2/12/01 Paper No. 21
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Oris LTDA
________
Serial No. 74/718,903
_______
John A. Clifford of Merchant & Gould P.C. for Oris LTDA.
Mary Rossman, Trademark Examining Attorney, Law Office 109
(Ronald Sussman, Managing Attorney).
_______
Before Hohein, Hairston and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Oris LTDA, as assignee of United Rope (Holland)
Distributors, Inc., is the owner of an application to register
the term "EXTRA STRONG" as a trademark for "baler twine".1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, the term
"EXTRA STRONG" is at least merely descriptive of, if not generic
for, such goods. In particular, while applicant, in its initial
response to the refusal on the ground of mere descriptiveness,
1 Ser. No. 74/718,903, filed on August 22, 1995, which alleges a date
of first use anywhere of December 1986 and a date of first use in
commerce of May 1987. The word "STRONG" is disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 74/718,903
2
amended the application to set forth a claim that the term "EXTRA
STRONG" has acquired distinctiveness for its baler twine and is
therefore registrable pursuant to the provisions of Section 2(f)
of the Trademark Act, 15 U.S.C. §1052(f), such claim has been
finally refused as insufficient on the basis that the term is
either generic for applicant's goods or, alternatively, it is so
highly descriptive thereof that the evidence offered by applicant
does not suffice to demonstrate acquired distinctiveness.2 Thus,
as applicant notes in its initial brief, the issues on this
appeal are whether the term "EXTRA STRONG" is generic for
applicant's goods and, if not, whether applicant's showing is
sufficient to establish that such term, although merely
descriptive of baler twine, has acquired distinctiveness.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register on the ground that while, on this record, clear evidence
of genericness has not been shown by the Examining Attorney, the
2 It is pointed out that while, as set forth in In re Capital Formation
Counselors, Inc., 219 USPQ 916, 917 (TTAB 1983) at n. 2, the
insufficiency of a showing pursuant to Section 2(f) is not a statutory
basis for a refusal of registration on the Principal Register, the
failure to make a sufficient showing of acquired distinctiveness
precludes registration of a term which is otherwise barred by the
"merely descriptive" prohibition of Section 2(e)(1). Furthermore, in
the case of a merely descriptive term which is generic, no showing of
acquired distinctiveness would suffice for purposes of registration on
the Principal Register. See, e.g., H. Marvin Ginn Corp. v.
International Ass'n of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986) and authority cited therein ["A generic term ...
can never be registered as a trademark because such term is 'merely
descriptive' within the meaning of Section 2(e)(1) and is incapable of
acquiring de jure distinctiveness under Section 2(f). The generic
name of a thing is in fact the ultimate in descriptiveness"]. Thus,
applicant's claim of acquired distinctiveness would not suffice to
overcome a possible finding that the term "EXTRA STRONG" is generic
for applicant's goods so as to permit registration.
Ser. No. 74/718,903
3
term "EXTRA STRONG" is merely descriptive of applicant's baler
twine and applicant has failed to establish that such term has
acquired distinctiveness.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See 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 or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
aspect about them. Moreover, 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 or is to be used in connection
with those 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. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Consequently,
"[w]hether consumers could guess what the product [or service] is
from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Ser. No. 74/718,903
4
It is also well established that, in the case of a
generic term, the burden is on the Patent and Trademark Office
("PTO") to show the genericness of such term by "clear evidence"
thereof. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., supra at 1143. See also In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987). As to the standard
for evaluating genericness, the Board in In re Leatherman Tool
Group Inc., 32 USPQ2d 1443, 1449 (TTAB 1994), has stated for
example that:
The test for determining whether a
designation is generic, as applied to the
goods [or services] set forth in an
application or registration, turns upon how
the term is perceived by the relevant public.
See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991)
and cases cited therein at 1553. Such
perception is the primary consideration in a
determination of genericness. See Loglan
Institute Inc. v. Logical Language Group
Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1532
(Fed. Cir. 1992). As Section 14(3) of the
Trademark Act, 15 U.S.C. §1064(3), makes
clear, "[a] ... mark shall not be deemed to
be the generic name of goods [or services]
solely because such mark is also used as a
name to identify a unique product [or
service]"; instead, "[t]he primary
significance of the ... mark to the relevant
public rather than purchaser motivation shall
be the test for determining whether the ...
mark [is or] has become the generic name of
the goods [or service] on or in connection
with which it has been used." Consequently,
if the designation sought to be registered is
understood by the relevant public primarily
to refer to the class or genus of goods [or
services] at issue, the term is generic. See
H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., [728 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986)] ....
