Tantowel U.S.

Trademark Trial and Appeal Board

Jan 6, 2004

No. 76301645 (T.T.A.B. Jan. 6, 2004)

Mailed: January 6, 2004
Paper No. 16
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tantowel U.S., by change of name from Darian
Corporation1
________
Serial No. 76301645
_______
Edward J. Quirk of Quirk & Tratos for applicant.
Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Cissel, Walters, and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 17, 2001, Darian Corporation (a Nevada
corporation)(now by change of name Tantowel U.S., a Nevada
corporation) filed an application to register the mark
SPFTOWEL on the Principal Register for goods identified as
“sun block, sun tan lotion, self-tanning lotion” in
1 The records of the Assignment Branch of the USPTO indicate that
this application is currently owned by Tantowel U.S., by change
of name from Darian Corporation. (See Reel 2619, Frame 0949.)
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76301645
2
International Class 3. The application was filed based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
In the first Office action, the Examining Attorney (i)
explained that if applicant’s product included towels, then
the identification was not accurate and the following
identification was suggested, if accurate: “sun block, sun
tan lotion, self-tanning lotion, pre-moistened sun tanning
preparations contained in a towel”; (ii) inquired whether
or not applicant owned Registration No. 2302811,2 and if so,
required that applicant claim ownership thereof; and (iii)
refused registration on the ground that applicant’s mark,
SPFTOWEL, is merely descriptive of applicant’s goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
In response, applicant claimed ownership of
Registration No. 2302811, and amended the identification of
goods to read as follows: “sun block, sun tan lotion, self-
tanning lotion, and pre-moistened sun tanning preparations
contained in a towelette,” which was accepted by the
Examining Attorney.
2 Reg. No. 2302811, issued December 21, 1999 for the mark
TANTOWEL for “pre-moistened self-tanning preparations contained
in a towelette and self-tanning lotions, creams and gels” in
International Class 3.
Ser. No. 76301645
3
When the refusal to register the mark as merely
descriptive was made final, applicant appealed to this
Board. Both applicant and the Examining Attorney have
filed briefs; an oral hearing was not requested by
applicant.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the goods or services in connection with which it is
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979).
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 term or phrase is being used on or in connection
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d
1753 (TTAB 1991). That is, the question is whether someone
Ser. No. 76301645
4
who knows what the goods or services are will understand
the term or phrase to convey information about them. See
In re Home Builders Association of Greenville, 18 USPQ2d
1313 (TTAB 1990); and In re American Greetings Corp., 226
USPQ 365 (TTAB 1985).
The Examining Attorney’s position is summarized as
follows in her brief (unnumbered page 3):
[A]pplicant’s mark is a combination of
descriptive words that describe a
feature or characteristic of the goods,
namely, that the towels that the
applicant features provide or contain
SPF or sun protection factor. The
combination of these two words, “SPF”
and “towel” does not result in a
composite registrable trademark which
creates an incongruous, unusual meaning
or different significance [to the]
mark. In re Ampco Foods, Inc., 227
USPQ 331 (TTAB 1985). The commercial
impression is that of a towel that
provides SPF protection. An average
consumer who sees this mark could
easily surmise that the applicant’s
towels when rubbed against the skin
provide a certain level of sun
protection.
In her January 9, 2003 denial of applicant’s request
for reconsideration, the Examining Attorney specifically
argued the following:
The general public knows that SPF or
the “sun protection factor” is a
generic description used in goods to
identify the level of protection that
could be expected from the goods. SPF
is a generic feature and characteristic
Ser. No. 76301645
5
of [the] goods. Consumers buy products
with SPF with the understanding that
the product contains a feature that
they are looking for to get from the
product.
Further, she contends that applicant’s assertion of a
“family of ‘towel’ marks” is unpersuasive because that
argument does not obviate the descriptiveness of the
involved mark for the identified goods; and that
applicant’s references to third-party registrations
including the word ‘towel’ were not properly made of record
and they are of little probative value as the file
histories of those registrations are not of record (brief,
unnumbered page 4).3
In support of her position, the Examining Attorney
submitted: (i) The American Heritage Dictionary (Third
Edition 1992) definitions of “spf” as “sun protection
factor,” and “towelette” as “a small, usually moistened
piece of paper or cloth used for cleansing”; and (ii)
printouts of pages from Internet web sites to show that
“towel” and “towelette” are interchangeable terms in
3 Applicant first referred to a few third-party registrations in
its July 30, 2002 response to the first Office action.
