Morcan

Trademark Trial and Appeal Board

Sep 27, 2007

No. 78586157 (T.T.A.B. Sep. 27, 2007)

Decision mailed:
September 27, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Morcan
________

Serial No. 78586157
_______

Vidal A. Oaxaca and Maria T. Nass of Peacock Myers, P.C. for
Dorina M. Morcan.

Travis D. Wheatley, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Hohein, Hairston and Bergsman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Dorina M. Morcan has filed an application to register
the term "StarDial" on the Principal Register in standard
character form for "printed paper astrological maps showing the
Ecliptic constellation boundaries and containing a thirteenth
constellation Ophiuchus" in International Class 16.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "StarDial" is merely descriptive of them.

1 Ser. No. 78586157, filed on March 13, 2005, which alleges a date of
first use anywhere of November 16, 2004 and a date of first use in
commerce of January 5, 2005.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78586157
2
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1) of the Trademark Act, if it forthwith conveys information
concerning any significant ingredient, quality, characteristic,
feature, function, purpose, subject matter or use of the goods.
See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the goods in order
for it to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term is merely descriptive
is determined not in the abstract but in relation to the goods
for which registration is sought, the context in which it is
being used or is intended to be used on or in connection with
those goods and the possible significance that the term would
have to the average purchaser of the or goods because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product is from consideration of the mark alone is not the test."
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant, in her brief, contends that "the mark at
issue is, at most, suggestive" inasmuch as "STARDIAL for printed
astrological tools consisting of celestial body locators known as
planispheres is neither descriptive of the astrological tools
Ser. No. 78586157
3
sold under the mark nor of planispheres." In particular, with
respect to the Examining Attorney's arguments in the final
refusal that the words "star" and "dial" are each "descriptive of
a characteristic, feature, etc. of the goods sold under the mark
STARDIAL," that such goods "are planispheres and that the mark
STARDIAL, when viewed as a whole, is descriptive of a planisphere
(synonyms for planispheres include 'star dial' and 'sky map,'"[)]
applicant asserts that:
As a preliminary matter, a typical
planisphere is a thumb wheel index chart that
allows a user to dial in the date of the year
and the time of day to show the
constellations that are in the sky at that
particular moment. Exhibits B and C (samples
of references from the Internet attached to
the Trademark Attorney's first office action)
show examples of planispheres (and the use of
the synonym "star dial"). Exhibit D is a
close-up view of a typical planisphere
necessarily comprising two disks. A
planisphere is defined by Merriam Webster
Online (www.m-w.com/dictionary/planisphere)
as "a representation of the circles of the
sphere on a plane; especially: a polar
projection of the celestial sphere and the
stars on a plane with adjustable circles or
other appendages for showing celestial
phenomena for any given time."

The Trademark Attorney, too, noted that
"[a] planisphere is '[a] polar projection of
half or more of the celestial sphere on a
chart equipped with an adjustable overlay to
show the stars visible at a particular time
and place.'" In effect, the planisphere is a
tool used by those interested in astronomy to
locate celestial bodies. Thus, the
planisphere may be adjusted to account for
changes in the night sky based on date and
time to find celestial bodies.

The STARDIAL product, on the other hand,
is not a celestial body locator. Therefore,
although the product "maps" astrological
constellations on its face for relation to a
user's birthday, it is not a map for locating
Ser. No. 78586157
4
celestial bodies in the sky. Also, unlike
the typical planisphere which uses a disc
superimposed on another disk, the STARDIAL
product uses an arrow to simultaneously point
to a birthday and zodiac constellation
opposite the birthday on the disk. Consumers
would purchase the STARDIAL product for
reading the position of the Sun in relation
to the thirteen zodiac signs on the product
and in relation to the user's birthday.

....

Given that Applicant's goods are not a
planisphere, Applicant asserts that the mark
STARDIAL is suggestive, rather than
descriptive, of goods that do not constitute
a "star dial" or planisphere. ....

Citing, in addition, various cases as support for her
"assertion that the combination of two words that might be
somewhat descriptive is not descriptive when viewed as a whole,"
applicant maintains that even if the words "star" and "dial are
individually regarded as descriptive of her product, it is still
the case that:
[A] combination of the words "star" and
"dial", when combined to form STARDIAL,
cannot be descriptive of goods not comprising
"star dials" or "planispheres" and cannot be
descriptive of the astrological tool sold
under the mark. As can be seen in the ...
[cited] cases, simply combining two words
having common meanings does not necessarily
make the mark descriptive of the goods ... of
the applicant, even when those two commonly-
understood [sic] words relate in some way to
the goods .... In the present application,
STARDIAL is a combination of two words, each
having somewhat commonly understood meanings.

Applicant consequently concludes that:
Again, the STARDIAL product is not a
"star dial", planisphere, or celestial body
locator as the Trademark Attorney contends.
The product, instead, relates to astrology,
not astronomy and "maps" a user's birthday in
relation to a zodiac constellation on the
Ser. No. 78586157
5
disk itself without reference to the night
sky. The Applicant's mark is suggestive but
not descriptive in that it requires
imagination and thought to connect it to
Applicant's product. Therefore, if "star"
and "dial" each relates in some way to
characteristics of the STARDIAL product, the
unitary mark STARDIAL is only suggestive in
accordance with applicable case law.

