The Sherwin-Williams Co.

Trademark Trial and Appeal Board

Sep 9, 2003

No. 78070590 (T.T.A.B. Sep. 9, 2003)

Mailed: September 9, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Sherwin-Williams Company
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Serial No. 78/070,590
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Vivien Y. Tsang for The Sherwin-Williams Company.
Cheryl Clayton, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
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Before Hanak, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Sherwin-Williams Company has filed an application
to register the mark PAINTER’S PREFERRED for “caulking and
adhesive sealants for general use.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark is
merely descriptive of its goods.
1 Serial No. 78/070,590, filed June 22, 2001, alleging dates of
first use of June 28, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78/070,590
2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but no oral hearing
was requested.
The Examining Attorney contends that,
… when applied to the [a]pplicant’s goods, the
mark, PAINTER’S PREFERRED, immediately describes
without any exercise of imagination, mental
processing or gathering of further information,
the merely descriptive significance of the
wording as it relates to the quality, use and
purpose of the [a]pplicant’s goods as used by
and preferred by painters who know the quality
[of] products.
(Brief, p. 5).
In support of the refusal, the Examining Attorney made
of record third-party registrations that include the
disclaimed word “PAINTER” for paint and related products.
Also, she made of record third-party registrations that
include the word “PREFERRED,” which issued on the
Supplemental Register or under the provisions of Section
2(f), or with a disclaimer of “PREFERRED, for various goods
and services.
Applicant, in urging reversal of the refusal to
register, argues that the mark PAINTER’S PREFERRED is at
most suggestive of the identified goods; that the word
“PREFERRED” does not describe any specific characteristic
or quality of the goods; and that any doubt regarding
descriptiveness should be resolved in applicant’s favor.
Ser No. 78/070,590
3
Applicant made of record third-party registrations of marks
that include the words “PAINT” or “PREFERRED,” which issued
on the Principal Register with no Section 2(f) claim or
without a disclaimer of the words “PAINT” or “PREFERRED.”
A term is merely descriptive, and therefore
unregistrable pursuant to Section 2(e)(1), if it
immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of the goods with which it is used. In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). On the other hand, a term
which is suggestive is registrable. A suggestive term is
one which suggests, rather than describes, such that
imagination, thought or perception is required to reach a
conclusion as to the nature of the goods. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). There is
but a thin line of distinction between a suggestive and a
merely descriptive term, and it is often difficult to
determine when a term moves from the realm of
suggestiveness to the sphere of impermissible
descriptiveness. In re Recovery, Inc., 196 USPQ 830 (TTAB
1977).
Applying these principles to the evidence of record,
we conclude that PAINTER’S PREFERRED has not been proven to
be merely descriptive of caulking and adhesive sealants for
Ser No. 78/070,590
4
general use. The mark only suggests that applicant’s goods
are of high quality because they are “preferred” by
painters. Some thought or perception is required to draw
this conclusion concerning the nature of applicant’s goods.
Although we have considered, of course, the third-
party registrations introduced by the Examining Attorney,
we are not persuaded to reach a different result in this
case. Such registrations tend to show that in the past,
the Trademark Examining Operation has viewed the word
“PAINTER’S” to be merely descriptive when applied to paint
and related products and the word “PREFERRED” to be merely
descriptive for various goods and services when “PREFERRED”
modifies the name of the goods or services. For example,
PREFERRED LEGAL PLAN is registered on the Supplemental
Register for legal services; PREFERRED HOMEBUYERS PROGRAM
is registered on the Principal Register under Section 2(f)
for mortgage lending and real estate agency services; VIP
PREFERRED CARD is registered on the Principal Register for
check cashing services with a disclaimer of “PREFERRED;”
and PREFERRED BLEND and design is registered on the
Principal Register for wild bird food and wild bird seed
with a disclaimer of “PREFERRED BLEND.”
Ser No. 78/070,590
5
Of course, in this case, the mark sought to be
registered is PAINTER’S PREFERRED, not PREFERRED CAULKING
AND ADHESIVE SEALANTS, and thus applicant’s mark is
somewhat different from the marks in the third-party
registrations submitted by the Examining Attorney.2
Finally, we recognize that we must resolve whatever
doubt we may have regarding the merely descriptive
character of the mark in favor of applicant and the mark
should be published for opposition. In re Rank
Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases
cited therein.
Based on the record before us, we conclude that the
mark PAINTER’S PREFERRED, when applied to caulking and
adhesive sealants, is not merely descriptive.
Decision: The refusal to register under Section
2(e)(1) is reversed.
2 On the other hand, applicant’s mark is more akin to the marks
in the third-party registrations submitted by applicant. For
example, the following marks registered on the Principal Register
with no claim of Section 2(f) and no disclaimer of the word
“PREFERRED”: EMPLOYEE PREFERRED for banking services; SENIORS’
PREFERRED for moisturizing lotions and creams; ACCOUNTANTS
PREFERRED for staffing services specializing in accountants; and
HOMEBUYERS PREFERRED for a radon protection plan.