Cenveo Corporation

Trademark Trial and Appeal Board

Sep 30, 2009

No. 77289355 (T.T.A.B. Sep. 30, 2009)

Mailed: September 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cenveo Corporation
________

Serial No. 77289355
_______

Andy I. Corea and Gene S. Winter of St. Onge Steward
Johnston & Reens LLC for Cenveo Corporation.

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney1).
_______

Before Rogers, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Cenveo Corporation (“applicant”) seeks registration on
the Supplemental Register2 of the mark GREEN-KEY, in
stylized form shown below,

for goods ultimately described as “paperboard keycards made
of environmentally friendly materials.” Applicant has

1 Hellen Bryan-Johnson, Senior Attorney, signed the brief on
behalf of K. Margaret Le.
2 We note that applicant originally sought registration of the
mark on the Principal Register in standard character form and
with a disclaimer of the term “Green.”
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 77289355

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disclaimed “Key” apart from the mark as shown. The
application also includes the statements: “The mark
consists of the wording ‘GREEN-KEY’ in stylized script.
The word ‘GREEN’ appears in the color green. The word
‘KEY’ appears in the color brown. The stylized dash
between the words appears in the color light brown.” “The
color(s) green and brown is/are claimed as a feature of the
mark.”3
Applicant has appealed the examining attorney’s final
refusal to register on the ground that the applied-for mark
is generic for keycards made of environmentally friendly
materials under Trademark Act Section 23, 15 U.S.C. § 1091.4
Both applicant and the examining attorney filed briefs
and applicant filed a reply brief. We affirm the refusal
to register.
Applicant maintains that “[t]he wording GREEN KEY is
not readily understood as identifying the genus of the

3 Application Serial No. 77289355 filed September 26, 2007.
During prosecution, applicant filed a statement of use wherein it
alleged November 11, 2007 as the date of first use of the mark
anywhere and in commerce.

4 The examining attorney also finally refused registration
pursuant to Section 2(a) of the Trademark Act, 15 U.S.C.
§ 1052(a), on the ground that the mark was deceptive of the goods
as then identified, i.e., paperboard keycards. Applicant, in a
request for reconsideration of that refusal, amended the
identification of goods to read “paperboard keycards made of
environmentally friendly materials,” and the Section 2(a) refusal
was withdrawn.
Ser No. 77289355

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goods identified in the application. Therefore,
registration on the Supplemental Register is appropriate
with the previously submitted disclaimer of KEY.” (Br. p.
2).
Applicant further argues that
[E]ven if the Board finds that the wording
GREEN KEY is the generic name of the identified
goods, Applicant’s mark is eligible for
registration on the Supplemental Register
because it incorporates a highly stylized
version of the mark. The stylization of the
mark makes a sufficient commercial impression
distinct from any underlying descriptive or
generic connotation of the wording. Consumers
encountering this stylized version will
recognize it as a trademark indicating the
source of the goods, so it is suitable for
registration on the Supplemental Register.
(Id.).
The examining attorney conversely maintains that
“because the words ‘green key’ constitute a generic name
for the goods and the specific style and color feature of
those words are inseparable from the words themselves, the
applied-for mark is generic….” (Br. unnumbered p. 7). The
examining attorney particularly argues that “[t]he relevant
public will recognize each word in GREEN-KEY as being a
generic term for the goods.” The combination does not
create something with a meaning different from that
conveyed by the constituent words “green” and “key.” (Br.
unnumbered p. 3). The examining attorney, citing inter
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alia In re Gould Paper Corp.,5 further argues “[i]n
combination each of the words ‘green’ and ‘key’ retain
their generic significance. … Accordingly, the words ‘green
key’ will be recognized as primarily referring to a class
of goods being keys (e.g., keycards) made of
environmentally friendly materials.” (Br. unnumbered p.
5).
To demonstrate that the relevant public understands
that “green-key” primarily refers to keycards made of
environmentally friendly materials, the examining attorney
made of record the following:
a. Definitions, in pertinent part, of the term “green”:
i) 12a. Beneficial to the environment;6
ii) 5. made with little environmental harm;
produced in an environmentally and
ecologically friendly way, e.g., by using
renewable resources;7 and

iii) 6. showing concern for, or designed to be
harmless to the environment.8

b. Excerpts from various websites showing third-party
generic use of the word “green,” retrieved from a

5 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).