Generally, a typed list is insufficient to make registrations of
record. See In re Duofold, Inc., 184 USPQ 638 (TTAB 1974).
However, the Examining Attorney did not object thereto, and did
not explain that the third-party registrations were not properly
made of record until the appeal brief. Thus, the Board considers
that the Office stipulated the material into the record.
Ser. No. 76301645
6
relation to these goods, and that consumers understand
“SPF” as identifying sun protection in a product.
Applicant argues that “SPFTOWEL” is suggestive (e.g.,
“of a beach towel having sun protective quality” -- brief,
p. 4); that the mark is not merely descriptive of its
goods, which are (1) “sun block,” (2) “sun tan lotion,” (3)
“self-tanning lotion,” and (4) “pre-moistened sun tanning
preparations contained in a towelette,” and thus, three of
the goods have nothing to do with a towel or towelette;
that “SPF” is a measure of the degree of sun protection
provided by a product (a scale of numbers, based on FDA
protocol), but it is not a product, and applicant’s goods
cannot contain “SPF”; and that “while ‘SPFTOWEL’ may
consist of arguably descriptive elements, it also suggests
qualities not disclosed by common meanings of the words
alone” (brief, p. 5).
Applicant further argues that its mark SPFTOWEL is
part of a “family of marks” including TANTOWEL (Reg. No.
2302811, issued December 21, 1999 for “pre-moistened self-
tanning preparations contained in a towelette and self-
tanning lotions, creams and gels” in International Class
3), and CLEANZTOWEL (now Reg. No. 2761380, issued September
9, 2003 for “pre-moistened cosmetic towelettes” in
International Class 3); that because there are some third-
Ser. No. 76301645
7
party registrations which include the word “towel” in the
mark (TOOTH TOWEL for disposable teeth cleaning and
polishing sheets, CARTOWEL for vehicle seat covers, and
WRIST TOWEL for sweat bands), applicant’s mark should not
be singled out and refused registration in light of those
third-party registrations; and that doubt should be
resolved in applicant’s favor.
We agree with the Examining Attorney that the asserted
mark SPFTOWEL immediately describes a characteristic or
feature of the goods on which applicant intends to use its
mark. Regardless of whether applicant’s identification of
goods is read as four separate items with only one item
being a towelette, or as one item – a towelette with sun
block, or sun tan lotion, or self-tanning lotion contained
therein, the term SPFTOWEL would immediately inform
consumers that applicant’s goods consist of a towel or
towelette containing an ingredient which provides some
level of the FDA’s measurable “Sun Protection Factor.”
The Examining Attorney’s evidence establishes that
consumers clearly understand that “SPF” (sun protection
factor) is a measuring scale with regard to critical
ingredients in whatever the product involved is (e.g.,
clothing items, towels, sun block lotion). Certainly in
considering SPFTOWEL used on towelettes pre-moistened with
Ser. No. 76301645
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sun tanning preparations, purchasers would immediately
understand that applicant’s goods include a towel or
towelette which contains a sun block preparation which
provides some level of sun protection on the “SPF” scale of
protection. Moreover, the term does not create an
incongruous, creative or unique mark.
Applicant’s mark, SPFTOWEL, when used on applicant’s
identified goods, thus would immediately describe, without
need of conjecture or speculation, the nature of
applicant’s goods, as discussed above. Nothing would
require the exercise of imagination or mental processing or
gathering of further information in order for purchasers of
and prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
SPFTOWEL as it pertains to applicant’s goods, particularly
the item pre-moistened towelettes containing sun tanning
preparations. See In re Intelligent Instrumentation Inc.,
40 USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc.,
33 USPQ2d 1156 (TTAB 1994).
Applicant argues that the term SPFTOWEL is not merely
descriptive of its sun block, sun tan lotion and self-
tanning lotion because those identified items do not
include a towel or towelette. A mark is merely descriptive
if it merely describes any of the listed goods. That is,
Ser. No. 76301645
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registration should be refused if a term or phrase is
merely descriptive of any of the goods (or services) for
which registration is sought. The fact that a term or
phrase may not be merely descriptive of some of the goods
(or services) listed in the identification does not mean
that it is not merely descriptive of the others. See In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505
(CCPA 1980); In re Richardson Ink Company, 511 F.2d 559,
185 USPQ 46 (CCPA 1975); and In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d unpub’d but appearing at 871
F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989). See also, 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §11:51 (4th ed. 2001).