Evidence of the relevant public's
understanding of a term may be obtained from
any competent source, including newspapers,
Ser. No. 74/718,903
5
magazines, dictionaries, catalogs and other
publications. See In re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961,
963 (Fed. Cir. 1985).
Furthermore, as our principal reviewing court has
reaffirmed in In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832, 1836 (Fed. Cir. 1999):
[T]he correct legal test for
genericness, as set forth in Marvin Ginn,
requires evidence of "the genus of goods or
services at issue" and the understanding by
the general public that the mark refers
primarily to "that genus of goods or
services." .... In this, as in all cases,
therefore, the PTO must be able to satisfy
both elements of the test as set forth in the
controlling precedent of Marvin Ginn.
In particular, the court noted in this regard that "'[a]ptness is
insufficient to prove genericness" and also cautioned that it is
insufficient to "simply cite definitions and generic uses of the
constituent terms of a mark, or ... a phrase within the mark, in
lieu of conducting an inquiry into the meaning of the disputed
[terms or] phrase as a whole [in order] to hold a mark, or a
phrase within in the mark, generic." Id.
Turning first to the issue of genericness, applicant
acknowledges in its initial brief that "[t]he Examining Attorney
has found a significant amount of information from sources such
as the Thomas Register, sample [third-party] labels from the
market place, and Lexis/Nexis Database reports." However, even
when such evidence is combined with additional evidence,
including dictionary definitions of both the terms identifying
applicant's goods and the terms which comprise its mark,
applicant further asserts that:
Ser. No. 74/718,903
6
Applicant respectfully disagrees with the
conclusions reached [by the Examining
Attorney] and strongly urges that the
evidence does not support a finding that the
mark is generic. Applicant freely concedes
that strength is a property of baler twine
and other similar substances. In fact, the
disclaimer of the word STRONG, apart from the
mark ..., fully handles this issue. The
evidence submitted by the Examining Attorney,
when fairly viewed, buttresses the conclusion
that STRONG is an inherent property of baler
twine. This fact does not prevent
[r]egistration of the entire mark EXTRA
STRONG[,] including a disclaimer of the word
strong.
In particular, applicant accurately notes that none of the third-
party registrations in which the term "extra strong" appears in
the identification of goods "is for baler twine." Other
evidence, "such as the samples of string, twine, and rope whose
labels are part of the record" and which claim that the
particular product "has great strength and is durable" or that it
has the "extra strength of a synthetic," is also insufficient,
according to applicant, because the use of "the words extra
strength to describe the product" is not the same as using the
term "extra strong" to name the product category. Applicant
consequently argues that since "[n]o evidence exists to establish
that EXTRA STRONG is a genus of product, or would be understood
as such, ... the mark is not generic."
The Examining Attorney, on the other hand, asserts that
a generic term "is an apt or common descriptor of a class or
genus of goods" and that "[t]he class of product at issue here is
baler twine." According to the Examining Attorney, "[t]he
inquiry here is thus whether members of the relevant public use
Ser. No. 74/718,903
7
or understand EXTRA STRONG ... to refer primarily to this
category, class, kind or type of product." In this regard, the
Examining Attorney contends among other things that (footnote
omitted; emphasis in original):3
As recognized by the Applicant, the
examining attorney has provided a significant
amount of evidence that includes dictionary,
thesaurus and encyclopedia excerpts,
photocopies of twine and rope products
together with their respective labels and
packaging, Nexis story excerpts, Thomas
Register excerpts, and X-search excerpts.
The dictionary, thesaurus and encyclopedia
excerpts show that twine is a strong cord;
that rope, twine and cords are synonymous;
and that strength is a property of baler
twine and other similar substances. As shown
by the highlighted, attached excerpt from The
New Encyclopedia Britannica, not only is
strength a property of such products, "The
prime property ... is its tensile strength."
There can thus be no question that the term
EXTRA STRONG identifies the primary attribute
of the [applicant's] goods.
