Homax Products, Inc.

Trademark Trial and Appeal Board

Aug 11, 2006

No. 78363723 (T.T.A.B. Aug. 11, 2006)

Mailed:
August 11, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Homax Products, Inc.
________

Serial No. 78363723
_______

Michael R. Schacht of Schacht Law Office, Inc. for Homax
Products, Inc.

Mark Leipzig, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Bucher, Holtzman and Cataldo, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Homax Products, Inc. seeks registration on the
Principal Register of the mark SOFTARP (in standard character
form) for goods identified in the application as “flexible
sheet material in the nature of a tarpaulin for use in
covering, lining, or separating objects and materials” in
International Class 22.1

1 Application Serial No. 78363723 was filed on February 6,
2004 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. The original drawing showed the
mark as SOFT TARP, but the Trademark Examining Attorney permitted
an amendment of the mark to its current, telescoped form,
SOFTARP.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78363723
- 2 -
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the
Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
identified goods, i.e., that the term “soft tarp”
immediately informs potential purchasers about a quality or
characteristic of applicant’s goods.
Both applicant and the Trademark Examining Attorney
have fully briefed this appeal, but applicant did not
request an oral hearing before the Board.
We affirm the refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes
or uses of the goods or services with which it is used or
is intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See also In
re MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d 1778,
1780 (Fed. Cir. 2003) [A “mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
Serial No. 78363723
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or characteristic of the product or service”]. Hence, the
ultimate question before us is whether this term conveys
information about a significant quality or characteristic
of applicant’s goods with the immediacy and particularity
required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); and In re Bed & Breakfast Registry,
791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986).
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence, we must keep in mind that the test
is not whether prospective purchasers can guess what
applicant’s goods are after seeing applicant’s mark alone.
In re Abcor, supra at 218 [“Appellant’s abstract test is
deficient – not only in denying consideration of evidence
of the advertising materials directed to its goods, but in
failing to require consideration of its mark ‘when applied
to the goods’ as required by statute”]; In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
Serial No. 78363723
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In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985). Rather, the proper test in determining whether a
term is merely descriptive is to consider the alleged mark
in relation to the goods or services for which registration
is sought, the context in which the mark is used, and the
significance that the mark is likely to have on the average
purchaser encountering the goods or services in the
marketplace. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Applicant argues that the term “soft” does not have a
well-defined meaning in the context of applicant’s goods,
and moreover, that when the two separate terms, “soft” and
“tarp” are combined, the resulting composite is not merely
descriptive of the identified goods. By contrast, the
Trademark Examining Attorney contends that the term “soft”
is clearly descriptive of at least one feature or quality
of applicant’s flexible tarpaulins, or “tarps.”
Serial No. 78363723
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Citing to twenty-one definitions of the word “soft,”2
applicant argues that given the many definitions of the

2 soft 1 giving away easily under pressure, as a feather
pillow or moist clay
2 easily cut, marked, shaped, or worn away, as pine
wood or pure gold
3 not hard for its kind; not as hard as is normal,
desirable, etc.
4 smooth or fine to the touch, not rough, harsh or
coarse
5 a) bland; not acid, sour, or sharp b) easy to digest
because free from roughage
6 nonalcoholic; said of drinks
7 having in solution few or none of the mineral salts
that interfere with the lathering and cleansing
properties of soap
8 mild, gentle, or temperate, as a breeze, the weather,
climate, etc.
9 a) weak or delicate; not strong or vigorous b)
having flabby muscles
10 requiring little effort; easy
11 a) kind or gentle, esp. to the point of weakness;
lenient or compassionate b) easily impressed,
influenced, or imposed upon
12 not bright, intense, or glaring; subdued: said of
color or light
13 showing little contrast or distinctness; not sharp in
lines, tones, focus, etc.
14 gentle; low; not loud or harsh: said of sound
15 based on data from interviews, surveys, etc., rather
than from controlled, repeatable experiments
16 replenished by nature, or capable of being used with
relatively little damage to the environment
17 providing information other than the basic facts of a
news story
18 Finance a) unstable and declining b) not readily
accepted as foreign exchange c) having very
favorable terms
19 Mil. Above ground and vulnerable: said of targets
or bases
20 Phonet. a) designating c sounded as sounded in voice
org sounded as in age
21 Radiology of low penetrating power: said of X-rays
WEBSTER’S NEWWORLD DICTIONARY, THIRD COLLEGE EDITION.
Serial No. 78363723
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term soft, prospective purchasers might actually “conjure
up an arbitrary connotation of the overall mark SOFTARP.”
Applicant’s appeal brief, p. 5. The Trademark Examining
Attorney points out that “descriptiveness is considered in
relation to the relevant goods,” adding that,
[t]he fact that a term may have different
meanings in other contexts is not
controlling on the question of
descriptiveness. In re Chopper Industries,
222 USPQ 258 (TTAB 1984); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re
Champion International Corp., 183 USPQ 318
(TTAB 1974); TMEP §1209.03(e). Given that
applicant has conceded that “a tarp may be
soft,” see Applicant’s Brief at 4, the
descriptiveness of the term “soft” in
relation to tarps is apparent.

