M & N Plastics, Inc.

Trademark Trial and Appeal Board

Feb 27, 2004

No. 76182175 (T.T.A.B. Feb. 27, 2004)

Mailed: February 27, 2004
Paper No. 20
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re M & N Plastics, Inc.
________
Serial No. 76182175
_______
Thomas N. Young of Young & Basile, P.C. for M & N Plastics,
Inc.
Brian J. Pino, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Walters, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On December 8, 2000, M & N Plastics, Inc. (a Florida
corporation) filed an application to register the mark JOE
COOL on the Principal Register for “plastic sleeves
providing thermal protection to users of hot drink cups” in
International Class 21. The application was based on
applicant’s assertion of a bona fide intention to use the
mark in commerce. The mark was published for opposition on
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76182175
2
September 11, 2001; and a Notice of Allowance issued on
December 4, 2001. Applicant filed a Statement of Use on
May 28, 2002, along with one specimen, alleging a date of
first use and first use in commerce of November 1, 2001.
The specimen is a photograph of a clear plastic sleeve for
hot drink cups, showing JOE COOL in large lettering on two
sides in the center of the sleeve, and 800 4 JOE COOL in
small lettering near the top of one side only. These words
and numbers are embossed into the clear plastic.
The Examining Attorney refused registration under
Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127 of
the Trademark Act, on the ground that the proposed mark is
merely ornamental and does not function as a mark as used
on the goods.
When the refusal was made final, applicant appealed.
Briefs have been filed. Applicant did not request an oral
hearing.
It is the Examining Attorney’s position that the
overall commercial impression of applicant’s proposed mark
is not that of a trademark, because (i) it invokes the
popular, well known phrase JOE COOL used for a variety of
goods and services (e.g., The “Peanuts” cartoon strip
character “Snoopy’s” alternate persona--JOE COOL), and (ii)
the size, location and dominance of the wording appears on
Ser. No. 76182175
3
the goods in large letters and in a decorative manner. In
support of the Examining Attorney’s contention that the
wording JOE COOL does not indicate source, but rather is
merely ornamental, he submitted printouts of ten pages from
a “Google” search for “JOE COOL” (24,200 hits), contending
that this shows use of these words for a wide variety of
goods and services.
The Examining Attorney specifically argues, citing the
case of In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB
1984)(WATCH THAT CHILD, for crushed stone and other
aggregates and asphaltic and ready-made concrete, used on
the bumper of trucks transporting applicant’s goods, held
not to function as a trademark), that whether a proposed
mark functions as a mark is a question of fact on which the
judgment of the Examining Attorney is entitled to a
presumption of correctness; and that the burden of proof is
on applicant to establish that the purportedly ornamental
matter does function as a mark. He then notes that
applicant did not submit any evidence that (i) the nature
and placement of the wording JOE COOL on the goods is
unique or unusual in the practice of the trade, (ii) the
wording is recognized as indicating a secondary source
(i.e., sponsorship or association rather than the
manufacturing source), and/or (iii) the mark has acquired
Ser. No. 76182175
4
distinctiveness as a source indicator.1 The Examining
Attorney concludes that the wording JOE COOL is not
inherently distinctive as it is a common phrase; and that
as used on the goods, consumers will perceive the mark as
merely an ornamental feature of the goods.
According to the Examining Attorney, in the absence of
evidence that the words JOE COOL have acquired
distinctiveness as a source indicator or a showing that the
words indicate a secondary source or sponsorship of the
goods, the mark is not registrable. The Examining Attorney
relies on cases such as In re Pro-Line Corp., 28 USPQ2d
1141 (TTAB 1993)(BLACKER THE COLLEGE SWEETER THE KNOWLEDGE
for t-shirts, sweatshirts and shirts held mere
ornamentation); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB
1988)(SUMO for t-shirts and baseball-style hats held mere
ornamentation); In re Astro-Gods Inc., 223 USPQ 621 (TTAB
1984)(ASTRO GODS and design for t-shirts held mere
ornamentation); and In re Original Red Plate Co., 223 USPQ
836 (TTAB 1984)(YOU ARE SPECIAL TODAY for ceramic plates
held mere ornamentation).
1 Regarding these three factors, the Examining Attorney
specifically states that the first two factors cannot be
considered because applicant provided no evidence thereon, and
the third such factor is moot because of the lack of evidence
thereon.
Ser. No. 76182175
5
Applicant contends that its mark JOE COOL for plastic
sleeves providing thermal protection to users of hot drink
cups is inherently distinctive; that the mark JOE COOL is
unique as to plastic thermal sleeves for hot drink cups;
that the placement of the mark on applicant’s goods is in a
manner that allows the designs/marks of the sleeve
purchaser to remain visible on drink cups when the sleeve
is used on cups in the marketplace; that applicant’s
evidence, in the form of two promotional advertisements,
shows that its goods provide exceptional insulation, are
environmentally friendly and allow the sleeve purchaser’s
trademarks/graphics to be seen by beverage consumers; and
that applicant’s mark is used on the specimen as a
trademark and it is advertised and promoted as a trademark
and therefore JOE COOL would be perceived by sleeve
purchasers as the source indicator.
Preliminarily, we note that applicant submitted four
exhibits with its reply brief. They are (i) photocopies of
applicant’s two promotional advertisements; (ii) printouts