The examining attorney's evidence [also]
included photocopies of four different twine,
cord and rope products with their labels and
packaging. These reinforce the information
that the principal property of the goods is
their tensile strength and that this is one
category for the products. For example, in
connection with one product, wording that is
identical to that sought to be registered,
EXTRA STRONG, is used on the label for a ball
of kite twine [which is] also suitable for
3 To the extent that certain excerpts accompanying the Examining
Attorney's brief have not previously been made of record, and inasmuch
as it is settled that judicial notice may properly be taken of
standard reference works such as dictionaries, thesauri and
encyclopedias, the request by the Examining Attorney in her brief that
"judicial notice be given to excerpts" from such sources is approved.
See, e.g., In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 423
(CCPA 1962) at n. 6; Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); and 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).
Ser. No. 74/718,903
8
household tying. On a second product, the
photocopy of Ironees brand clothesline and
label[,] indicates that the product is "thick
heavy-duty, extra hi-tensile strength." The
third product and label, for Wellington
PolyTwine, indicates that the product has the
handling and knotting characteristics of
natural fibers with the extra strength of a
synthetic. .... Fourth, the photocopy of
Lehigh braided nylon rope and packaging
includes charts about the properties of the
goods ... and includes cautionary language
that the strength of the goods is effected by
knots, excessive heat and prolonged exposure
to sunlight.
The Thomas Register excerpts are
advertisements by competitors Crowe Rope
Company and Waterbury Rope Mills for twine,
cord, and rope products. These ads reinforce
the encyclopedia information that the prime
property for the product is tensile strength
and that the goods are categorized by their
varying strength. The ads ... include
numerous statements about the essential
characteristics of the products: "high
strength," "three to four times as strong,"
"Super high strength," A strong uniformly,
round cord," "Superior strength," "One of the
strongest ropes in general use," "High
strength," and "Strong and lightweight."
....
To show that goods such as baler twine
used in automatic bale throwing and ejecting
equipment must necessarily be categorized and
typed as extra strong, the examining attorney
[additionally] attached copies of Nexis
stories and X-search printouts .... The
writer of The Tennesseean story published
August 25, 1997 stated that "the new breed of
balers ... pulled behind a tractor" use
"heavy twine to tie the bales." The writer
of the Pittsburgh Business Times & Journal
story published October 7, 1985 stated that
"New high-volume balers require stronger
baling ties ... to provide extra strength."
The ... X-search printouts for U.S. Reg. Nos.
695551 BIGHORN baling and binding twine and
wire, 1631169 RANCHGUARD baling wire and
1573442 RANCHGUARD baling twine, ...
demonstrate that the same entities have
Ser. No. 74/718,903
9
registered the same marks for use with both
baler twine and baling wire and that these
goods are closely related goods that
customers used [sic] interchangeably. Thus
the wording EXTRA STRONG immediately informs
prospective purchasers of a category and
prime property of applicant's goods.
Contrary to the Examining Attorney's conclusion that
"the wording EXTRA STRONG has been shown to be common, laudatory
[and] readily understood wording and to identify a type or
category of product ... [which designates] an inherent
characteristic of the identified goods," we agree with applicant
that the evidence offered falls short of clearly establishing
genericness. While, as applicant concedes, the strength of baler
twine is a significant characteristic or feature of its goods,
there simply is insufficient evidence to show that the term
"EXTRA STRONG" names a category or grade of baler twine. In fact
the sole actual use of such term as a category or grade
denomination, as applicant points out, is in connection with kite
twine, a product which, while it may be suitable for household or
general purpose use, has not been shown to be a substitute or
otherwise appropriate for heavy duty use as baler twine. It also
appears from the record that, curiously, a search of the term
"EXTRA STRONG" was not even conducted using the "NEXIS" database;
instead, the Examining Attorney confined her searches to those
employing the terminology "extra strength." Although it is plain
that the latter is substantially similar in connotation to the
former, such is not the same and there is nothing in the record
which clearly demonstrates that the term "EXTRA STRONG"
designates, as opposed to merely describing, a tensile strength
Ser. No. 74/718,903
10
category or other significant kind or variety of baler twine.
Thus, notwithstanding various dictionary definitions (discussed
below) of such words as "extra," "strong," "bale" and "twine,"
the absence of any third-party use of the term "EXTRA STRONG" in
connection with baler twine compels a conclusion on this record
that such term is not generic in relation to applicant's goods.
See, e.g., In re American Fertility Society, supra; and In re
Ferrero S.p.A., 24 USPQ2d 1155, 1157 (TTAB 1992) ["if a term is
generic for a type of a product that has been on the market for
decades, evidence of its use by others in the marketplace should
be available"].