6 The American Heritage Dictionary of the English Language (4th
ed. 2000), retrieved December 13, 2007 at www.bartleby.com.

7 Encarta® World English Dictionary [North America Edition]
(2007), retrieved April 17, 2008 at http://encarta.msn.com.
encnet/features/dictionary.

8 Chambers 21st Century Dictionary (2001), retrieved January 27,
2009 at www.credoreference.com.
Ser No. 77289355

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search of the Google search engine for “consumer
demand green products” (April 17, 2008) and “green
made environmentally friendly material” and “green
paper products” (January 26, 2009):

On a web page for ATKEARNEY are references
to “[c]onsumer demand for green products
and services and what it means for your
company,” and “[s]ustainability is now a
matter of corporate survival”
(www.atkearney.com/main, retrieved April
17, 2008);

A web page titled Understanding the Green
Consumer in which consumer demands and
expectations regarding various types of
“green products” is discussed
(www.gdrc.org/uem/green-consumer.html,
retrieved April 17, 2008);

From the Organically Hatched website
examples of “green toys” that are made
from “environmentally friendly materials”
(www.organicallyhatched.com/Green_toys_tea
_set-p/, retrieved January 27, 2009);

From udreview.com, an article titled “The
battle for green paper products” in which
“green paper products” are discussed
(http://www.udreview.com/news, retrieved
January 27, 2009);

From the website WausauPaper, an article
in which Greenseal® certified “green paper
products” are discussed
(www.baywestpaper.com, retrieved January
27, 2009); and

From the website PreLink “green paper
products” are discussed
(www.prolinkhq.com, retrieved January 27,
2009).

c. A definition, in pertinent part, of “key”:
Ser No. 77289355

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2. door or lock opener: a device that operates a
door or lock, e.g., a plastic card with an encoded
magnetic strip.9

d. Excerpts from various websites showing third-party
generic use of the word “green key” or “green key card”
retrieved from a search of the Google search engine for
“green key card” on January 27, 2009:

From the Economically Sound website is an
article titled “Green Key” in which the
advantages of “green key cards” made of
environmentally friendly products are
discussed. The article states, in part:
Consider a green key of either
recyclable paperboard, corn plastic
or recycled paper.
(http://www.economicallysound.com/
green_key, retrieved January 23, 2009);

An article from Feelgood Style website
titled “Green Lodging & Key Card Progress”
in which the merits of various types of
“green key cards” is discussed
(http://78.125.47.132/search?q=cache.37yczk
rwZPcj:feelgoodstyle.com/2009, retrieved
January 27, 2009); and

An article from the Environmental Leader
website titled “Marriott Makes Switch to
Green Products” which discusses Marriott’s
switch to “green key cards.” The article
states in part:
The company is replacing the 24
million plastic key cards that it
purchases annually in the U.S. with
those made of 50 percent recycled
material. The move is expected to
save 66 tons of plastic from being
landfilled. (“Green” key cards got a

9 Encarta® World English Dictionary [North America Edition]
(2007), retrieved April 17, 2008 at
http://encarta.msn.com.encnet/features/dictionary. This
definition shows that “key” is used as a shorthand reference for
a keycard.

Ser No. 77289355

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lot of attention at the Democratic
National Convention.)
(http://www.environmentalleader.com,
retrieved January 27, 2009).

e. A web page from applicant’s website describing
applicant’s involved goods as follows:

Green-KeyTM is an environmentally friendly
alternative to the traditional plastic
hotel keycard. Unlike plastic keycards,
Green-KeyTM is recyclable, biodegradable
and produced from paperboard, a renewable
resource.
(www.greenkeycard.com, retrieved April 17,
2008).

