Twin Bay Medical, Inc.

Trademark Trial and Appeal Board

Nov 4, 2003

No. 78077100 (T.T.A.B. Nov. 4, 2003)

Mailed: Paper No. 15
November 4, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Twin Bay Medical, Inc.
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Serial No. 78077100
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Kathleen G. Mellon of Young & Basile, P.C. for Twin Bay
Medical, Inc.
Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O'Lear, Managing Attorney).
_______
Before Hohein, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant seeks registration of a composite mark,
shown below, for “barb clamps, made out of plastic,
consisting of a sleeve and a collet, used to clamp flexible
tubes on to [sic] barb fittings to provide a seal for gases
or liquids” in International Class 17.1
1 The application was filed August 2, 2001 on the basis of
applicant’s claim that it is using the mark in commerce.
Applicant asserts March 1, 2001 as the date of first use of the
mark anywhere, and April 1, 2001 as the date of first use of the
mark in commerce.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 78077100
2
Before discussing the issue on appeal, we note that
the examining attorney and the applicant appear to disagree
on their characterization of the mark. Applicant believes
the mark consists of the single compound word BARBLOCK in a
stylized form of lettering. The examining attorney appears
to have concluded that the mark consists of the unitary
expression BARB LOCK and an unspecified design element.2
The USPTO database containing information on registrations
and pending applications characterizes the drawing of the
mark as illustrating "words, letters, and/or numbers in
stylized form."3
2 In her appeal brief, the examining attorney alternately refers
to the "wording" or "literal portion" of applicant's mark as BARB
LOCK (two words) or BARBLOCK (one word). The disclaimer
requirement, discussed further infra, seeks a disclaimer of BARB
LOCK (two words) and the examining attorney argues that those two
words form a unitary expression. In general, it appears the
examining attorney uses BARBLOCK (one word) when referring to the
composite mark, e.g., "applicant … filed for registration on the
Principal Register for the trademark 'BARBLOCK (and design
element),'" but uses BARB LOCK (two words) when referring to the
"literal portion" of the composite that must be disclaimed.
3 The USPTO characterizes the mark in each application by
assigning it a particular "mark drawing code." Code number 5,
Ser No. 78077100
3
This appeal involves the examining attorney's refusal
to approve applicant's mark for publication unless
applicant includes a disclaimer of the literal element in
its mark. Applicant is reluctant to provide the disclaimer
because it does not view the composite mark as including a
design element and believes that if it disclaims the
literal element, then it will have disclaimed its "entire
mark" contrary to established practice. Reply brief, p. 4.4
Apart from its stated concern that it might be found to
have "violated" the TMEP, applicant also asserts that
"[b]ecause the applicant created this term and believes it
is not descriptive of its goods, it does not believe it
should enable others to be free to use 'BARBLOCK' on the
exact goods as long as it is not in the same stylized
format as the Applicant is using."5 Id.
assigned to the involved application, is for "words, letters,
and/or numbers in stylized form." A code is assigned for
administrative convenience and has no bearing on the examining
attorney's review of the application, or on ours.
4 "The Applicant was concerned about entering a disclaimer of
'BARBLOCK' in that TMEP § 1213.06 indicates that an entire mark
cannot be disclaimed. The Applicant's attorney did not file the
initial application but believes the mark does not really have an
additional design element. Rather, the mark is BARBLOCK in a
stylized form." Reply brief, p. 4.
5 Applicant is correct in concluding that, if it submits the
disclaimer, it would be acknowledging the right of others to use
the disclaimed matter when necessary to describe their products.
Terms that are descriptive of goods or services should be freely
available for purveyors of such goods or services to use. The
purpose behind a disclaimer is to make clear that a party
Ser No. 78077100
4
As to applicant's first concern, we need not opine on
the question whether the interlocking "b" and "L" in
applicant's mark are a design element or merely a feature
of the stylized lettering employed. Applicant's concern
about it being held to have "violated" the TMEP if it were
to disclaim BARBLOCK (or BARB LOCK) is misplaced. It is,
of course, correct that an entire mark may not be
disclaimed. However, an applicant may disclaim the entire
literal portion of a mark when the circumstances are such
that the stylization of the lettering is itself distinctive
and can support registration of the composite with the
literal element disclaimed. In re Miller Brewing Co., 226
USPQ 666, 667 n.3 (TTAB 1985). In other words, it is not
critical that applicant's mark unequivocally be found to
have a separate "design element" for the composite mark to
be registered with the required disclaimer. The examining
attorney clearly has stated that the composite mark may be
registered with a disclaimer. We need not be concerned
with whether she reached that conclusion because she views
the mark as including some unspecified design element or
registering a composite mark that includes a descriptive or
generic term is not thereby abridging the right of others who may
need to use the term. In re Pencils Inc., 9 USPQ2d 1410, 1411
(TTAB 1988) ("the basic purpose of a disclaimer is to make of
record, if it might otherwise be misunderstood, that a
significant element of a composite mark is not being exclusively
