Kraus Productivity Organiza-tion Limited

Trademark Trial and Appeal Board

Dec 22, 2005

No. 78237417 (T.T.A.B. Dec. 22, 2005)

Mailed:
22 December 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kraus Productivity Organization Limited
________

Serial No. 78237417
_______

David P. Cooper of Kolisch Hartwell, P.C. for Kraus
Productivity Organization Limited.

Gene V.J. Maciol, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 14, 2003, applicant (Kraus Productivity
Organization Limited) applied to register the mark
PRODUCTIVITY PRESS (in typed or standard character form) on
the Principal Register for goods and services ultimately
identified as follows:
Software for advanced management and manufacturing
methodologies to improve efficiency in manufacturing
industries; downloadable electronic publications,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 78237417
2
namely books and newsletters in the field of improving
efficiency in the manufacturing industries in Class 9.

Books and training manuals to improve efficiency in
manufacturing industries in Class 16.

Electronic publishing services, namely, publication of
text and graphic works of others in a desired format,
namely on-line, CD and DVD featuring information on
improving efficiency in manufacturing industries;
providing on-line publications, namely books and
newsletters in the field of improving efficiency in
manufacturing industries in Class 41.1

Applicant has disclaimed the word “Press.” The
application was also amended to claim ownership of
Registration No. 1,221,304 for the mark shown below on the
Supplemental Register for a “monthly newsletter” in Class
16:2

The examining attorney refused to register the mark on
the ground that the mark PRODUCTIVITY PRESS is merely

1 Serial No. 78237417. The application is based on applicant’s
allegation of a date of first use and a date of first use in
commerce of 31 October 1998 (Class 9), 31 October 1983 (Class
16), and 30 April 2002 (Class 41).
2 A “registrant owner of a Supplemental Register registration
impliedly admits that the registered term was descriptive (or
deceptively misdescriptive) at least at the time of the
registrant's first use of the term.” Perma Ceram Enterprises
Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB
1992).
Ser. No. 78237417
3
descriptive of the goods and services. 15 U.S.C.
§ 1052(e)(1). In addition, the examining attorney has
objected (Brief at 7) to applicant’s specimen of use for
Class 41 because it is “inadequate to show use of the mark
in the sale or advertising for the services.” After the
examining attorney made the refusals final, this appeal
followed.
The examining attorney’s position (Brief at 4,
footnotes omitted) is that:
“Productivity Press” is merely descriptive of the
applicant’s software, publications and publishing
services for use in improving efficiency in
manufacturing industries. Specifically, the mark
merely describes the subject matter, purpose and use
of the goods and services. The applicant offers goods
and services on the subject and for the purpose of
improving productivity. “Productivity” is defined as
a measure of efficiency. Manufacturing productivity
is used throughout sectors of the economy and within
businesses to describe performance and efficiency.
“Productivity” immediately describes the core purpose
and use of the goods and services, namely improving
efficiency. The inclusion of “Press” does nothing to
change this conclusion. “Press” is a generic business
entity designation devoid of trademark significance.

Regarding the specimen for Class 41, the examining
attorney argues that “nowhere on the specimen does it
reference the applicant as the publisher, nor does it
reference the availability of these books on line in a non-
downloadable format.” Brief at 7.
Ser. No. 78237417
4
Applicant argues that “consumers will have to think
because the mark consists of a phrase that is unfamiliar
with respect to manufacturing efficiency software and
publications. Second, they may think the mark refers to a
mechanical press or an hydraulic press.” Brief at 4.3
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Courts have long held that to be “merely descriptive,” a
term need only describe a single significant quality or
property of the goods. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp.
v. International Nickel Co., 262 F.2d 806, 120 USPQ 293,
294 (CCPA 1959). An important consideration in
descriptiveness cases involves how we consider the mark.
The test is not whether potential customers can guess what
the goods and services are when they encounter the mark.
Instead, we must consider the mark in relation to the goods

3 Applicant did not respond to the examining attorney’s objection
to the specimen for the services in Class 41.
Ser. No. 78237417
5
or services, to determine if the term is merely
descriptive. Abcor, 200 USPQ at 218.
We begin our analysis here by looking at the
individual words in the marks. “Productivity” is the first
word that we consider. Applicant’s goods and services
(software, publications, and services) all involve
improving efficiency in manufacturing industries. The
examining attorney has included definitions of
“productivity” as attachments to his first Office Action:
The amount of output per unit of input (labor,
equipment, and capital). There are many different
ways of measuring productivity. For example, in a
factory, productivity might be measured based on the
number of hours it takes to produce a good, while in
the service sector productivity might be measured
based on the revenue generated by an employee divided
by his/her salary.