of a few registrations consisting of or including the words
“JOE COOL” from the USPTO’s Trademark Electronic Search
System (TESS); (iii) two photographs showing “COKE” or
“COCA COLA” on cans of soda; and (iv) two paper sleeves for
Ser. No. 76182175
6
hot drink cups showing “STARBUCKS” and “EINSTEIN BROS.,”
respectively thereon.
The photocopies of applicant’s advertisements were
already of record, and have been considered. However, the
other three exhibits were submitted for the first time with
applicant’s reply brief. The record in an application
should be complete prior to the filing of an appeal, and
additional evidence filed after appeal will be given no
consideration by the Board. See Trademark Rule 2.142(d),
and TBMP §1207.01 (2d ed. June 2003). These three
exhibits, attached to applicant’s reply brief, were
untimely pursuant to Trademark Rule 2.142(d), and,
accordingly, have not been considered.
We agree with the Examining Attorney that the question
of mere ornamentation is a question of fact, but we
disagree with the Examining Attorney that his opinion is to
be presumed correct, thereby shifting the burden of proof
to the applicant to show that the proposed mark is not mere
ornamentation. The Tilcon Warren case, cited by the
Examining Attorney as the authority for the purported
presumption, did not involve a refusal based on use of the
mark as mere ornamentation. Rather, the slogan involved in
that case was refused registration solely on the basis that
it did not function as a trademark for the involved goods.
Ser. No. 76182175
7
The test when determining whether a mark is mere
ornamentation, or ornamentation that also functions as an
indicator of source, involves consideration of factors such
as the size, location, dominance and significance of the
alleged mark as applied to the goods. See In re Pro-Line,
supra, and cases cited therein. See also, TMEP §1202.03
(3d ed. 2002).
As the Board stated in the case of In re Paramount
Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982)(MORK &
MINDY for decals held not mere ornamentation):
Clearly, there is no prescribed method
or place for affixation of a mark to
goods. In every case, the question is
not whether the mark has been
associated with the goods by a
particular mode or manner, but whether
the matter sought to be registered
performs the function of a trademark by
signifying to purchasers the source of
the goods sold or offered for sale.
The Examining Attorney essentially required “small,
neat, and discrete” wording that applicant could have
placed “around the rim or lip of the goods.” We disagree
that such specific usage is required to create a commercial
impression of use as a trademark. In any event, applicant
does display the words “JOE COOL” in small lettering near
the top of the sleeve, as part of the telephone number
(appearing once on the sleeve), as well as in large
Ser. No. 76182175
8
lettering in the center of the plastic sleeve (appearing
twice on the round sleeve). Thus, even if the Examining
Attorney were correct in arguing that the larger display
constituted ornamentation, the smaller, more discrete
display would, by the Examining Attorney’s own analysis,
function as a mark.
With regard to the meaning of the phrase, the fact
that “JOE COOL” appears over 24,000 times in a “Google”
search of the Internet does not establish that it is not
inherently distinctive when used on the involved goods.
The Examining Attorney submitted ten pages of listings of
these 24,000+ “Google” hits, but there is no context
provided for any of the listed stories or hits. Applicant
argued in its reply brief that while “JOE BLOW,” “JOE
COLLEGE” and “JOE DOAKES” appear in a dictionary, “JOE
COOL” does not. Applicant did not provide a copy of the
dictionary page. However, we take judicial notice [see
TBMP §704.12(a) (2d ed. June 2003)] of The Random House
Dictionary (Second Edition 1987) showing the same
information--listings of “JOE BLOW,” “JOE COLLEGE” and “JOE
DOAKES,” but no listing of “JOE COOL.”
Applicant’s use of JOE COOL as applied to plastic
sleeves to provide thermal protection in the use of hot
drink cups appears to be arbitrary usage, rather than being
Ser. No. 76182175
9
perceived as a common cultural expression such as the
“smiley face” symbol, or the peace symbol, or the phrase
HAVE A NICE DAY.
Moreover, in this case, there is further specific
evidence of applicant’s use of JOE COOL as a trademark for
its goods as shown in applicant’s two advertisements
(excerpts of which are set forth below):
IT GOES UNNOTICED SO YOU DON’T
JOE COOL IS INVISIBLE
…
Joe Cool insulated sleeves are clear,
so your image is on display, not the
sleeve. Graphics you’ve created can
even be embossed on the sleeve to
enhance that image; and
Don’t look now, here comes Joe Cool.
There’s something to be said for going
unnoticed.
Thus, the retailers who purchase applicant’s goods
clearly would understand JOE COOL is a trademark for
plastic sleeves for thermal protection, indicating
applicant as the source thereof. Such purchasers will not
be motivated to purchase applicant’s goods because of the
presence of the wording JOE COOL embossed thereon. Rather,
they will be motivated to purchase the goods because
beverage purchasers will not be distracted by applicant’s
mark and can be exposed to whatever message the beverage
producer wants to put on its cups.
Ser. No. 76182175
10
We find that the phrase JOE COOL, as used by
applicant, is inherently distinctive and is likely to be
perceived by the relevant purchasers as an indicator of
source. Cf. In re Watkins Glen International, Inc., 227
USPQ 727 (TTAB 1985)(a checkered flag design for various
items of clothing and patches for application to clothing
held to be not only an ornamental design but also an
indication of origin of the goods).
Decision: The refusal to register under Sections 1, 2
and 45 of the Trademark Act as mere ornamentation is
reversed.