The Examining Attorney, on the other hand, argues that
the term "'STARDIAL' is merely descriptive, and not suggestive,
of a use or function of the identified goods, namely 'printed
paper astrological maps showing the Ecliptic constellation
boundaries and containing a thirteenth constellation Ophiuchus."
In particular, citing the definitions of record from The American
Heritage Dictionary of the English Language (3rd ed. 1992), he
contends that:
The proposed mark is a compound word
comprised of the terms "STAR" and "DIAL."
The definitions provided in the final office
action show that STAR means "[a] planet or
constellation of the zodiac believed in
astrology to influence personal destiny."
DIAL means "[a] a graduated surface or face
on which a measurement, such as speed, is
indicated by a moving needle or pointer."
Taken together, the wording "STARDIAL"
immediately and logically refers to a
graduated surface on which a measurement
related to planets or constellations of the
zodiac is indicated by a moving needle or
pointer.

In addition, the Examining Attorney maintains that
other "evidence in the record shows that the public commonly
refers to a map of stars and/or constellations placed on a dial
as a star dial." Specifically, the Examining Attorney notes the
following:
Ser. No. 78586157
6
• A screen shot of applicant's web page
stating that ... [her] product, "The
Star[D]ial shows the thirteen
constellations that form the Ecliptic."
This product shows, or provides a
representation, of thirteen
constellations, which are celestial
bodies that would be shown on a
celestial sphere.

• A "star dial" sold by REI. This product
description indicates that this "easy-
to-use planisphere helps you locate
stars and constellations in the night
sky."

• A "star dial" [sold by www.galileo-
telescope.com] that is a "time, star and
constellation locator," and provides an
example, showing that the star dial is
indeed a representation of the celestial
sphere.

• A "star dial" designed by "renowned
Uranian astrologer, Arlene Kramer,"
indicating that star dials have
astrological uses as well as
astronomical uses. ....

• A screenshot of a web page from an
Astronomy 102 class at Vanderbilt
University describing how a star dial
may be used to help "identify stars and
constellations in the evening sky [by
name]."

In view thereof, the Examining Attorney insists that
"applicant's goods are star dials; that is, they are planispheres
on which a user can determine the location of the sun with
respect to specific stars (or groups of stars in constellations)
on a given day." Noting, furthermore, that applicant's goods are
identified as "printed paper astrological maps showing the
Ecliptic constellation boundaries and containing a thirteenth
constellation Ophiuchus" and that, "[i]n relevant part, a map is
defined as 'a representation of the celestial sphere or a part of
Ser. No. 78586157
7
it,'"2 the Examining Attorney asserts that "[w]hen encountering
Applicant's mark used on the goods, prospective customers would
immediately understand that the goods are printed paper
astrological representations of the celestial sphere showing the
Ecliptic constellation boundaries and containing a thirteenth
constellation Ophiuchus." Accordingly, the Examining Attorney
insists that:
When the word STARDIAL is viewed with
the [applicant's] planisphere goods, nothing
is left for speculation or conjecture in the
alleged trademark. The compound immediately
and unequivocally describes the purpose,
function and nature of the goods. One who
knows what the goods are will immediately
understand the mark conveys information about
them.

Finally, while acknowledging applicant's argument that
a mark which combines descriptive terms may be registrable if the
composite creates a unitary mark with a separate, nondescriptive
meaning,3 the Examining Attorney urges that, in this instance,
the merely descriptive terms "star" and "dial," when combined to
form the compound term "StarDial," "remain as descriptive in the
compound as individually, and the compound thus created is itself
[merely] descriptive." According to the Examining Attorney, no

2 Such definition, the Examining Attorney indicates, is from "the
online version of the Merriam Webster Dictionary [which is] also
available in print form." Inasmuch as it is settled that the Board
may properly take judicial notice of dictionary definitions, the
request in the Examining Attorney's brief that we take judicial notice
of such definition is granted. See, e.g., Hancock v. American Steel &
Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852, 860 n.7 (TTAB 1981).

3 See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382,
384-85 (CCPA 1968).
Ser. No. 78586157
8
new and different commercial impression is created by the
combination of such terms.
Upon careful consideration of the arguments presented
and evidence of record, we agree with the Examining Attorney that
the term "StarDial" is merely descriptive of applicant's "printed
paper astrological maps showing the Ecliptic constellation
boundaries and containing a thirteenth constellation Ophiuchus."
In particular, the dictionary definitions and the screen shot or
print of record from applicant's website, as reproduced below,