To be registrable on the Supplemental Register, the
matter sought to be registered must be “capable of
distinguishing applicant’s goods or services.” Trademark
Act Sections 23(a), 23(c). “Generic terms are common names
that the relevant purchasing public understands primarily
as describing the genus of goods or services being sold.
They are by definition incapable of indicating a particular
source of the goods or services.” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2001)(citations omitted). Because they are incapable
of identifying source, generic terms are not registrable on
the Supplemental Register.
Our primary reviewing court has set forth a two-step
inquiry to determine whether a mark is generic: First,
what is the genus (category or class) of goods or services
Ser No. 77289355

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at issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to
that genus (category or class) of goods or services? H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F. 2d 987, 989, 228 USPQ 528, 530 (Fed.
Cir. 1986).
The ultimate test for determining whether a term is
generic is the primary significance of the term to the
relevant public. See Section 14(c) of the Act. See also
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832 (Fed. Cir. 1999); and Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The burden of
proving genericness falls on the trademark examining
attorney, who must present “clear evidence of generic use.”
See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc.,
828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
“Any competent source suffices to show the relevant
purchasing public’s understanding of a contested term,
including purchaser testimony, consumer surveys, dictionary
definitions, trade journals, newspapers and other
publications.” In re Dial-A-Mattress Operating Corp.,
supra, 57 USPQ2d at 1810.
With respect to the first part of the Marvin Ginn
inquiry, we find in this case that the genus of goods is
Ser No. 77289355

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essentially commensurate with applicant’s identification of
goods in the application, i.e., “keycards made of
environmentally friendly materials.” Applicant does not
contend otherwise.
However, before we consider what the record reveals
about the second part of the Marvin Ginn inquiry – whether
members of the relevant public perceive GREEN-KEY (in
stylized form) to refer to the involved class of goods – we
clarify the governing case law by which we will be guided
in determining genericness. We do so because applicant
appears to question the probative value of the evidence
submitted by the examining attorney to show that the term
“green” alone is generic in relation to the class of goods
at issue. During his examination of the application, the
examining attorney took the position that the applied-for
mark is a compound word, and thus the determination of
genericness should be guided by In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987). However, we
note that if the applied-for mark is considered a phrase,
our guidance lies in In re American Fertility Society, 51
USPQ2d at 1832.
In the case of In re American Fertility Society,
supra, our primary reviewing court stated that to find a
mark generic, the USPTO must prove “(1) the public
Ser No. 77289355

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understands the individual terms to be generic for a genus
of goods and services; and [if] (2) the public understands
the joining of the individual terms into one [phrase] to
lend no additional meaning to the term, then the PTO has
proven that the general public would understand the
[phrase] to refer primarily to the genus of goods or
services described by the individual terms.” (Id. at
1837).
In the case of In re Dial-A-Mattress Operating Corp.,
supra, 1-888-M-A-T-R-E-S-S for “telephone shop-at-home
retail services in the field of mattresses,” the court
differentiated the American Fertility and Gould cases as
follows (id. at 1810):
Where a term is a “compound word” (such as
“Screenwipe”), the Director may satisfy his
burden of proving it generic by producing
evidence that each of the constituent words is
generic, and that “the separate words joined to
form a compound have a meaning identical to the
meaning common usage would ascribe to those
words as a compound.” In re Gould Paper Corp.,
834 F.2d 1017, 1018, 5 USPQ2d 1110, 1110(Fed.
Cir. 1987). However, where the proposed mark is
a phrase (such as “Society for Reproductive
Medicine”), the board “cannot simply cite
definitions and generic uses of the constituent
terms of a mark”; it must conduct an inquiry
into “the meaning of the disputed phrase as a
whole.” In re The Am. Fertility Soc'y, 188 F.3d
at 1347, 51 USPQ2d at 1836. The In re Gould
test is applicable only to “compound terms
formed by the union of words” where the public
understands the individual terms to be generic
for a genus of goods or services, and the
Ser No. 77289355

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joining of the individual terms into one
compound word lends “no additional meaning to
the term.” Id. at 1348-49, 51 USPQ2d at 1837.

