Intellectual Property Development Corporation Pty Ltd.

Trademark Trial and Appeal Board

Sep 15, 2009

No. 77206766 (T.T.A.B. Sep. 15, 2009)

Mailed: 9/15/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Intellectual Property Development Corporation Pty
Ltd.
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Serial No. 77206766
_______

Michelle D. Kahn of Sheppard, Mullin, Richter & Hampton for
Intellectual Property Development Corporation Pty Ltd.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Robert Lorenzo, Managing Attorney).
_______

Before Quinn, Hairston and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Intellectual Property Development Corporation Pty Ltd.
filed, on June 14, 2007, an intent-to-use application to
register the mark SCENT STRIPES for “bags for microwave
cooking; garbage bags of paper; garbage bags of plastic;
garbage bags of plastics; general purpose plastic bags;
grocery bags; merchandise bags; microwave cooking bags;
paper bags; paper bags and sacks; paper bags for packaging;
paper for bags and sacks; paper garbage bags; paper gift
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77206766
2
bags; paper party bags; paper refuse bags; paper shopping
bags; plastic bags for disposable diapers; plastic bags for
disposing of pet waste; plastic bags for packaging; plastic
bags for packing; plastic bags for undergarment disposal;
plastic disposable diaper bags; plastic food storage bags
for household use; plastic garbage bags; plastic or paper
bags for household use; plastic oven cooking bags; plastic
sandwich bags; plastic shopping bags; plastic trash bags;
rubbish bags (made of paper or plastic materials); sandwich
bags; trash bags; trash can liners; plastic wrap; food
wrapping plastic for household use.”
The trademark examining attorney 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 is merely
descriptive of the goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that its mark is, at worst, just
suggestive because it requires imagination and thought to
reach a conclusion that the goods are bags for household
use. Applicant also asserts that the goods do not have
“scented stripes,” but rather the bags contain “scent”
deposited throughout the entire bag, and the bags may or
may not have a “stripe” or “stripes.” (Brief, p. 2). In
Ser. No. 77206766
3
any event, according to applicant, “the presence of a scent
and/or stripe of a scent on applicant’s goods is clearly
not the sole or main purpose of applicant’s goods.”
(Brief, p. 6). Nevertheless, applicant has offered to
disclaim the word “scent.” In urging that the refusal be
reversed applicant submitted third-party Principal Register
registrations of marks that include the word “SCENT,”
contending that the registrations create doubt about the
descriptiveness of applicant’s applied-for mark. Applicant
also submitted a statement from its Director that the mark
has no significance or meaning in the trade; a dictionary
definition of “stripe”; and a sample of its product
packaging.
The examining attorney maintains that the terms
“scent” and “stripes” are well-known terms with clear
definitions and that the combined term SCENT STRIPES is
merely descriptive of applicant’s bags. Of particular
significance, according to the examining attorney, is
applicant’s product packaging touting that applicant’s bags
feature scented stripes. The examining attorney also
relied upon excerpts retrieved from the Internet showing
the term “scent stripes” used in connection with
fragrances.
Ser. No. 77206766
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A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). 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 on or in connection with the 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 its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Contrary to the gist of a portion of
applicant’s arguments, it is settled that “[t]he question
is not whether someone presented with only the mark could
Ser. No. 77206766
5
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The “average” or “ordinary” consumer is the class or
classes of actual or prospective customers of applicant’s
goods or services. In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
The examining attorney, in her brief, requested that
we take judicial notice of online dictionary definitions of
the words “scent” and “stripe.” The Board takes judicial
notice of online dictionaries that are available in printed
format or have regular fixed editions. See In re
Hotels.com L.P., 87 USPQ2d 1100, 1103 (TTAB 2008); and In
re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). There
is no indication, however, that the examining attorney’s
dictionary evidence meets either of these criteria.
Nevertheless, we can take judicial notice of the
following dictionary definitions that appear in a printed
dictionary: “scent”: “a distinctive, often agreeable
odor”; and “stripe”: “a long narrow band distinguished, as
by color or texture, from the surrounding material or
surface.” The American Heritage Dictionary of the English
Language (4th ed. 2009).
Ser. No. 77206766
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Based on the commonly recognized and understood terms
comprising applicant’s mark, we find that SCENT STRIPES is
merely descriptive of applicant’s bags for disposal of
garbage, diapers, pet waste and the like. The mark
immediately informs prospective customers that such bags
have scented stripes that help to eliminate odors. No
imagination or thought is required to discern this touted
feature or characteristic of at least some of applicant’s
bags. The mark need not describe all the goods and
services identified, as long as it merely describes at
least one of them. See In re Stereotaxis Inc., 429 F.3d
1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (“[T]he
Trademark Office may require a disclaimer as a condition of
registration if the mark is merely descriptive for at least
one of the products or services involved.”). See TMEP
§1209.01(b) (5th ed. 2007).
Severely undermining the foundation of applicant’s
argument that the mark is not merely descriptive are
applicant’s Director’s statement that “applicant’s products
are scented,” and applicant’s very own use of the term
“stripes” on its packaging for kitchen garbage bags:1

1 This evidence was submitted prior to the appointment of present
counsel to represent applicant during prosecution of the
application.
Ser. No. 77206766
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Vanilla Fresh Scented Stripes. Only
Heavy Duty Hero brand garbage bags are
made with Scent Stripes™ to quickly
eliminate odors in the home. The white
stripes help to neutralize odors at the
source--your garbage can & trash. The
colored stripes bring a fresh and
natural fragrance to your kitchen and
home.

The examining attorney’s Internet evidence showing
uses of “scent stripes” is not persuasive inasmuch as the
uses are in connection with colognes, perfumes and candles;
that is, goods clearly different from the type of goods
listed in applicant’s identification of goods.
Applicant’s evidence of third-party registrations of
marks that include “SCENT” is not persuasive of a different
result. Each case must be decided on its own facts, and a
mark that is merely descriptive should not be registered on
the Principal Register simply because similar marks appear
on the register. In re Scholastic Testing Service, Inc.,
196 USPQ 517 (TTAB 1977). We are not privy to the files in
these registrations. In any event, we are not bound by the
prior actions of examining attorneys. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001)(“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the board or this court.”).
Ser. No. 77206766
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Decision: The refusal to register is affirmed.