The Sherwin-Williams Company

Trademark Trial and Appeal Board

May 21, 2008

No. 78571661 (T.T.A.B. May. 21, 2008)

Mailed:
May 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Sherwin-Williams Company
________

Serial No. 78571661
_______

Robert E. McDonald, Esq. of The Sherwin-Williams Company.

Priscilla Milton, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Walters, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The Sherwin-Williams Company filed an intent-to-use
application for the mark BUILDERS PREMIUM, in standard
character format, which it amended to BUILDER’S PREMIUM, in
standard character format, for “protective and decorative
coatings in the nature interior and exterior paint,” in
Class 2.1
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.

1 Serial No. 78571661, filed February 21, 2005. On April 20,
2006, applicant filed an amendment to allege use claiming April
6, 2006 as applicant’s dates of first use anywhere and first use
in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78571661
2
§1052(e)(1), on the ground that the mark BUILDER’S PREMIUM,
when used in connection with applicant’s products, is
merely descriptive. The Examining Attorney contended that
the mark BUILDER’S PREMIUM is merely descriptive because
the applicant has combined two descriptive terms that
directly conveys information about the goods.
Specifically, the Examining Attorney argued that BUILDER’S
PREMIUM identifies the customers who purchase applicant’s
paint products (i.e., builders) and the quality of the
paints (i.e., high quality paint). To support her refusal,
the Examining Attorney submitted the following evidence:
1. A dictionary definition of the word “premium”
defined as “an unusual or high value” and “of superior
quality or value.”2
2. Two third-party registrations for paint products
that include the word “Builders” where the exclusive right
to use “Builders” has been disclaimed:3
Registration No. Mark

2340334 BUILDERS SELECT

2966717 BUILDERS SOLUTION

2 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
3 The Examining Attorney also submitted a copy of application
Serial No. 78268059 for the mark BUILDER’S EDGE (published for
opposition). Because the exhibit submitted by the Examining
Attorney does not show that the application has registered, we
have not given it any consideration. Applications are evidence
only that an application has been filed.
Serial No. 78571661
3
3. Four third-party registrations for paint products
that include the word “Premium” where the exclusive right
to use “Premium” was disclaimed:
Registration No. Mark

1645737 PREMIUM PLUS

2009338 CABOT STAINS PREMIUM QUALITY
FOR LONG LASTING PROTECTION

2516484 HOESCH PREMIUM

2984666 THYBONY STOCKHOLM PREMIUM
FINISHES

4. Excerpts from six (6) news articles referencing
premium quality paints (e.g., “Paint manufacturer Benjamin
Moore & Co. . . . sells 2-oz. sample sizes of its premium
Regal line of interior paints”).
5. Excerpts from seven (7) paint manufacturer’s web
sites that use the word “premium” to describe the quality
of paint.
6. An excerpt from the Forrester Wehrle Homes web
site (www.forresterwehrle.com), a home builder, which
describes its interior painting as follows: “Interior
surfaces painted and/or stained with Sherwin Williams
Builders Premium Grade.”
Serial No. 78571661
4
7. An excerpt from applicant’s web site with a
section featuring paint products for home builders. One of
the products is BUILDERS SOLUTION.4
8. An excerpt from the AECDAILY.com web site that
identifies architectural products and resources. The web
site identifies applicant as a source of paint products for
builders, designers, specifiers, property managers and
contractors.
9. An April 13, 2006 press release on the
buildingonline.com web site indicating that Pulte Homes, a
builder, signed a five-year agreement with applicant as its
exclusive provider of paint products.
10. An excerpt from applicant’s web site touting
applicant’s BUILDERS SOLUTION interior coating:
Sherwin-Williams Builders Solution
Interior Coating System – which
includes a latex surfacer and latex
topcoat – just got even better with a
reformulated flat topcoat that offers
the ultimate in touch-up when compared
with traditional flat coatings. With
the BUILDERS SOLUTION System,
homebuilders and painting contractors
can now virtually eliminate the common
complaints of poor wall appearance due
to drywall imperfections and paint
touch-ups.
* * *

4 The copy of Registration No. 2966717 for the mark BUILDERS
SOLUTION submitted by the Examining Attorney shows SWIMC, Inc.,
not applicant, as the owner of the registration.
Serial No. 78571661
5
For over 135 years, Sherwin-Williams
has satisfied the coating and color
needs of painting contractors,
designers, specifiers, property
managers and builders.