The court concluded that “1-888-M-A-T-R-E-S-S,” as a
mnemonic formed by the union of a series of numbers and a
word, bears closer conceptual resemblance to a phrase than
a compound word, and the court reiterated that the PTO must
produce evidence of the meaning the relevant purchasing
public accords to the proposed mnemonic mark “as a whole.”
The definition of “compound word,” of which we take
judicial notice, is “a word composed of two or more base
morphemes, whether hyphenated or not: English compounds
are usually distinguished from phrases by reduced stress on
one of the elements and by changes in meaning”10 (emphasis
added).
We agree with the examining attorney and find in this
case that applicant’s mark is more analogous to
the compound word considered by the court in Gould than it
is to the phrase considered in American Fertility. The
stylization of the mark in no way detracts from our finding

10 Webster’s New World College Dictionary (2009), retrieved
September 18, 2009 from www.yourdictionary.com/compound. The
Board may take judicial notice of dictionary definitions
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 17989)(TTAB 2002);
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 77289355

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that the words are joined to form a compound. Although the
mark consists of two words displayed in different colors –
the word “green” in the color green and the word “key” in
the color brown – both words are displayed in the same
script, and the “stylized dash,” displayed in a shade of
brown somewhere in between those two colors, appears as an
ending flourish on the word green such that there is no
separation between the two words, resulting in the compound
word “green-key.” Because we have determined that
applicant’s applied-for mark is a compound word, it may be
found to be generic if it “would plainly have no different
meaning from its constituent words, and dictionaries, or
other evidentiary sources, establish the meaning of those
words to be generic…. No additional proof of the
genericness of the compound word is required.” In re
American Fertility Society, 51 USPQ2d at 1836. See also In
re Gould Paper Corp. 5 USPQ2d at 1110.
Based on the previously discussed evidence, we find
that the terms “green” and “key” are generic in relation to
the genus of goods identified herein, i.e., keycards made
of environmentally friendly materials. We further find
that the combined term “green-key” plainly has no different
meaning apart from its constituent words. That is, the
words “green” and “key” impart no additional meaning by
Ser No. 77289355

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virtue of their having been joined into the compound term
“green-key.”
Moreover, the evidence made of record by the examining
attorney also establishes, even under In re American
Fertility, supra, that “green key” is the name of the class
of goods identified herein. In particular, the articles
from the Economically Sound, Feelgood Style and
Environmental Leader websites clearly establish that a
“green key” is an environmentally friendly keycard.
Notably, the articles do not point to applicant, or any
other entity, as the single source of the green keys
discussed therein, and make it clear that the potential
exists for use of millions of green keycards or green keys
in hotels and motels across the nation, all made of various
environmentally friendly materials.
Based on the evidence, we find that the term “green
key” would be understood by the relevant public to refer to
keycards made of environmentally friendly materials.
Applicant did not introduce any evidence to rebut the
examining attorney’s evidence. Instead, applicant merely
argues that “[t]he evidence of use of GREEN KEY as a
composite is limited to 3 references, which falls well
below the standard of clear evidence.” (Reply br.
unnumbered p. 1). We find the argument unpersuasive. In
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view of the worldwide emergence of environmentally friendly
or “green” products, we find the evidence of record
sufficient to establish that “green key” is generic in
relation to environmentally friendly keycards. The fact
that applicant may be the only one to seek registration of
the term and that the product is a relatively new offering
in the environmentally friendly product field does not
dictate that applicant has a right to register the term and
adversely impact the right of others to use it in its
clearly generic sense.
Having found the term “green key” generic, we now
consider whether the style of display of the term
is nonetheless capable of distinguishing applicant’s goods.
It is well established that “for a term otherwise
unregistrable to be capable of distinguishing an
applicant’s goods, the presentation of the term must be
sufficiently striking, unique or distinctive so as to
overcome its inherent incapacity and render the mark
capable of serving as a source indicator.” In re Cosmetic
Factory, Inc., 220 USPQ 1103 (TTAB 1983). See also, In re
Carolyn’s Candies, Inc, 206 USPQ 356 (TTAB 1980). The
decision on capability is dependant on the nature of the
presentation of the unregistrable matter in each case.
Ser No. 77289355

