Sonco Worldwide, Inc.

Trademark Trial and Appeal Board

Mar 12, 2008

No. 78772258 (T.T.A.B. Mar. 12, 2008)

Mailed:
March 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sonco Worldwide, Inc.
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Serial No. 78772258
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Scott D. Woldow of Smith, Gambrell & Russell, LLP for Sonco
Worldwide, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Donniger, Managing Attorney)
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Before Zervas, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sonco Worldwide, Inc. filed an intent to use
application on the Principal Register for the mark SATIN
SMOOTH, in standard character format, for goods ultimately
identified as “galvanized metal chain link fencing, metal
chain link fencing; metal fencing panels,” in Class 6
(Serial No. 78772258). The Examining Attorney refused
registration under Section 2(e)(1) of the Trademark Act of
1946, 15 U.S.C. §1052(e)(1), on the ground that SATIN
SMOOTH, when used in connection with applicant’s products,
is merely descriptive. The Examining Attorney contends
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78772258
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that the mark SATIN SMOOTH directly conveys the fact that
applicant’s metal fencing products free from irregularities
and roughness: that is, the surface of applicant’s fencing
products is smooth. To support his refusal, the Examining
Attorney submitted the following evidence:
1. A dictionary definition of the word “satin” as
“glossy, sleek, and smooth”;1
2. A dictionary definition of the word “smooth” as
“having a surface free for irregularities, roughness, or
projections”;2
3. An excerpt from the K-9 Kennels Systems website
featuring an advertisement for a boxed kennel system with
the following description: “Our satin smooth galvanized
fence fabric is safe for use with expensive breeds as well
as your beloved stray”3;
4. An excerpt from the American Fence, Inc. website.
The description of that company’s dog kennel includes the
following statement: “11 ½ gauge satin smooth galvanized
wire standard”4;

1 Dictionary.com derived from The American Heritage Dictionary of
the English Language (4th ed. 2000).
2 Id.
3 www.southwesternwire.com.
4 www.american-fence.com.
Serial No. 78772258
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5. An excerpt from the Fence Center website. The
company describes its chain link mesh as “galvanized, satin
smooth”5; and,
6. An excerpt from the Imperial Blasting
Technologies website, a company involved in commercial and
industrial surface preparation. In touting its services,
the company states that its “mineral blasting process
removes rust and/or contaminants safely, leaving you with a
satin smooth, undamaged pre-treated surface suitable for
powder coating or painting.”6
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the products for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, the issue is whether a relevant
purchaser who knows what the products are will understand

5 www.fencecenter.com.
6 www.imperialblasting.com.
Serial No. 78772258
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the mark to convey information about them. In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re
Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998); In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings
Corp., 226 USPQ 365, 366 (TTAB 1985).
The evidence clearly shows that “satin smooth” is used
by others and understood by consumers to refer to chain
link fencing that is very smooth and without irregularities
or roughness. Imperial Blasting Technologies stated in its
website that its process of preparing surfaces, including
many grades of metal, leaves the consumer with a “satin
smooth” surface. In fact, in its brief, applicant stated
that its fencing products “undergoes a process so that the
rough metal is treated so that it becomes ‘smooth’ like
soft flowing fabric, such as, silk or ‘satin.’ The
trademark is a metaphor for the degree of smoothness.”7 In
other words, applicant uses SATIN SMOOTH in connection with
its fencing products to describe its smooth surface.
Applicant argues that SATIN SMOOTH is suggestive
because its metal fencing products are not made of satin.
Thus, the mark is incongruous. “Applicant is suggesting

7 Applicant’s Brief, p. 3.
Serial No. 78772258
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that the metal is so smooth that it rivals satin or silk,
but at the same time, is rigid and strong. . . . This
causes the goods to be ‘smooth’ and suggests that the goods
reach the ultimate degree of smoothness as opposed to rough
cut metal.”8 Applicant’s argument is unpersuasive because
the commercial impression engendered by the term “satin
smooth” is that the products are as smooth as satin, not
that the products are made of satin.
Applicant also argues that “[t]he Examiner improperly
dissects the mark and ignores the suggestive meaning of the
marks as whole.”9 To the contrary, it is applicant, not the
Examining Attorney, who has improperly dissected its mark
by arguing that its fencing products are not made of satin.
As indicated above, “satin smooth” engenders the commercial
impression that the products at issue are as smooth as
satin, not that they are made of satin.
Applicant contends that one must follow a multiple
step reasoning process to determine the product
characteristics described by the mark. Applicant’s
multiple step reasoning process is set for the below:
In the present case the goods are
“metal fencing”, which is usually rough
in nature. The mark brings to mind
that it is unusual for a product that

8 Applicant’s Brief, p. 3.
9 Applicant’s Brief, p. 4.
Serial No. 78772258
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is often associated with burrs and
barbs to be smooth like fine silk or
satin.10

Applicant’s explanation fails to persuade us that consumers
familiar with its products will not immediately understand
that the term SATIN SMOOTH means that applicant’s fencing
products are very smooth. As indicated above, the issue is
whether a relevant purchaser familiar with applicant’s
products will understand the mark to convey information
about the products.
Applicant argues that its proposed use of SATIN SMOOTH
in connection with metal fencing products constitutes “a
clever double entendre.”11 “A ‘double entendre’ is a word or
expression capable of more than one interpretation. For
trademark purposes, a ‘double entendre’ is an expression
that has a double connotation or significance as applied to
the goods or services. The mark that comprises the ‘double
entendre’ will not be refused registration as merely
descriptive if one of its meanings is not merely descriptive
in relation to the goods or services.” TMEP §1213.05(c)
(5th ed. 2007). Applicant’s double entrendre argument is
unpersuasive because applicant does not identify any

10 Applicant’s Brief, pp. 4-5.
11 Applicant’ Brief, p. 5.
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alternative meaning for the term “satin smooth.”
Accordingly, there is no double entendre.
Finally, applicant argues that the term “satin smooth”
is suggestive because of past Office practice in registering
four other “Satin Smooth” trademarks. We are not persuaded
by these prior registrations that applicant’s mark is not
merely descriptive. First, we must decide each case on its
own merits. “Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the Board.” In re Nett Designs Inc., 236 F.2d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). Second, the four
registrations are not for products related to those in the
application at issue. Therefore, the registrations are of
limited, if any, probative value.
In view of the foregoing, we find that applicant’s mark
SATIN SMOOTH, when used in connection with “galvanized metal
chain link fencing, metal chain link fencing; metal fencing
panels,” is merely descriptive.
Decision: The refusal to register is affirmed.

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