A measured relationship of the quantity and quality of
units produced and the labor required per unit of
time.

The amount of output per unit of input, such as the
quantity of a product produced per hour of capital
employed.

Also, in this Office Action, the examining attorney
introduced a definition of the term “efficient” as
“productive of desired effect, especially: Production
without waste.” The examining attorney included several
articles that use the term “productivity” in association
with manufacturing activity.
Ser. No. 78237417
6
Despite the employment downturn, manufacturing
productivity is strengthening.
Washington Times, 07 October 2003.

Improving manufacturing productivity is a critical
part of the company’s long-term strategy. For
example, the new national labor agreement with the UAW
imposes more stringent punishment on absent workers.
Automotive News, 06 October 2003.

With employment falling and output rising, America has
enjoyed soaring manufacturing productivity, a feat
repeated to some extent elsewhere in the rich world.
Charlotte Observer, 05 October 2003.

The previous UAW contract, signed four years ago,
prohibited automakers from closing any plants. But
Harbor and Associates, which tracks manufacturing
productivity, says there is enough capacity in North
America to build 20 million vehicles, but automakers
likely will sell fewer than 17 million this year, and
about 20% of those will be imports.
USA Today, 19 September 2003.

“We have 2,000 workers that have been trained in
Kaizen (a manufacturing productivity and quality
improvement method) and just in-time manufacturing.”
McKnight said.
The Tennessean, 24 August 2003.

Applicant’s specimens indicate that its goods and
services are directed to improving manufacturing
efficiencies or productivity. For example, some of its
books listed in its specimen are entitled Fast Track to
Waste-Free Manufacturing, Cycle Time Management, Do It
Right the Second Time, Cost Reduction Systems, Creating
Continuous Flow, Becoming Lean, and Benchmarking. When the
word “Productivity” is viewed in association with software,
publications, and services directed to improving
Ser. No. 78237417
7
efficiencies in manufacturing industries, it is clear that
the term would be understood as describing the goods and
services. Productivity involves the amount of output per
unit of input, such as the quantity of a product produced
per hour of capital employed. A goal of business would be
to improve manufacturing productivity. Goods and services
devoted to improving manufacturing productivity would be
accurately described by the term “Productivity.”
Next, we address whether the term “Press” is also
descriptive of applicant’s goods and services. We note
that applicant has disclaimed this term. The examining
attorney has included dictionary definitions of “Press”
with the first Office Action that defines the term as:
“The art or business of printing and publishing” and “a
printing or publishing establishment.” The examining
attorney has included printouts that indicate that
producers of software are referred to as “publishers.”
Websitepipeline, a Greenville-based publisher of Web
development software, has launched a brochure Web
site.
Greenville News, 05 October 2003.

Macrovision, meanwhile, introduced FlexNet, which can
be embedded into a software publisher’s source code…
InfoWorld Daily News, 06 October 2003.

A Framingham man pleaded guilty in federal court to
charges of securities fraud and causing false reports
to be filed with the Securities and Exchange
Commission to bolster quarterly revenues by Inso
Ser. No. 78237417
8
Corp., a Boston software and electronic publishing
company.
Boston Globe, 01 October 2003.