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Moreover, the determination of whether the stylization of
an otherwise unregistrable designation is sufficiently
distinctive in character to “rescue” the designation as a
whole is a subjective one. In re Bonni Keller Collections
Ltd., 6 USPQ2d 1224 (TTAB 1987).
Cases wherein the Court or the Board has found a
sufficiently unique display of otherwise unregistrable
matter to warrant registration on the Supplemental Register
include the cases cited by applicant, In re K-T Zoe
Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir.
1994) (court found the words and stylized script of the
mark THE SOFA AND CHAIR COMPANY were separable elements,
and that only the script design of the words had acquired
secondary meaning); In re Wella Corporation, 635 F.2d 845,
196 USPQ 7 (CCPA 1977) (court found registrable the term
BALSAM, displayed in a “unique style of lettering”); In re
Trail-R-Van, Inc., 188 USPQ 590 (TTAB 1975) (Board found
literal portion unregistrable but stylization of “TRAIL R
VAN” in a geometric design created a mark possessing a
degree of orginality); In re Venturi, Inc., 197 USPQ 714
(TTAB 1977) (Board found applicant’s PIPE and pipe design
mark had become distinctive of the goods); In re Carolyn’s
Candie’s Inc., 206 USPQ 356 (TTAB 1980) (Board found “style
of display” of the words YOGURT BAR more distictive than
Ser No. 77289355

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that of BALSAM in Wella case); and the case of In re
Jackson Hole Ski Corporation, 190 USPQ 175 (TTAB 1976)
(Board stated that the initial “J” and “H” of the
disclaimed term Jackson Hole were displayed in a
distinctive manner due to the monogram effect of the partly
joined letters which were twice as large and set down from
the remaining portion of each word).
On the other hand, we note the following cases wherein
the Board has found the display of matter unregistrable on
the Supplemental Register, because such displays were
“completely ordinary and nondistinctive” and, thus,
incapable of functioning as a trademark for the applicant’s
goods. These include, as noted by applicant, In re Anchor
Hocking Corp., 223 USPQ 85 (TTAB 1984) (Board found
MICROWAVE TURNTABLE to be the generic name of applicant’s
goods and “displayed in plain block style of lettering
which obviously is not unique”); and the case of In re
Cosmetic Factory, Inc., supra, (Board found style of
lettering of BODY SOAP to be ordinary and nondistinctive).
See also, In re Sambado & Son Inc., 45 USPQ2d 1312, 1316
(TTAB 1997) (FRUTTA FRESCA, equivalent to “fresh fruit,”
found to be generic term for the goods and the presentation
of the term found “not so unique or unusual as to create a
distinctive commercial impression apart from the words.”).
Ser No. 77289355

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It is our view that in this case, the presentation of
applicant’s mark does not have the degree of stylization
that would warrant placement on the Supplemental Register.11
The term “green key” is displayed in a lower-case, cursive
script that is not unique or unusual. That is, contrary to
applicant’s contention, the display of applicant’s mark is
not so distinctive as to create a commercial impression
separate from the unregistrable words “green key.” The
stylization of the words “green key” in applicant’s
applied-for mark does not present any unique
characteristics, such as the monogram design in Jackson
Hole, supra, the uniquely stylized lettering in Wella,
supra, the design element in Trail-R-Van, supra, or the
unusual lettering style and placement of the words in
Carolyn’s Candie’s, supra. Nor has the mark acquired
distinctiveness as the marks in Venturi, supra, and K-T Zoe
Furniture, supra.
Further, we do not find that the presence of the
stylized dash or the green and brown color scheme in the
applied-for mark creates a commercial impression separate
and apart from the literal elements. As noted, the dash

11 Accordingly, we need not address applicant’s contention that
there is no competitive need to use the wording in the particular
stylized format.

Ser No. 77289355

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appears as an ending flourish on the word green such that
the words “green” and “key” are seamlessly integrated into
the compound word “green key”; and the colors green and
brown, commonly found in nature, merely reinforce the
wording and the environmentally friendly aspect of the
goods. We simply are not persuaded by applicant’s
assertions that particular details, e.g., the unevenly
spaced letters, the uneven distribution of ink or the “old
fashioned” handwritten look of script, of its applied-for
mark will be perceived as creating a separate commercial
impression apart from the literal component. We thus find
the applied-for mark in its entirety to be incapable of
distinguishing applicant’s goods from those of others.

Decision: The refusal to register under Trademark Act
Section 23 is affirmed.