Mailed: August 31, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Merillat Industries, LLC
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Serial No. 78563328
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Edgar A. Zarins, Masco Corp. for applicant.
Paul E. Fahrenkopf, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
____________
Before Bucher, Walsh, and Mermelstein, Administrative
Trademark Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Merillat Industries, LLC has filed an application to
register on the Principal Register the mark SOFTACTION in
standard character form for (as amended) “cabinet hardware,
namely, metal door guide” in International Class 6.1
The examining attorney has issued a final refusal to
register, under Trademark Act § 2(e)(1), 15 U.S.C.
§ 1052(e)(1), on the ground that applicant’s mark is merely
descriptive in connection with the identified goods.
1 Serial No. 78563328, filed February 9, 2005, based on an
allegation of a bona fide intention to use the mark in commerce.
This Opinion
Is Not A Precedent
of The TTAB
Serial No. 78563328
2
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse the
refusal to register.
Issue
The examining attorney’s argument is set out in his
brief:
“Soft” is defined, inter alia, as
“demanding little work or effort.”
“Action” is defined, inter alia, as “an
operating mechanism” and “the manner in
which a mechanism or instrument
operates.” … Thus, “action” is clearly
descriptive of applicant’s goods. “Soft”
in this context is, in essence, a
laudatory term. Laudatory terms, i.e.,
those terms that attribute quality or
excellence to the goods or services, are
considered descriptive terms under
Trademark Act Section 2(e)(1)…. That
is, laudatory terms, phrases and slogans
are nondistinctive and unregistrable
without proof of acquired
distinctiveness. … Thus, SOFTACTION,
as applied to applicant’s goods, would
mean that the drawer guide mechanisms
demand little work or effort to operate.
Examiner’s Br. at 2 (citations omitted). Thus, the
examining attorney argues, SOFTACTION is descriptive of
applicant’s cabinet hardware because it indicates that the
goods require little effort to use.
Serial No. 78563328
3
Evidence
In support of the refusal, the examining attorney made
several internet web pages of record with his first office
action:2
1. Heavy duty locks and latches
HL72’ Modular Lock System is a full
suite of heavy duty mortise locks and
latches designed to support the entire
Allgood range of levers, knobs and other
unsprung furniture. The range is
suitable for general commercial and
heavy industrial use. Offering
complementary build quality, design
integrity, and choice of external
finishes, HL guarantees the perfect
match between form and function whenever
you specify Allgood architectural
ironmongery.
* * *
Two way soft action mechanism in locks
and latches for knob furniture – allows
easy and convenient operation.
www.allgood.co.uk/graphics/products/2004_pdf/72_series.pdf.
(Sept. 7, 2005).
2. Gemini Professional Top Load CD Player
CDJ-01
Pro. Top Load CD Player / Instant start
/ Soft action door opening / Variable
pitch control – 4%, 8%, 16% / 3-year
warranty / 1 year warranty on lasers …
more info
www.jr.com/JRProductPage.process?Product=4023827 (Sept. 7,
2005).
3. Build a simple, soft-action muting
switch
2 Emphasis added in each instance.
Serial No. 78563328
4
* * *
The circuit in Figure 1 adds a soft-
muting switch with power-up/power-down
muting to a line-level audio circuit.
www.ednasia.com/article.asp?articleid-1401 (Sept. 7, 2005).
4. Felco F-2 “The Original” Hand Pruner
* * *
Amazon.com Review
Ideal for trimming rose bushes and woody
perennials, the Felco Original’s smooth,
soft action, ergonomic comfort, and
exceptional durability put it in a class
of its own. * * *
-Mary Park
www.amazon.com/exec.obidos/tg/detail/-/B00023RYS6/103-
4124407-0303011?v=glance (Sept. 7, 2005).
5. Pneumatic Shutter Drive: The PSD … is a
pneumatically driven actuator with a
soft start and stop motion. The PSD is
equipped with two switches to detect the
final positions. The moving angle is
adjustable. The speed is due to the
used air pressure. The actor is easy to
mount and unmount for baking. This
drive is usable for shutters and other
applications.
Technical Data
Type ESD Type ESD
Flange NW 16 CF Flange NW 16 CF
Length 240 mm (air side) Length 178 mm (air side)
Max width 75 mm Moving
Angle
0° … 180°
Weight 880 g (feedthrough
included)
Baking
Temperatur
e
250°C (after
unmounting the
electric motor)
Drive voltage 0 ,,, 24 VDC or as
specified
Drive
voltage
NW 16 CF/NW 40
CF/NW 63 CF
Baking temperature 250°C (after
unmounting the
electric motor)
Soft action
shutter drive
Optional
www.specs.com/products/MBE/MBE-Components/shutters
Serial No. 78563328
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/shutter_drives/shutterdrive.htm (Sept. 7, 2005).
The examining attorney also referred to dictionary
definitions of “soft” and “action” in his first office
action, although the definitions were not attached to the
office action. It appears that the examining attorney
attempted to attach this evidence to his office action, but
was unsuccessful for some reason. Nonetheless, the Board
may take judicial notice of such sources on appeal, E.g.,
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983). In doing so, we note that
although the incomplete reference was attached to the first
office action, applicant did not object to or question this
evidence throughout prosecution or on appeal. Moreover, it
does not appear that applicant disputes the common
definition of these terms, but rather argues that its mark
as a whole is not descriptive of the identified goods.
Accordingly, we take judicial notice of the following
definitions from www.m-w.com, the source referred to by the
examining attorney.
