TruServ Corp.

Trademark Trial and Appeal Board

Jun 30, 2004

No. 78068851 (T.T.A.B. Jun. 30, 2004)

Mailed:
June 30, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TruServ Corporation
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Serial No. 78068851
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Christopher J. Schulte and Kristine M. Boylan of Meagher &
Geer for TruServ Corporation.
Elizabeth J. Winter, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Hanak, Holtzman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
TruServ Corporation [applicant] has applied to
register, on the Principal Register, the term WOOD CARE
CENTER, as a mark for the following Class 35 services:
"Retail hardware store services featuring wood care and
related products, namely, paints, stains, protectants,
sealants and finishes, and paint and stain accessories
including brushes and rollers for the treatment of home
remodeling and building materials."
This Opinion is Not
Citable As Precedent
of the TTAB
Ser No. 78068851
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The examining attorney has refused registration on the
grounds that the proposed mark is merely descriptive of the
identified services and that applicant's evidence of
acquired distinctiveness is insufficient. See Trademark
Act Sections 2(e)(1) and 2(f), 15 U.S.C. §§ 1052(e)(1) and
1052(f). When the refusal of registration was made final,
applicant filed a notice of appeal and a request for
reconsideration. After the Board acknowledged the appeal,
the examining attorney considered, and denied, the request
for reconsideration.
In this appeal, both applicant and the examining
attorney have filed briefs, but applicant did not request
an oral hearing. We affirm the refusal of registration.
The USPTO bears the burden of setting forth a prima
facie case in support of a descriptiveness refusal. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
To establish a prima facie case for refusal, the examining
attorney is not required to prove that the public would
actually view a proposed mark as descriptive, but must
establish a reasonable predicate for the refusal, based on
substantial evidence, i.e., more than a scintilla of
evidence. In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d
1629 (Fed. Cir. 2003). When the examining attorney sets
forth a prima facie case, the applicant cannot simply
Ser No. 78068851
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criticize the absence of additional evidence supporting the
refusal, but must come forward with evidence supporting its
argument for registration. Gyulay, supra.
To carry her burden of proof, the examining attorney
relies on dictionary definitions of "wood," "care" and
"center"; applicant's prior registration of WOODCARE CENTER
on the Supplemental Register for goods identified as
"informational brochures about wood, wood care and wood
related products, paper display signage and posters
relating to wood, wood care and wood related products"1; two
Principal Register registrations of marks, not owned by
applicant, which include the term WOODCARE and a disclaimer
of the same2; numerous excerpts from the NEXIS database of
articles; numerous web pages retrieved from the Internet;
and records retrieved from the USPTO's system for searching
registered and pending marks, such records including
1 Registration no. 2454281 issued May 22, 2001 to TruServ
Corporation.
2 Registration no. 2187500 for the mark WOODCARE PLUS, for
services identified as "restoration, refinishing and repair of
fine millwork and cabinetry, including wood, veneer, and laminate
surfaces; alteration and relocation of cabinetry, ongoing
maintenance of millwork and cabinetry," issued September 8, 1998
to L.C.M. Associates, Inc. and includes a disclaimer of WOODCARE.
Registration no. 2297718 for an emblem including the words
CABOT and PREMIUM WOODCARE SINCE 1877, for goods in two classes,
including a variety of paints, stains, coatings, sealers,
cleaners and the like for various building materials, including
wood and wood-based siding, issued December 7, 1999 to Samuel
Cabot, Incorporated and includes a disclaimer of PREMIUM WOODCARE
and SINCE 1877.
Ser No. 78068851
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information on five registered marks for various retail
store services, with each mark including the term CENTER
and a disclaimer of that term.3
The NEXIS excerpts show that "wood care" is a widely
used term in conjunction with the care, refurbishing and
protection of a wide variety of products made of wood,
including indoor wood flooring and furniture and outdoor
wood decking or furniture. The excerpts are replete with
references to wood care products, wood care services
provided by various entities, wood care experts, wood care
kits, wood care tips wood care guides and the like.
