scanning and
shot detection. ....
AT YOUR GRILL
.... Now is the time for you to make final
use of your SHOTfinder. .... Although it is
unlikely that any shot has been missed at
this point, you'll receive hero's honors if
you discover even one isolated piece of shot
that had been accidentally overlooked.
In addition, under the heading of "Specifications," we observe
that the back of applicant's specimens of use includes references
to, inter alia, both "Shot Detected: Responds equally well to
all types of shot used in commercially sold shot shells" and
"Alert Indicators: Tone Beeper & LED RED Lights indicate the
presence of any type or size of metal shot" (bold in original).
In view of the above evidence, and inasmuch as, while
scarcely unique, the stylized manner in which applicant uses the
term "SHOTFINDER," namely, "SHOTfinder," makes the constituent
elements of such term even more readily apparent to customers for
and users of its goods, we agree with the Examining Attorney that
consumers would immediately understand that the term "SHOTFINDER"
Ser. No. 76341740
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merely describes a significant characteristic or feature of its
goods, as well as their purpose or function. Specifically, such
term conveys forthwith, without speculation or conjecture, that
applicant's goods are used to find shot in the flesh of game
animals. There is nothing in the combination of the constituent
words "shot" and "finder" into the term "SHOTFINDER" which is
incongruous, ambiguous or suggestive of a double entendre, nor is
there anything about such term which is "catchy" as contended by
applicant.
Admittedly, it is possible, as applicant argues, for
individually descriptive words to be combined to form a valid,
registrable mark which, as a whole, is not merely descriptive.
However, as indicated by the Board in, for example, In re Medical
Disposables Co., 25 USPQ2d 1801, 1804 (TTAB 1992), in order for
such to be the case:
[T]he mere act of combining does not in
itself render the resulting composite a
registrable trademark. Rather, it must be
shown that in combination the descriptiveness
of the individual words has been diminished,
[such] that the combination creates a term so
incongruous or unusual as to possess no
definitive meaning or significance other than
that of an identifying mark for the goods.
See In re Calspan Technology Products, Inc.,
197 USPQ 647 (TTAB 1977).
In this instance, applicant has not combined the clearly
descriptive words "shot" and "finder" in a bizarre or unusual
way. Instead, the individual components of the combined term
"SHOTFINDER," especially in light of their manner of use by
applicant, as noted previously, in the format "SHOTfinder,"
plainly have a meaning in combination which is immediately
Ser. No. 76341740
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recognizable and identical to that of their separate
connotations. Thus, there is simply nothing in the term
"SHOTFINDER," including its stylized manner of display, which is
so incongruous or unusual as to possess no definitive meaning or
significance other than that of an identifying mark for
applicant's goods, nor does such composite term otherwise possess
a new meaning different from that of its component elements.
Consequently, there is nothing in the term "SHOTFINDER"
which, when used in connection with applicant's goods, requires
the exercise of imagination, cogitation or mental processing or
necessitates the gathering of further information in order for
the merely descriptive significance thereof to be immediately
apparent. Plainly, to hunters, who along with their friends and
relatives obviously constitute the customer base for applicant's
"accessories for hunters, namely[,] electronic devices for
detecting and signaling the presence of metal objects in the
flesh of game animals," the term "SHOTFINDER" immediately conveys
that a principal feature or characteristic of such goods, as well
as their purpose or function, is to find shot embedded in the
flesh of game animals. The term "SHOTFINDER" is accordingly
merely descriptive of applicant's goods within the meaning of the
statute.
As to applicant's remaining arguments, the Examining
Attorney correctly points out that it is well settled that the
fact that an applicant may be the first and/or sole user of a
merely descriptive term does not entitle it to registration
thereof where, as here, the term projects only a merely
Ser. No. 76341740
9
descriptive significance in the context of applicant's goods.
See, e.g., In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983); and In re Mark A. Gould, M.D., 173
USPQ 243, 245 (TTAB 1972). Thus, as the Examining Attorney
further notes, "the fact that applicant may be the only purveyor
of shot finders to use the term 'SHOTfinder' does not mean that
the term will be perceived as a trademark rather than as a
[merely] descriptive term." Additionally, the Examining Attorney
properly notes that the fact that a term is not found in the
dictionary is not controlling on the question of registrability.
See, e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110,
1112 (Fed. Cir. 1987); and In re Orleans Wines, Ltd., 196 USPQ
516, 517 (TTAB 1977).
Moreover, that potential competitors of applicant may
be able to describe and advertise the same or similar goods by
terms other than "SHOTFINDER" (e.g., "pellet detector" or "shot
locator") does not mean that such term is not merely descriptive
of applicant's goods. See, e.g., Roselux Chemical Co., Inc. v.
Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA
1962). As the Examining Attorney points out in his brief,
"[w]hile there may be other ways of referring to applicant's
product, the term "SHOTfinder" is certainly an alternative way of
stating that the goods find shot." Finally, as to applicant's
contention that the term "SHOTFINDER" is not merely descriptive
of its goods inasmuch as it does not specify how shot "will be
located, from where they will be located or what happens once
they are located," suffice it to say that as set forth, for
Ser. No. 76341740
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example, in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341,
57 USPQ2d 1807, 1812 (Fed. Cir. 2001):
Dial-A-Mattress argues that its mark ["1-888-
M-A-T-R-E-S-S'"] is not descriptive because,
although it suggests the nature of its
[telephone shop-at-home mattress retail]
services, it does not describe their full
scope and extent. This argument is
unavailing because the mark need not recite
each feature of the relevant goods or
services in detail to be [merely]
descriptive. See In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982).
It therefore is not necessary, as the Examining Attorney properly
observes, that a term describe all of the purposes, functions,
uses, characteristics or features of an applicant's goods to be
merely descriptive. It is enough, as is the case herein, if the
term instead describes any significant aspect or attribute of the
goods. See, e.g., In re Patent & Trademark Services Inc., 49
USPQ2d 1537, 1539 (TTAB 1998); In re H.U.D.D.L.E., supra at 359;
and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Decision: The refusal under Section 2(e)(1) is
affirmed.