Trademark Examining Attorney’s brief, unnumbered p. 3.
Applicant does, in fact, argue that “softness is not a
defining feature” of its goods:
Nothing in the definition of a tarp as set
forth above suggests that a tarp is or need
be soft. While a tarp may be soft,
“softness” is not a defining feature of a
tarp. To the contrary, the Applicant
submits that the many definitions of the
term “softness” require the buyer to use
imagination to determine any relationship
between the term “soft” and the quality or
characteristics of a tarp. The Applicant
respectfully submits that the mark SOFTARP
does not provide a direct message about the
quality or characteristics of a tarp.

Applicant’s brief, p. 4.

Serial No. 78363723
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The Trademark Examining Attorney covered that line of
argument by stating:
… Under such logic, however, similarly
descriptive terms such as REDTARP or
SMALLTARP would not be found descriptive of
red or small tarps, since redness and/or
smallness are not necessarily considered
“defining features” of tarps. Of course,
such is not the standard – it is well
settled that a term need not describe all of
the purposes, functions, characteristics or
features of the goods to be merely
descriptive. For the purpose of a Section
2(e)(1) analysis, it is sufficient that the
term describe only one attribute of the
goods to be found merely descriptive. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In
re MBAssociates, 180 USPQ 338 (TTAB 1973);
TMEP §1209.01(b). In the present case, the
term “SOFT” is descriptive of at least one
quality of applicant’s goods – softness. To
the extent that applicant provides “soft”
tarpaulins (likely, given the “flexible”
identification of applicant’s goods), the
term “soft” merely describes a feature of
applicant’s goods.

Trademark Examining Attorney’s brief, unnumbered pp. 3 – 4
(emphasis in the original).
Our primary reviewing Court also makes it clear that a
mark need not describe the full scope of the applicant’s
goods in order to be found merely descriptive. In re
Oppendahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371-72 (Fed. Cir. 2004). For example, to the extent
applicant’s tarpaulin for “covering, lining, or separating”
may have one side that is “smooth to the touch” (from
Serial No. 78363723
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dictionary definition), “soft” would seem to be a salient
feature of such a tarp.
Another tenet of trademark law is that when two or
more merely descriptive terms are combined, the
determination of whether the composite mark also has a
merely descriptive significance turns on the question of
whether the combination of terms evokes a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the goods or
services, the combination results in a composite that is
itself merely descriptive. See In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1988)
[SCREENWIPE generic for wipes that clean computer and
television screens]; In re Tower Tech, Inc., 64 USPQ2d
1314, 1318 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; and In re Sun
Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001)
[AGENTBEANS merely descriptive of computer programs for use
in development and deployment of application programs].
Here, we agree with the Trademark Examining Attorney
that the combination of the terms “soft” and “tarp” creates
no double entendre, ambiguity or unique commercial
impression so as to remove the mark from the category of
Serial No. 78363723
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being merely descriptive when used in connection with
flexible tarpaulins. That is, as used in the common
parlance, the composite phrase immediately, and without
conjecture, describes a salient quality or characteristic
of tarps. As noted by the Trademark Examining Attorney,
“[c]learly, a ‘soft tarp’ would consist of a more pliant
covering, capable of fitting over irregularly-shaped
objects more easily, while less likely to damage said
objects.” Trademark Examining Attorney’s brief, unnumbered
p. 3.
As was also pointed out by the Trademark Examining
Attorney, the telescoped nature of applicant’s mark, as
amended, does not diminish the overall descriptiveness of
its mark.3
Finally, applicant relies on third-party registrations
that it contends are similar to its mark, which demonstrate
“a clear and consistent pattern of registrations published
by the Trademark Office” in support of its contention that
marks such as SOFTARP are not merely descriptive.