Likewise, the numerous web pages retrieved by the examining
attorney from the Internet show much the same, in terms of
usage of "wood care." One article headlined "Great Ideas"
in the "Home" section of the South Bend Tribune includes
the statement "For free brochures about household cleaning
and wood care, call [800] 486-7627 or go to Murphy's Wood
Care Center at www.murphyoilsoap.com." Similarly, the web
page for FurnishMagazine.com includes a list of links to
online resources focusing on "Wood Furniture Care and
3 The registration for NAPA AUTOCARE CENTER and design includes a
disclaimer of CENTER; the registration for NAPA AUTOCARE
COLLISION CENTER and design includes a disclaimer of COLLISION
CENTER; the registration for ORECK HOME CARE CENTER includes a
disclaimer of HOME CARE CENTER; the registration for ORECK FLOOR
CARE CENTERS includes a disclaimer of FLOOR CARE CENTERS; and the
Ser No. 78068851
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Restoration Help…" and there is a link to "Murphy's Wood
Care Center," a site summarized by the following statement
"The experts from Murphy's Oil Soap explain how to protect
your wood from dust, wax, and water."
Applicant's contributions to the record speak only to
the alternative question whether WOOD CARE CENTER has
acquired distinctiveness as a mark for applicant's retail
hardware store services featuring wood care and related
products. We discuss the two declarations offered in
support of the alternative argument for registration infra.
It is, of course, well settled that the question
whether a term is merely descriptive is determined not in
the abstract but, rather, in relation to the goods or
services for which registration is sought, the context in
which it is being used on or in connection with those goods
or services and the possible significance that the term
would have to the average purchaser or user of the goods or
services. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979) and In re Recovery, 196 USPQ 830, 831 (TTAB
1977).
On the record created by the examining attorney, we
have no doubt that "wood care" is a highly descriptive term
registration for AMERICAN HEALTH CARE CENTER includes a
disclaimer of HEALTH CARE CENTER.
Ser No. 78068851
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when used in conjunction with retail hardware store
services featuring, inter alia, wood care products. In
addition, we find that a retail hardware store featuring a
collection of specialized products is aptly described by
the word "center," a word with many definitions, one of
which is "a store or establishment devoted to a particular
subject or hobby, carrying supplies, materials, tools, and
books as well as offering guidance and advice: a garden
center; a nutrition center."4
Considered as a whole, WOOD CARE CENTER immediately
informs prospective customers for retail hardware store
services featuring, inter alia, wood care products, that a
store, or section thereof, so designated, will contain wood
care products and related items. There would be no need
for these customers to have to engage in any mental
reasoning whatsoever to reach this conclusion. See Vision
Center v. Opticks, Inc., 596 F.2d 111, 202 USPQ 333 (5th
Cir. 1979), cert. denied, 444 U.S. 1016 (1980) ("[I]t
simply does not require an effort of the imagination to
decide that a 'vision center' is a place that one can get
glasses."). We are not persuaded otherwise by applicant's
4 The Random House Dictionary of the English Language 335 (2nd
ed. 1987). The Board may take judicial notice of dictionary
definitions. See University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78068851
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argument that WOOD CARE CENTER only "gives a vague
impression that it relates to some thing which relates to
wood" (emphasis by applicant). Nor are we persuaded by
applicant's argument that the products it sells only "color
or protect wood surfaces." As the examining attorney's
evidence shows, caring for wood and protecting wood are
virtually synonymous concepts.
A proposed mark is considered merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Trademark Act, if it immediately conveys information
about an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
218 (CCPA 1978); see also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). 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 merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or idea about them. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Thus, it is
not necessary, in this instance, that a prospective
customer of applicant's services be immediately apprised of
the full panoply of products available from applicant's
hardware store featuring wood care and related products.
Ser No. 78068851
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It is sufficient that such a customer will immediately know
the nature and type of products available, even without
knowing the particular products.
Finally, we have no doubt about our conclusion that
WOOD CARE CENTER is descriptive for the identified
services. Thus, we need not, as applicant urges, resolve
doubt in its favor and publish the designation for
opposition, where "competitors or others will have the
opportunity to pose an opposition."
We turn then, to applicant's alternative argument that
WOOD CARE CENTER has acquired a secondary meaning and now
serves as a mark for applicant's services. To begin, WOOD
CARE CENTER is highly descriptive and, therefore, requires
a stronger showing of acquired distinctiveness before it
can be registered. In re K-T Zoe Furniture Inc., 16 F.3d
390, 29 USPQ2d 1787, 1788-899 (Fed. Cir. 1994) (Court
affirmed Board’s finding that the words “The Sofa & Chair
Company” were not generic, but were aptly descriptive of
"custom manufacturing of furniture upholstered with fabrics
furnished or pre-selected by customers,” and held that the
degree of acquired distinctiveness that must be shown
varies with the degree of descriptiveness of the term).
Put simply, the more descriptive the term, the more
evidence of secondary meaning must be shown for a term to
Ser No. 78068851
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attain registration. Yamaha Int’l Corp. v. Hoshino Gakki
Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)
(“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.”).