Turning next to whether the term "EXTRA STRONG" has in
fact acquired distinctiveness in connection with applicant's
goods, we note as a preliminary consideration that, not only is
there no real contention by applicant that such term is not
merely descriptive of baler twine, but it is highly so as the
following dictionary definitions make plain. Specifically, The
American Heritage Dictionary of the English Language (3rd ed.
1992) defines "twine" in relevant part as a noun meaning "1. A
strong string or cord made of two or more threads twisted
together";4 lists "bale" (and "baler," although the latter is not
defined) as a noun signifying "A large package of raw or finished
4 Likewise, the definitions of record from The Random House Dictionary
of the English Language (2d ed. 1987) and Webster's II New Riverside
University Dictionary (1988) respectively set forth such term as a
noun meaning, among other things, "1. a strong thread or string
composed of two or more strands twisted together" and "1. A strong
string or cord formed of two or more threads twisted together."
Ser. No. 74/718,903
11
material tightly bound with twine or wire and often wrapped";5
sets forth "extra" as an adjective connoting, inter alia, both
"1. More than or beyond what is usual, normal, expected or
necessary" and "2. Better than ordinary; superior: extra
fineness" and as an adverb meaning "To an exceptional extent or
degree; unusually: extra dry";6 and defines "strong" in
pertinent part as an adjective signifying "7. a. Capable of
withstanding force or wear; solid, tough, or firm: a strong
building; a strong fabric. b. Having great binding strength: a
strong adhesive."7 Clearly, as used in connection with baler
twine, the term "EXTRA STRONG" immediately describes, without
speculation or conjecture, a significant characteristic or
feature of such product, namely, that it is exceptionally capable
of withstanding force or is beyond the usual toughness for goods
of its kind.
Plainly, there is nothing in the term "EXTRA STRONG"
which, as applied to baler twine, is ambiguous, incongruous or
susceptible to any other plausible meaning. Consequently,
absolutely no imagination, cogitation or mental gymnastics
whatsoever is necessary in order for customers of applicant's
5 To the same effect, the record contains a definition of "bale" from
Webster's II New Riverside University Dictionary (1988) which defines
such term as a noun denoting "A large bound, often wrapped package or
raw or finished material."
6 Likewise, the definitions of record from Webster's II New Riverside
University Dictionary (1988) set forth such term, inter alia, as an
adjective meaning "1. Being beyond the expected, usual, or necessary.
2. Being better than ordinary : SUPERIOR " and as an
adverb connoting "Exceptionally : unusually ."
7 Similarly, the record includes a definition of "strong" from
Webster's II New Riverside University Dictionary (1988) which lists
Ser. No. 74/718,903
12
goods to know that the tensile strength of its product, which
applicant "freely concedes" is an important property to users and
purchasers of baler twine, is extra strong. Stated otherwise,
the baler twine marketed by applicant under the designation
"EXTRA STRONG" is not just "strong twine," of which there are
numerous "NEXIS" references thereto in the record,8 but baler
twine which is extra strong.
Furthermore, by amending the application to set forth a
claim of acquired distinctiveness, applicant has in effect
conceded that the term "EXTRA STRONG" is merely descriptive of
(although not generic for) its goods. Specifically, such a claim
is tantamount to an admission that the term "EXTRA STRONG" is not
inherently distinctive and therefore is unregistrable on the
Principal Register, in light of the prohibition in Section
2(e)(1) against merely descriptive marks, absent a showing of
such term as an adjective signifying, in relevant part, "6. Capable
of enduring : SOLID
."
8 The following examples, from the Examining Attorney's searches of
"STRONG TWINE" and "STRONG W/20 TWINE," are representative:
"Fibrous bark of the mature plants can be twisted and
braided into a strong twine." -- Washington Post, June 9,
1995;
"Attach a length of green nylon tie or very strong
twine to the bottom of each length of chain." -- L.A. Times,
September 10, 1994;
"He was old enough to remember how the Iban made
strong twine from the heart of liana vines before stores
made living simpler." -- San Francisco Examiner, August 14,
1994;
"Tie the moss firmly in place with strong twine or
fabric." -- St. Petersburg Times, March 7, 1992; and
"The county urges that papers be bundled in strong
twine only or stored in paper bags ...." -- Washington Post,
July 14, 1988.