To show that its BUILDER’S PREMIUM mark is suggestive,
applicant submitted copies of six registrations in Class 2
“that incorporated either BUILDER(S) or PREMIUM in the
overall marks without requiring a disclaimer of either of
these terms.” (Emphasis in the original).5
Registration No. Mark

1889110 BUILDER’S FINEST

2348665 BUILDER’S SPEC

1884482 BUILDER PERFECT (Cancelled)

2091178 BUILDER PREFERRED (Cancelled)

2264671 PREMIUM DÉCOR

1881080 PREMIUM POLYESTER

A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the services with which it
is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely

5 These registrations were attached to applicant’s brief.
Although Trademark Rule 2.142(d), 37 CFR 2.142(d), requires that
the record be complete prior to the appeal, because the Examining
Attorney did not object to the late submission and, in fact,
discussed the evidence, we will consider the registrations for
whatever probative value they may have.
Serial No. 78571661
6
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 someone who knows what the products are will
understand 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).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
When descriptive terms are combined, a suggestive term
may be formed if the compound mark in its entirety evokes a
new and unique commercial impression that is not merely
Serial No. 78571661
7
descriptive. However, if each component of the compound
mark retains its merely descriptive significance in
relation to the goods, without creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., Inc., 64 USPQ2d at
1317-1318; In re Disc Jockeys Inc., 23 USPQ2d 1715, 1716
(TTAB 1992).
When applicant uses the term BUILDER’S PREMIUM in
connection with interior and exterior paints, it directly
conveys that the paint is a high quality, builder’s grade
product. In the Forrester Wehrle web site, that builder
used the term “Builders Premium” to describe the quality of
paint (“Sherwin Williams Builders Premium Grade”). The two
components of the term, the words “Builder’s” and
“Premium,” retain their individual descriptive meanings.
The combination of words forming applicant’s mark BUILDER’S
PREMIUM does not create an incongruous meaning or a new and
different commercial impression from that created by the
individual words “Builder’s” and “Premium.”
Applicant argued that BUILDER’S PREMIUM is suggestive
because “[t]he mental translation of the mark ‘BUILDER’S
PREMIUM’ to some suggestion of protective and decorative
coatings requires imagination, thought or perception to
Serial No. 78571661
8
reach a conclusion as to the nature of the goods.”6 For
example, applicant asserted that “a consumer who has never
seen the goods and does not know what it (sic) is could not
immediately determine that the mark ‘BUILDER’S PREMIUM’
refers to Applicant’s protective and decorative coatings.”7
The problem with applicant’s analysis is that it
starts with the mark BUILDER’S PREMIUM and asks whether the
term BUILDER’S PREMUIM provides any hints that the goods
are interior and exterior paints. As indicated supra, the
proper analysis should start with the mark BUILDER’S
PREMIUM and inquire whether that term describes interior
and exterior paints. In this case, the evidence shows that
the mark BUILDER’S PREMIUM describes applicant’s paint
products as a high quality, builder’s grade product.
Applicant argued that the combination of “Builder’s”
and “Premium” is an incongruous or unusual term, and
therefore it creates a suggestive, rather than descriptive
mark.8 It is applicant’s contention that the combination of
words is incongruous because it does not describe the

6 Applicant’s Brief, p. 4.
7 Applicant’s Brief, pp. 4-5. See also applicant’s arguments
that “the consumer who is interested in obtaining protective and
decorative coatings would first have to conclude that the
combined terms ‘BUILDER’S’ and ‘PREMIUM’ even refer to a paint
product.” Applicant’s Brief, p. 6.
8 Applicant’s Brief, p. 6.
Serial No. 78571661
9
intended purchasers of the products (i.e., builders).9
Whether the mark describes the intended purchasers of
applicant’s paints is not dispositive of the
descriptiveness issue. Applicant’s mark, in its entirety,
describes applicant’s paint products as high quality,
builder’s grade paint whether it is purchased by builders,
paint contractors, or home owners.
With respect to applicant’s argument that “[t]here is
nothing in the record from which to infer or substantiate
that there is such a product category as BUILDER’S PREMIUM
supplies, or that the term BUILDER’S PREMIUM has been used
to describe similar goods,”10 it is well established that
the fact that applicant may be the first and only user of
BUILDER’S PREMUIM does not alter its descriptive
significance and bestow upon applicant any proprietary
rights. In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087
(TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985)
(“A descriptive term used first or even only by an
applicant is not registrable as long as the purchasing
public perceives the term as describing goods”). A term
need not be in common usage in a particular industry before

9 Applicant’s argument is responsive to the Examining Attorney’s
contention that “Builder’s” describes the intended user and that
“Premium” is a laudatory term.
10 Applicant’s Brief, p. 7.
Serial No. 78571661
10
it can be found to be merely descriptive. In re Sun
Microsystems Inc., supra. Anyone who makes or sells
interior and exterior paints may wish to use the term
“builder’s premium” to convey the fact that such goods are
a high quality, builder’s grade product.
Finally, with respect to applicant’s argument that the
third-party registrations incorporating the words “Builder”
and “Premium” without a disclaimer prove that the mark
BUILDER’S PREMIUM is suggestive, not merely descriptive,11
we note that in determining the issue of descriptiveness,
prior decisions are of little value because each case must
be determined on its own facts. In re Nett Designs Inc.,
236 F.2d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics
similar to Nett Designs’ application [LOAD LLAMA THE
ULTIMATE BIKE RACK], the PTO’s allowance of such prior
registrations does not bind the Board or this court”]; In
re Quick-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). We are obligated to decide this appeal
based on the record before us.
It is therefore concluded that BUILDER’S PREMIUM is
merely descriptive when used in connection with “protective

11 Applicant’s Brief, p. 7.
Serial No. 78571661
11
and decorative coatings in the nature interior and exterior
paint.”
Decision: The refusal to register is affirmed.