In the case at hand, applicant's evidence of acquired
distinctiveness consists of two declarations and a
photograph showing the section of one of its stores wherein
the sign WOOD CARE CENTER appears. As for the photograph,
we note that it features WOOD CARE CENTER in two places,
one of which is under the term WOODSMAN. In neither
display does WOOD CARE CENTER bear a "tm" or other
designation indicating it is claimed as a mark; nor is the
designation used with some other generic description of the
collection of featured products, so as to differentiate
WOOD CARE CENTER. In short, we find that applicant's
prospective customers would, viewing such signage,
immediately perceive the signage as indicating the nature
of the contents of this section of the store and nothing
more. The signs cannot be considered "look for"
advertising or anything that would promote recognition of
WOOD CARE CENTER as a mark rather than as a descriptive
store aisle or store section designation.
As for applicant's declarations, the first is by
applicant's "Paint Products, Store Fixtures and Décor
Ser No. 78068851
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Manager," David Vermilya. In his declaration, Mr. Vermilya
states that applicant is a hardware cooperative and its
6,000 member stores make 12 billion dollars in retail sales
each year. Mr. Vermilya also states that 247 stores have
established a WOOD CARE CENTER; that these stores accounted
for WOOD CARE CENTER revenue of $6,768,000 in 1999,
$6,481,000 in 2000, and $7,000,000 in 2001; that applicant
does not track per store sales of WOOD CARE CENTER products
"but a conservative estimate of sales of these products"
would amount to $239,223 per store in 1999, $229,079 in
2000, and $247,424 in 2001. Doing the math ourselves, we
come out with per store revenue figures for each of the
three years of $27,401 for 1999, $26,239 for 2000, and
$28,340 for 2001.
Mr. Vermilya also notes the 247 stores have spent
$569,650 on WOOD CARE CENTER "signage materials." We
figure this to be approximately $2,306 per store. It is
unclear whether the per store cost covers signs alone or
the shelving and display materials which show the signs and
products.
A second and more recent declaration, from Tracy
Polyak, a paralegal in applicant's Legal Department, has
been used to introduce what is said to be a spreadsheet
Ser No. 78068851
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listing 454 stores that feature a WOOD CARE CENTER. The
attachment, however, is virtually unintelligible.
Even if we assume that applicant has, in fact, boosted
the number of stores featuring a WOOD CARE CENTER from 247
to 454, neither declarant attests to any advertising or
promotion of the involved designation. We are not
convinced that a few years worth of use, even if we assume
it has been continuous and substantially exclusive5, by a
fraction of applicant's 6,000 member stores establishes
that WOOD CARE CENTER has taken on a secondary meaning as a
mark. Nor do we find per store expenditures of
approximately $2,300 on display materials and annual per
store revenue from sales of displayed products of
approximately $26,000 to $28,000 to establish acquired
distinctiveness.6
Applicant has failed to meet its burden of
establishing that WOOD CARE CENTER has acquired
distinctiveness as a mark for the identified services.
“There is no doubt that Congress intended that the burden
of proof [under Section 2(f)] should rest upon the
5 Mr. Vermilya attests to "continuous and substantial use" since
January of 1999, but does not claim the use to be "substantially
exclusive" to applicant.
6 Mr. Vermilya has an alternative theory by which he estimates
"that millions of consumers around the nation have been exposed
Ser No. 78068851
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applicant.” In re Hollywood Brands, Inc., 214 F.2d 139,
102 USPQ 294, 295 (CCPA 1954). See also, In re Leatherman
Tool Group Inc., 32 USPQ2d 1443, 1450 (TTAB 1994) (“Absent,
therefore, anything to link applicant's gross sales of over
$20 million and advertising expenditures of $200,000, which
were generated and spent in connection with its marketing
of in excess of one million tools during a nearly ten-year
period, with use in contexts which would condition
customers to react to or recognize the designation ‘POCKET
SURVIVAL TOOL’ as an indication of source rather than as a
description of a category of product, there is no
convincing basis for finding that such designation
functions other than as a generic name”).
Decision: The refusal of registration is affirmed,
both under Section 2(e)(1), because WOOD CARE CENTER is
descriptive, and under Section 2(f), because applicant has
failed to prove by a preponderance of the evidence that
WOOD CARE CENTER has acquired distinctiveness.
to the mark." Vermilya dec. paragraph 7. However, the math is
clearly faulty and his conclusion is therefore doubtful at best.