Ser. No. 74/718,903
13
acquired distinctiveness pursuant to Section 2(f). See, e.g.,
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) ["[w]here, as here, an
applicant seeks a registration based on acquired distinctiveness
under Section 2(f), the statute accepts a lack of inherent
distinctiveness as an established fact"]; and TMEP §1212.02(b).
As our principal reviewing court has noted with respect
to the possible registrability of merely descriptive terms which
may nevertheless acquire distinctiveness or secondary meaning,
"the greater the degree of descriptiveness the term has, the
heavier the burden to prove it has obtained secondary meaning."
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., supra at 6
USPQ2d 1008. See also In re Bongrain International (American)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 (Fed. Cir. 1990) at n.
4. It is settled, moreover, that the applicant has the burden of
proof with respect to establishing a prima facie case that a
merely descriptive term has acquired distinctiveness.9 For
instance, as stated in Yamaha, "the ultimate burden of persuasion
9 Under Trademark Rule 2.41(a), an applicant may demonstrate that such
a term has acquired distinctiveness by submitting "affidavits, or
declarations in accordance with §2.20, depositions, or other evidence
showing duration, extent and nature of use in commerce and advertising
expenditures in connection therewith (identifying types of media and
attaching typical advertisements), and affidavits, or declarations in
accordance with §2.20, letters or statements from the trade or public,
or both, or other appropriate evidence tending to show that the mark
distinguishes the goods." In addition, or in the alternative,
Trademark Rule 2.41(b) provides that "[i]n appropriate cases,
ownership of one or more prior registrations on the Principal Register
... of the same mark may be accepted as prima facie evidence of
distinctiveness" and that an acquired distinctiveness claim may also
be based on a verified statement that the asserted mark has been in
"substantially exclusive and continuous use in commerce ... by
applicant for the five years before the date on which the claim of
distinctiveness is made".
Ser. No. 74/718,903
14
under Section 2(f) on the issue of acquired distinctiveness is on
... [the] applicant." Id.
Applicant, in support of its claim of acquired
distinctiveness,10 has submitted the declaration of Mark
Robideaux, who at the time was the corporate secretary of United
Rope (Holland) Distributors, Inc., the immediate predecessor-in-
interest to the current applicant, Oris LTDA. Mr. Robindeaux
declares, among other things, that his declaration is made "in
the belief that the trademark 'EXTRA STRONG' has become
distinctive of the goods of United Rope (Holland) Distributors,
Inc."; that since at least as early as December 1986, such firm
"adopted the trademark 'EXTRA STRONG' for use on baler twine" and
that, since that time, it "has continuously used the trademark
'EXTRA STRONG' on baler twine" and that "such use has been
substantially exclusive to United Rope (Holland) Distributors,
Inc."; that, "[s]ince the introduction of the product, sales have
been substantial," as shown in the table below, which "sets forth
the sales volume [in bales of twine] from 1986 through 1995":
Year Bales
1986 4,950
1987 25,700
1988 11,400
1989 7,950
1990 24,900
1991 21,650
10 Specifically, by an amendment filed on July 18, 1996, applicant
amended the application to "add the following 2(f) statement":
The mark has become distinctive of applicant's goods
as a result of substantially exclusive and continuous use
thereof by applicant in commerce for a period in excess of
five years preceding the date of which this claim of
distinctiveness is made.
Ser. No. 74/718,903
15
1992 59,200
1993 19,400
1994 23,650
1995 26,650
that during such period, "[t]he total bale volume of sales have
been in excess of 225,000 bales, with an average retail price in
the range of $15-$20 per bale"; that "[t]otal sales for the
period are in excess of $3,381,000.00; and that United Rope
(Holland) Distributors, Inc. "is the owner of Registration No.
1,143,429 for the 'HOLLAND EXTRA' mark used on baler twine and
Registration No. 1,128,656 for the mark EXTRA for baler twine."11
Applicant contends that the facts substantiated by Mr.
Robindeaux's declaration are sufficient to show that the term
"EXTRA STRONG" has acquired distinctiveness as used in connection
with its baler twine. In particular, while acknowledging in its
initial brief that it "bears the burden of establishing secondary
meaning," applicant asserts that it "has met this burden by
showing ... years of continuous use and substantial sales in
excess of 3.3 million dollars." Combined with the "[f]urther
evidence of secondary meaning ... presented by the claim of
ownership of prior registrations for related marks,"12 applicant
11 A copy of the subsequent assignment of such registrations to Oris
LTDA is of record. Thus, the present applicant is the owner thereof.
