Bonakemi USA, Inc.

Trademark Trial and Appeal Board

Sep 18, 2001

No. 75693125 (T.T.A.B. Sep. 18, 2001)

9/18/01

Paper No. 11
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bonakemi USA, Incorporated
________

Serial No. 75/693,125
_______

Jay K. Malkin of Klaas, Law, O’Meara & Malkin, P.C. for
Bonakemi USA, Incorporated.

Toni Y. Hickey, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______

Before Simms, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Bonakemi USA,
Incorporated to register the mark COURTLINES for “interior
paint for use in painting sport floors.”1

1 Serial No. 75/693,125 filed April 28, 1999, which alleges a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/693,125
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark,
when applied to the identified goods, is merely descriptive
thereof. Applicant and the Examining Attorney have filed
briefs. No oral hearing was requested. We affirm the
refusal to register.
It is the Examining Attorney’s position that the term
COURTLINES immediately describes the purpose or use of
applicant’s goods, namely, to paint lines on a court, or
stated differently, to paint “courtlines.” The Examining
Attorney argues that the individual words “court” and
“lines” are descriptive of applicant’s identified goods and
that there is nothing incongruous about the combined term
COURTLINES. In support of the refusal to register, the
Examining Attorney made of record dictionary definitions of
the words “court” and “line.”2 In addition, she submitted
excerpts of articles from LEXIS.com which refer to
basketball players dominating inside the “paint,” that is

2 The American Heritage Dictionary of the English Language (3d.
ed. 1992) defines “court” as “an open, level area marked with
appropriate lines, upon which a game, such as tennis, handball,
or basketball, is played”; and “line” is defined as “a real or
imaginary mark demarcating a specified section of a playing area
or field.”
Ser No. 75/693,125
3
an area around the basket which is marked with lines, and
the use of paint on basketball courts. Finally, the
Examining Attorney submitted printouts of several articles
downloaded from the Internet. The Examining Attorney
searched for “court+lines” using the Altavista search
engine. One of the articles concerns the Sonoran Clubhouse
tennis and golf complex in Arizona. The director of the
complex is quoted as stating, in pertinent part, that “we
paint our [tennis] court lines on with turf quality
liquefied chalk using custom-made stencils that give us
extremely precise straight lines.” A second article
concerns a new squash facility located at Cornell
University and states, in relevant part, that “North
American court lines range from one to two inches.” A
third article is essentially the home page of a company
named Half-Court Enterprises and states, in relevant part,
that “Half-Court Enterprises will paint the basketball
court lines on your driveway.”
Applicant, in urging reversal of the refusal to
register, argues that the COURTLINES mark is unique and
that there is no evidence that the mark is used by third
parties to identify their interior paints for use in
painting sport floors. Further, applicant argues that
consumers viewing the COURTLINES mark would not immediately
Ser No. 75/693,125
4
connect it with applicant’s identified goods, but instead
would connect the mark with sporting goods, athletic shoes,
or legal services. In addition, applicant argues that this
case is very similar to Plyboo America Inc. v. Smith & Fong
Co., 51 USPQ2d 1633 (TTAB 1999) wherein the Board held that
the mark PLYBOO was not merely descriptive or generic of
bamboo laminate flooring and plywood made of bamboo.
Applicant has objected to the printouts of articles
downloaded from the Internet on the ground that they are of
“insufficient veracity.” Finally, applicant submitted
copies of a number of third-party registrations for marks
which cover paints and argues that its should likewise be
registered.
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 immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services.
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 merely
descriptive thereof, rather, it is sufficient if the term
Ser No. 75/693,125
5
describes a significant attribute or idea about them.
Moreover, the question of whether a mark is merely
descriptive must be determined not in the abstract, that
is, not by asking whether one can guess, from the mark
itself, considered in a vacuum, what the goods or services
are, but rather in relation to the goods or services for
which registration is sought, that is, by asking whether,
when the mark is seen on the goods or services, it
immediately conveys information about their nature. See In
re Abcor Development Corp., supra, and In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985).
While we have carefully considered applicant’s
arguments, we find that COURTLINES is merely descriptive of
the identified goods.
First, we should point out that applicant’s objection
to the printouts of articles downloaded from the Internet
is not well taken. The Examining Attorney timely made the
printouts of record and provided the web addresses at which
the articles appeared. In addition, the date each article
was downloaded was also provided.
In this case, applicant does not dispute that lines
are painted on sport floors or courts. Moreover, the
Internet articles show that lines are painted on basketball
and tennis courts, in particular. Thus, when the mark
Ser No. 75/693,125
6
COURTLINES is used for the identified goods, it directly
conveys information regarding the use of the goods. The
relevant class of purchasers will immediately understand,
without any need for imagination, thought or perception,
that applicant’s COURTLINES paint is for painting lines on
sport floors or courts.
The Plyboo case relied on by applicant does not
require a different result herein. In Plyboo, there was
some evidence which clearly showed that the term PLYBOO was
used and recognized as a trademark for the involved goods.
In this case, we have no evidence that the term COURTLINES
is used and recognized as a trademark for applicant’s
goods.
While, of course, uniform treatment under the
Trademark Act is essential, our task on this appeal, based
upon the factual record before us, is to determine whether
applicant’s mark is registrable. As the Board has often
stated, each case must be decided on its own set of facts.
See, e.g., In re Half Price Books, Records, Magazines,
Inc., 225 USPQ 219, 225 (TTAB 1984). We are not privy to
the file records of the third-party registrations applicant
has submitted and thus have no way of knowing whether any
of those registrations involved an initial descriptiveness
refusal. We would also point out that none of the third-
Ser No. 75/693,125
7
party registrations cover marks containing the word “court”
or “line,” and none are for the specific type of paint
involved in this appeal.
Finally, we should add that it is not necessary that a
designation be in common usage in the particular industry
in order for it to be merely descriptive. In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) and cases cited therein.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.