In view of the foregoing, we find that SPFTOWEL, if
used on applicant’s sun block, sun tan lotion, self-
tanning lotion and pre-moistened towelettes containing sun
tanning preparations, would directly convey information to
prospective purchasers about a significant feature of the
goods, namely, the products provide some level of “sun
protection factor” and one of them is specifically a towel
or towelette containing sun block. Thus, the mark is
merely descriptive of the identified goods.4 See In re
4 The Board notes that after all briefs on appeal were due,
applicant filed on October 30, 2003 (via certificate of mailing)
Ser. No. 76301645
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Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987).
With regard to applicant’s argument that there are
third-party registrations for marks which include the word
“towel,” this evidence (presented by applicant only in the
form of a typed list, as explained previously herein) is
not persuasive of a different result in this case. While
uniform treatment under the Trademark Act is an
administrative goal, the Board’s task in an ex parte appeal
is to determine, based on the record before us, whether
applicant’s mark is merely descriptive. As often noted by
the Board, each case must decided on its own merits. We
are not privy to the records of the cited third-party
registration files, and moreover, the determination of
registrability of those particular marks by the Trademark
Examining Attorneys cannot control the merits in the case
a document titled “Statement of Use Under 37 C.F.R. 2.88.” Based
on the timing of applicant’s filing of this document, it is more
correctly titled “Amendment to Allege Use Under 37 C.F.R. 2.76.”
However, the Board will not remand the application file for
examination thereof. In view of our decision affirming the
Examining Attorney with regard to the descriptiveness of the
mark, the paper asserting use of applicant’s mark on “pre-
moistened sun tanning preparations contained in a towelette” is
moot. See TBMP §1206.01 (2d ed. June 2003). (We note that
applicant’s asserted specimen includes the following words
thereon: “the sun protection towelette.” Thus, applicant’s own
asserted use indicates the merely descriptive nature of the term
SPFTOWEL for the involved goods.)
Ser. No. 76301645
11
now before us. See In re Nett Designs Inc., supra, 56
USPQ2d at 1566 (“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 or this court.”)
With regard to applicant’s assertion that it owns a
“family of marks” using the word “towel,” applicant
submitted no evidence to establish a “family” of “towel”
marks. See Hester Industries, Inc. v. Tyson Foods, Inc., 2
USPQ2d 1646 (TTAB 1987). In any event, the only issue
before us is whether the mark which applicant seeks to
register is merely descriptive. Thus, even is applicant
were to demonstrate that it had established a “family” of
marks characterized by the term “towel,” that would not aid
or otherwise entitle applicant to the registration which it
seeks here. See Baroid Drilling Fluids Inc. v. Sun
Drilling Products, 24 USPQ2d 1048, 1052 (TTAB 1992); and In
re Lar Mor International, Inc., 221 USPQ 180, 183 (TTAB
1983).
Finally, even if applicant were the first (and/or
became the only) entity to use the terms “SPFTOWEL” in
relation to sun block, sun tan lotion, self-tanning lotion
and pre-moistened sun tanning preparations contained in a
towelette, that fact would not be dispositive where, as
Ser. No. 76301645
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here, the term unquestionably projects a merely descriptive
connotation, particularly with regard to the pre-moistened
towelette product. See In re Central Sprinkler Co., 49
USPQ2d 1194, 1199 (TTAB 1998); and In re Tekdyne Inc., 33
USPQ2d 1949, 1953 (TTAB 1994). Competitors could have a
competitive need to use these terms. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2001).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) of the
Trademark Act is affirmed.