6. soft
* * *
2: demanding little work or effort :
easy
7. action
* * *
Serial No. 78563328
6
7 a: an operating mechanism b: the
manner in which a mechanism or
instrument operates
www.w-m.com (last visited August 24, 2007).
Finally, in his brief, the examining attorney requested
that the Board take judicial notice of another sense of the
term “soft,” apparently taken from the same dictionary as
items 6 and 7 above.3 However, because this internet
evidence was presented for the first time on appeal, and was
not actually attached to the examining attorney’s brief, we
deny the examining attorney’s request for judicial notice.
Compare In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002) (judicial notice taken of internet evidence
attached to appeal brief where record indicates online
resource is available in book form).
Applicant did not submit any evidence.
Applicable Law
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
3 Again, the examining attorney stated that a copy of the
definition was attached to his appeal brief, but as was the case
with the definitions attached to the first office action, it
appears that the attachment was unsuccessful because the only
attachment to the brief in the Board’s record is a page with the
www.m-w.com URL, but no definition.
Serial No. 78563328
7
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, or function of the goods. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
Discussion
Applicant’s argument is set out in its brief:
The Examining Attorney refused
registration of applicant’s mark
SOFTACTION asserting that the proposed
mark merely describes a characteristic
of applicant’s goods. The Examining
Attorney maintains that the term defines
devices that “demand little work or
effort in their use.” The goods
identified by the mark are guides used
to control the movement of drawers in a
cabinet. By their very nature, cabinet
drawers are not difficult to operate and
therefore there would be no need to add
cost and complexity to a drawer to make
them more effortless to operate.
Although previous users of the term may
have used it to describe the ease of
operation of their device, the same does
Serial No. 78563328
8
not automatically apply to applicant’s
goods.
The Examining Attorney maintains that it
is undisputed that “soft” is defined as
“demanding little work or effort.”
However, the SOFTACTION system has no
bearing on the work or effort it takes
to operate the cabinet drawer. The
SOFTACTION system is a closing mechanism
built into the drawer guides to
facilitate closure of the drawer without
rattling the contents of the drawer or
creating excessive wear on the drawer
assembly. The Examining Attorney has
mischaracterized the mark to fit within
the evidence of prior uses of similar
terms.
App. Br. at 1.
We find that the evidence of record is insufficient to
support the refusal in this case. While the dictionary
definitions of “soft” and “action” might possibly support a
descriptiveness refusal as applied to different goods, a
descriptiveness refusal under Trademark Act § 2(e)(1) cannot
be made upon an abstract analysis of the mark. Rather,
descriptiveness must be determined in relation to the goods
identified in the application. In re Recovery, 196 USPQ at
831.
To begin with, We disagree with the examining
attorney’s assertion that the term “soft” is laudatory as
applied to applicant’s goods. Laudatory terms are those
which attribute a level of quality or excellence to the
goods at issue. As demonstrated by the cases cited in the
examining attorney’s brief, laudatory marks typically
Serial No. 78563328
9
include terms such as “ultimate,” In re Nett Designs, Inc.,
236 F.2d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001), “best,” In
re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
1999), or “super,” In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995). Apart from their attribution of quality,
such terms do not otherwise describe attributes of the
goods.
The examining attorney argues that “soft,” as applied
to the applicant’s goods, indicates that the goods require
little effort or are easy to use. But even if this is
correct, such a use of “soft” does not indicate that
applicant’s goods are better or more desirable than any
other such goods. Accordingly, our analysis does not focus
on whether “soft,” as used in applicant’s mark is laudatory,
but rather whether “soft” and the mark as a whole, is
descriptive in the usual sense.
Applicant seeks registration of SOFTACTION as a
trademark for cabinet hardware. Although the examining
attorney speculates that the mark indicates that applicant’s
goods take little effort to operate, there is nothing in
this record to indicate that cabinet drawers in general or
the particular drawers for which applicant’s goods are made
are difficult to operate. As applicant argues, whatever the
meaning of SOFTACTION (or “soft” and “action”) may be as
Serial No. 78563328
10
applied to other goods, the examining attorney’s theory
makes little sense as applied to the goods at issue here.
The web pages submitted by the examining attorney do
not support a different result. Of the five references
attached to the first office action, four appear to refer to
goods far afield from those of the applicant. The closest
piece of evidence, from www.allgood.co.uk, mentions “soft
action” in the context of locks for furniture: “Two way
soft action mechanism in locks and latches for knob
furniture – allows easy and convenient operation.” But
whatever the need or desirability of “easy and convenient
operation” for locks, it is not apparent from the evidence
or argument that the same applies to drawers, or that a
passing reference to “soft action” on a foreign4 website is
sufficient to meet the Office’s burden of showing that the
mark immediately conveys this information to the potential
purchaser.
4 The relevant inquiry is whether consumers in this country would
consider the mark descriptive. While foreign web sites may be
considered as evidence, In re Remacle, 66 USPQ2d 1222 (TTAB 2002)
(“It is reasonable to assume that professionals in medicine,
engineering, computers, telecommunications and many other fields
are likely to utilize all available resources, regardless of
country of origin or medium.”), it does not seem likely that many
purchasers of cabinet hardware or locks for furniture would spend
appreciable time perusing the web sites of foreign vendors the
way that professionals in highly technical jobs keep abreast of
foreign developments in their field. But even when it is
appropriate to consider such materials, caution is in order
because English usage differs significantly from country to
country. Accordingly, while we have considered this evidence,
Serial No. 78563328
11
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.
under these circumstances we feel it is entitled to little weight
in determining the meaning of SOFTACTION in the U.S.