Previously, the board held that “the word PRESS, when
used by or in connection with ‘publishing establishments,’
is in the nature of a generic entity designation which is
incapable of serving a source-identifying function… If
applicant were seeking to register its mark as a service
mark for its publishing services, we would not hesitate to
find PRESS to be unregistrable for such services.” In re
Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215
(TTAB 2000). The board went on to find that the “word is
merely descriptive of applicant’s books because it directly
and immediately conveys to purchasers that the books
originate from a ‘press,’ that is ‘a printing or publishing
establishment.’ We have repeatedly held that a mark which
names the type of commercial establishment from which
particular goods come is merely descriptive of those
goods.” Id. at 1216 (internal quotation marks in last
sentence omitted).
There appears to be nothing incongruous about the
application of the term “press” to applicant’s goods and
services. Indeed, as indicated earlier, the dictionary
definition that the examining attorney included with the
first Office Action defines “press” as “a printing or
Ser. No. 78237417
9
publishing establishment.” Producers of electronic
publications are referred to as “publishers.” The term
“Press” is at least descriptive of publishing services and
it is also descriptive of books, software, and online
publications inasmuch as it names the establishment from
which applicant’s goods and services originate. Taylor &
Francis, 55 USPQ2d at 1216.
Despite the descriptiveness of the individual terms,
we must consider the mark PRODUCTIVITY PRESS as a whole
because the combined term may not be descriptive even
though the individual terms are. Here, PRODUCTIVITY PRESS
would certainly describe the online publishing by a
publishing establishment of books and other works
concerning improving efficiencies in manufacturing
industries. It also describes the type of commercial
establishment from which come applicant’s books and
software on improving efficiencies in manufacturing
industries. Therefore, the term is merely descriptive of
these goods and services all directed to improving
manufacturing efficiencies or productivity. We cannot
accept applicant’s argument (Brief at 4) that prospective
purchasers, upon seeing the mark in relation to books,
software, and services of providing online publications,
would conclude that the term is referring to “a mechanical
Ser. No. 78237417
10
press or an hydraulic press (for manufacturing or other
applications).” Nor does the fact that both words begin
with the letter “P” create a unitary term or somehow change
a descriptive term into a suggestive term. That is not the
holding of In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).4
Rather these purchasers would immediately understand the
descriptive meaning of this term. We emphasize that the
potential purchasers of these goods and services would not
view the term in a vacuum. They would view the term in
connection with applicant’s books, software, and electronic
publishing services that all involve improving efficiency
in manufacturing industries. When viewed in this context,
the mark in its entirety is merely descriptive.
The other issue in this case is whether applicant’s
specimen for Class 41 is acceptable. The examining
attorney argues that the specimens “do not show use of the
mark in the sale or advertising of the services” in Class
41 because “nowhere in the specimen does it reference the
applicant as the publisher, nor does it reference the
availability of these books online in a non-downloadable
format. Instead, the average consumer seeing the mark
would equate use with retail store services on the actual

4 We have not considered applicant’s cited non-precedential board
opinion. TBMP § 103 (2d rev. 2004).
Ser. No. 78237417
11
goods themselves, as in a catalog for the goods.” Brief at
6-7.
Applicant’s electronic publishing services in Class 41
appear to involve two different activities. The first
service concerns the “publication of text and graphic works
of others in a desired format, namely on-line, CD and DVD
featuring information on improving efficiency in
manufacturing industries.” The second involves “providing
on-line publications, namely books and newsletters in the
field of improving efficiency in manufacturing industries.”
An applicant only has to provide a specimen to show its use
on one of the services in a class. Applicant has submitted
a specimen that shows that it offers various titles of
works on improving manufacturing efficiency or
productivity. A portion of the specimen is set out below:

Ser. No. 78237417
12
It appears that this specimen is simply a list of
books that applicant sells over the Internet. It is not
entirely clear in what format applicant is offering these
books.5 However, in one of its specimens for LeanSpeak, the
specimen indicates that it is “an ebook available in
multiple electronic formats, including Palm Pilot.” The
specimen goes on to identify the formats as Microsoft
Reader, Adobe Acrobat Reader, and Palm Reader as well as
also being available “in paperback.” These specimens,
taken together, indicate that applicant is offering online
publications, namely books and newsletters in the field of
improving efficiency in manufacturing industries. However,
applicant’s electronic publication services specify that
its services involve the “publication of text and graphic
works of others.” There is no indication that applicant is
publishing the works of others. Indeed, there are no
authors listed and, regarding the LeanSpeak book,
applicant’s description claims that: “To address these
needs Productivity Press created LeanSpeak – the original
and authoritative compendium of improvement terms.”

5 While applicant itself has not offered an explanation or
otherwise responded in its brief to the requirement for an
acceptable specimen, we have not treated applicant’s silence as a
concession that its specimens are unacceptable.
Ser. No. 78237417
13
Therefore, the specimen does not support the first
identified service.
Applicant’s other service consists of “providing on-
line publications, namely books and newsletters in the
field of improving efficiency in manufacturing industries.”
Applicant specimens show that it is providing online its
books and newsletters in the field of improving
manufacturing industries. Therefore, because applicant’s
specimen supports use of its mark for one of the identified
services in Class 41, we reverse the examining attorney’s
requirement for an acceptable specimen.
Decision: The examining attorney’s requirement for an
acceptable specimen for the services in Class 41 is
reversed. The examining attorney’s refusal to register the
term PRODUCTIVITY PRESS on the ground that the mark is
merely descriptive of the involved goods and services is
affirmed.