12 Relying principally upon its "prior ownership of the trademark
EXTRA," applicant stresses the argument that:
[T]his case is best viewed by considering what would occur
if Applicant had attempted to register the mark EXTRA TWINE,
with a disclaimer of TWINE. Such a mark would certainly be
registrable on this record as the disclaimer of TWINE would
remove any bar to registration. Here, where the mark is
EXTRA STRONG and Applicant has entered a disclaimer of
STRONG, the same result should hold. Namely, this
Ser. No. 74/718,903
16
urges that the totality of the evidence "is sufficient to
overcome the refusal to register."
We concur with the Examining Attorney, however, that
the term "EXTRA STRONG" is "highly ... descriptive of applicant's
goods" and that applicant's showing fails to demonstrate that
such term has in fact acquired distinctiveness as a trademark for
baler twine. Although applicant has established substantially
exclusive and continuous use of the term "EXTRA STRONG" for a
period of at least ten years, with sales amounting to over
225,000 bales with a value in excess of $3.3 million, the sole
manner of use demonstrated on this record is akin to a category
or grade designation, as shown by the photographs (one of which
is reproduced below) of packaging for its goods which applicant
submitted as specimens of use.
Application should be advanced to Publication and
Registration.
Ser. No. 74/718,903
17
The typical purchasers and users of applicant's goods, viewing
the term "EXTRA STRONG" in the above context, in which it is
bound between the generic words "bailer" and "twine," would
simply regard such term as designating a type or kind of baler
twine, i.e., extra strong baler twine (as opposed to, e.g.,
"strong twine"), rather than as a brand name of baler twine.
Moreover, as to applicant's sales figures, the
Examining Attorney accurately observes that applicant has "failed
... to provide any context with which to evaluate" its conclusion
that such figures represent substantial sales. While the amounts
proven by applicant may arguably be substantial in the abstract,
there is nothing in the record which indicates, by way of
examples, the overall size of the marketplace for baler twine and
the corresponding market share commanded by applicant's "EXTRA
STRONG" goods during the time period for which sales figures were
furnished. Furthermore, as the Examining Attorney also
persuasively points out, applicant has "provided no evidence of
any advertising activity at all, much less advertising activity
directed to creating secondary meaning in such highly descriptive
wording as EXTRA STRONG for baler twine."
Finally, with respect to applicant's contention that,
along with the other evidence presented, its ownership of two
prior registrations for baler twine marks which consist of or
contain the word "EXTRA" suffices to establish acquired
distinctiveness, we agree with the Examining Attorney that such
Ser. No. 74/718,903
18
registrations are not for the same mark, namely, the term "EXTRA
STRONG," as required by Trademark Rule 2.41(b). Contrary to
applicant's assertion regarding the sufficiency of its disclaimer
of the word "STRONG," applicant must establish that the term
"EXTRA STRONG" as a whole functions as a mark, and therefore has
acquired distinctiveness, for its goods in order to be entitled
to the registration which it seeks. Here, as the Examining
Attorney properly notes in her brief, the marks "EXTRA" and
"HOLLAND EXTRA" both "mean different things" from, and hence are
not the same mark as, the term "EXTRA STRONG" since the overall
commercial impressions engendered thereby plainly are not legal
equivalents.
Accordingly, it is adjudged that applicant has failed
to establish a prima facie case of acquired distinctiveness and
thus has not overcome the refusal on the ground of mere
descriptiveness. See, e.g., In re Pennzoil Products Co., 20
USPQ2d 1753, 1760-61 (TTAB 1991); and In re Packaging
Specialists, Inc., 221 USPQ 917, 920-21 (TTAB 1984). Such term
is basically so highly descriptive of baler twine which is extra
strong in its tensile strength that the term simply does not
serve as an indication of source for such goods.13
Decision: The refusal under Section 2(e)(1) on the
ground of genericness is reversed, but the refusal under Section
13 See, e.g., In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d
1056, 1058 (Fed. Cir. 1999), holding that the phrase "THE BEST BEER IN
AMERICA" for beer and ale to be "so highly ... descriptive of the
qualities of [the applicant’s] product that the slogan does not and
could not function as a trademark to distinguish Boston Beer’s goods
and serve as an indication of origin."
Ser. No. 74/718,903
19
2(e)(1) on the ground of mere descriptiveness is affirmed, due to
the insufficiency of applicant's claim of acquired
distinctiveness.