3 In light of the evidence that the term “first tier”
describes a class of banks, applicant’s composite design mark
(shown to the right) was
refused in the absence of an
appropriate disclaimer. In
re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987).

Serial No. 78363723
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SOFTNET for “knitted pallet wrap plastic netting” in
International Class 22;4
SOFT-
FENCE
for “area enclosure netting” in International
Class 22;5
SOFTBAND for “lanyards for holding identification badges
around a person’s neck” in International Class
22;6
SOFT SIDES for “hammocks” in International Class 22;7
SOFT
SHAPES
for “polyester stuffing fiber and polyester
fiber batting” in International Class 22;8 and
SOFLIFT for “nylon and polyester web slings for towing
and recovery of vehicles” in International
Class 22.9

However, the Trademark Examining Attorney finds
applicant’s reliance on these third-party registrations to
be misplaced:
In general, third-party registrations are
not conclusive on the question of

4 Reg. No. 1744576 issued on January 5, 1993 claiming use
anywhere and use in commerce since at least as early as April 24,
1992. Section 8 affidavit (six-year) accepted and Section 15
affidavit acknowledged; renewed.
5 Reg. No. 1472333 issued on January 12, 1988 claiming use
anywhere and use in commerce at least as early as September 1986.
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
6 Reg. No. 2651425 issued on November 19, 2002 claiming use
anywhere and use in commerce at least as early as September 1997.
7 Reg. No. 2806502 issued on January 20, 2004 claiming use
anywhere at least as early as July 26, 1992 and use in commerce
at least as early as August 17, 1992.
8 Reg. No. 1853677 issued on September 13, 1994 claiming use
anywhere and use in commerce at least as early as June 1978.
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged; renewed.
9 Reg. No. 1540562 issued on May 23, 1989 claiming use
anywhere and use in commerce at least as early as April 1, 1988.
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
Serial No. 78363723
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descriptiveness. The examining attorney
must consider each case on its own merits.
A mark which is merely descriptive is not
registrable merely because other similar
marks appear on the register. In re
Scholastic Testing Service, Inc., 196 USPQ
517 (TTAB 1977). Indeed, none of the
referenced third-party registrations include
tarpaulin-type covers. Thus, such
registrations are of no relevance to the
facts at hand.

Of course, the fact that third parties registered
marks containing the leading element SOFT (or SOF-)
for other unrelated products in International Class
22, is not persuasive of a different result herein.
Suffice it to say that these registrations are of
little help in determining the registrability of the
mark at issue in this case. We are not convinced that
the instant case (e.g., SOFT plus clearly generic
designation for goods, where “soft” has an obvious
meaning) fits into “a clear and consistent pattern”
established by these registrations, as argued by
applicant. As has often been noted by the Board, each
case must be decided on its own set of facts. None of
these marks involved this particular combination of
terms, or these same goods, and thus the facts in
those records (to which we are not privy) would
obviously be different. Moreover, even if the
Serial No. 78363723
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situations of these third-party registrations appeared
to be close to the facts of the current case, the
Board is not bound by actions taken by Trademark
Examining Attorneys. In re National Novice Hockey
League, Inc. 222 USPQ 638, 641 (TTAB 1984) and In re
Scholastic Testing Service, Inc., 196 USPQ 517, 519
(TTAB 1977). While uniform treatment under the
Trademark Act is highly desirable, our task here is to
determine, based upon the record before us, whether
applicant’s asserted mark is registrable.
Decision: We find the well-crafted arguments of the
Trademark Examining Attorney to be most convincing, and
hence, his refusal to register this mark on the Principal
Register based upon Section 2(e)(1) of the Lanham Act is
hereby affirmed.