demonstrate that the term "StarDial" immediately conveys, without
the need for speculation or conjecture, that the purpose or
function of applicant's goods is that of a type of planisphere in
which stars are constellations of the zodiac which are located
through the use of a dial. Thus, unlike other kinds of
Ser. No. 78586157
9
planispheres which the record shows are for astronomical use in
that they utilize a dial for finding the location of stars in the
nighttime sky, applicant's goods are for astrological use in that
they feature a moving pointer or arrow as part of a dial for
indicating the specific constellations of the zodiac associated
with one's date of birth.
Clearly, in the context of "printed paper astrological
maps showing the Ecliptic constellation boundaries and containing
a thirteenth constellation Ophiuchus," as applicant's goods are
identified in her application, the word "star" is used in the
sense of its dictionary meaning of "[a] ... constellation of the
zodiac believed in astrology to influence personal destiny" and
the word "dial" is used in the sense of its dictionary
connotation of "[a] graduated surface or face on which a
measurement ... is indicated by a moving ... pointer." Such is
plain from both the illustration of applicant's product, as shown
in the screen print from her website, and the description thereof
contained therein, which among other things instructs that: (i)
"[t]he StarDial shows the thirteen constellations that form the
Ecliptic"; (ii) "[i]n the course of one year, the Sun 'visits' a
number of constellations. This path is called the Ecliptic, and
is divided into the twelve well known constellations of the
Zodiac. But the Sun really visits thirteen constellations.
Learn all about it with this dial!" (emphasis added); and (iii)
"[o]n a StarDial, point the arrow to your date of birth and read
the name of the constellation." Furthermore, although not
mentioned by the Examining Attorney, it is noted that the
Ser. No. 78586157
10
specimens of use for applicant's goods refer to her "StarDial" as
a "Zodiac Finder" and similarly explain the thirteenth
constellation, referred to as "Ophiuchus," and the manner of
operation of applicant's goods as follows:
Zodiac Finder: The Thirteenth Constellation
As viewed from the Earth, the Sun passes
through 13 constellations during the course
of one year. This path is called the
Ecliptic and is divided into 13 not 12 Zodiac
constellations. The ancient astronomers were
superstitious of the number 13 and simply
ignored one constellation, Ophiuchus, the
Serpent Bearer. Astronomical dates
associated with the constellations were
calculated over 2600 years ago. Since that
time, the constellations have moved westward
approximately 30 degrees or the equivalent of
one calendar month. The Sun passes in front
of the stars of Ophiuchus every year in early
December. Superstition aside, about one
person in twenty is born under Ophiuchus.

....

Fun and Games
Where was the Sun? Point the arrow to your
date of birth and read the name of the
constellation. ....

In the context of applicant's goods, there is nothing
in the term "StarDial" which, to those in the market for
astrological maps or other information showing Ecliptic
constellation boundaries, including a thirteenth constellation
Ophiuchus, is incongruous, ambiguous or even suggestive, nor is
there anything which would require the exercise of imagination,
cogitation or mental processing, or necessitate the gathering of
further information, in order for the merely descriptive
significance thereof to be readily apparent to such customers.
Instead, the term "StarDial" conveys forthwith that a significant
Ser. No. 78586157
11
purpose or function of applicant's goods is that they serve as a
star dial in the sense of indicating constellations of the zodiac
associated with persons' dates of birth. Contrary to applicant's
assertion, it is plain that the individual terms "star" and
"dial" which comprise the term "StarDial" have a meaning when
combined which ordinary usage would ascribe to those terms in
combination, and the fact that, for instance, the compound term
does not appear in any dictionary is simply not controlling on
the question of registrability. See In re Gould Paper Corp., 824
F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) and In re Orleans
Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977). No new and unique
commercial impression is created inasmuch as nothing in the
combination results in a unitary mark with a unique, bizarre or
otherwise nondescriptive meaning as applied to applicant's goods.
Rather, the constituent elements retain their descriptive
significance and their combination is itself merely descriptive
of applicant's goods. See, e.g., In re Tower Tech, Inc., 64
USPQ2d 1314, 1317-18 (TTAB 2002) (SMARTTOWER held merely
descriptive of commercial and industrial cooling towers and
accessories therefor, sold as a unit); In re Sun Microsystems
Inc., 59 USPQ2d 1084, 1087-88 (TTAB 2001) (AGENTBEANS found
merely descriptive of computer software for use in development
and deployment of application programs on global computer
network); and In re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB
1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT
held to be merely descriptive of bread containing oats and
hazelnuts).
Ser. No. 78586157
12
Therefore, even if applicant were and/or still is the
sole user of the term "StarDial" in connection with her "printed
paper astrological maps showing the Ecliptic constellation
boundaries and containing a thirteenth constellation Ophiuchus"
rather than with respect to a type of celestial body locator as
used in astronomy, it is well settled that such use by applicant
does not entitle her to the registration of the term "StarDial"
where, as here, the term has been shown by the evidence of record
to immediately convey only a merely descriptive significance in
the context of applicant's goods. See, e.g., In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB
1983); and In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB
1972). Here, applicant concedes that as to its purpose or
function, her product--which her website refers to as "this
dial!"--"'maps' astrological constellations on its face for
relation to a user's birthday" by using a dial that features "an
arrow to simultaneously point to a birthday and zodiac
constellation opposite the birthday on the disk." The term
"StarDial" is accordingly merely descriptive of applicant's
goods.
Decision: The refusal under Section 2(e)(1) is
affirmed.