appropriated, apart from the composite").
Ser No. 78077100
5
merely as employing distinctive stylization. The bottom
line is the examining attorney would approve the mark for
publication with the disclaimer, and the only question
before us is whether the disclaimer requirement is
appropriate because the literal element of the composite
mark is merely descriptive.
As to the difference of opinion regarding whether the
literal element of the mark is the single compound word
BARBLOCK, as applicant contends, or the two-word unitary
expression BARB LOCK, as the examining attorney contends,
we note that the examining attorney is invested with a
certain degree of discretion in her assessment of the
impression created by a mark. See TMEP Sections 807.08,
1213.01(a) and 1213.05(a). We see no error in the
examining attorney's determination that, notwithstanding
the display of the mark as a stylized compound word (or a
stylized compound word with a design element), the
appropriate disclaimer would be as to BARB LOCK rather than
BARBLOCK, in view of the use of upper and lower case
letters that make it clear that the compound is formed of
the root components BARB and LOCK.
The examining attorney, in her office actions,
alternately argued that BARB LOCK is generic or merely
descriptive. In her brief, however, the issue on appeal is
Ser No. 78077100
6
presented solely as whether the term is merely descriptive
when used on or in conjunction with applicant's goods.6
In assessing the evidence and the likely perception of
the term as used by applicant, we adopt the point of view
of the average or ordinary consumer in the class of
prospective purchasers for applicant’s product. See In re
Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861
(Fed. Cir. 1987). Moreover, whether a term is merely
descriptive is determined not in the abstract, but in
relation to the goods for which registration of the term is
sought, the context in which it is being used on or in
connection with those goods, and the possible significance
that the term would have to the average purchaser because
of the manner of its use. See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979).
Whether consumers could guess what the product is from
abstract consideration of the literal element of the
composite mark is not the test. In re American Greetings
Corp., 226 USPQ 365, 366 (TTAB 1985). However, the
evidence will have to establish that BARB LOCK immediately
describes an ingredient, quality, characteristic or feature
of applicant’s product or conveys information regarding the
6 To be absolutely clear, we note that, on the record in this
application, we would find that BARB LOCK is not generic.
Ser No. 78077100
7
nature, function, purpose or use of the product. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978); see also, In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Accordingly, we now consider whether BARB and LOCK are
descriptive terms when used in connection with applicant's
goods and, if so, whether the terms retain their
descriptiveness when used together as a unitary expression.
Applicant chose to identify its goods as "barb clamps"
used to clamp flexible tubes onto "barb fittings," and we
must presume that applicant chose these terms to describe
its goods because they will be immediately understood by
average purchasers of the goods. In fact, applicant's
"master distributor" uses "barb" in a descriptive manner in
promotional literature for applicant's products, and also
notes therein that applicant's goods can be produced in
custom sizes "to fit your existing barbed fitting."7 Thus,
when average purchasers of applicant's goods encounter the
mark and goods, the word BARB clearly will have descriptive
significance.
As for the term LOCK, the examining attorney, in her
appeal brief, has asked that we take judicial notice of a
7 Applicant, at page 3 of its initial brief, in response to the
examining attorney's reliance on a TC Tech web page (www.tc-
Ser No. 78077100
8
dictionary definition of "lock" as meaning "to fasten the
lock of" and argues that the term clamp is synonymous with
the terms "fasten" or "lock." She concludes that
"applicant's goods are intended for use on barbs and they
are used to lock the barbs." Brief, p. 4. While we
disagree with the examining attorney's conclusion we do
find the term LOCK descriptive when used on or in
conjunction with the goods.
We take judicial notice of the following definition of
"lock": "3a: a locking or fastening together: a closing of
one thing upon another" Webster's Third New International
Dictionary 1328 (1993). From the record, we also note the
following passage in a web site listing of exhibitors at a
trade show:
Barblock Corporation
Booth 5597
BarbLockTM The Ultra-Secure Tubing Retainer--BarbLock
is the system that locks and seals flexible tubing
onto barbed fittings. By providing a 360º radial
crimp & seal at the tube-fitting interface, BarbLock
eliminates leak path and pull-off problems inherent in
other systems. …
The quoted excerpt is from the web page for the
exposition "Medical Design & Manufacturing West 2003"
tech.com) as evidence of descriptiveness of BARB LOCK, asserts,
"TC Tech is a master distributor of the Applicant's goods."
Ser No. 78077100
9
(www.devicelink.com/expo/west03). Applicant, in its reply
brief, asserts that it is the Barblock Corporation,
although there is nothing in the USPTO assignment records
that indicates the involved application has been assigned
or that applicant has changed its name, and applicant has
not explained why it, Twin Bay Medical, Inc., and Barblock
Corporation should be considered one and the same entity.
We accept, for the sake of argument, applicant's contention
that it is one and the same as Barblock Corporation. While
this may bolster applicant's claim that only it and its
distributors utilize the composite term "Barblock" or
"BarbLock," it does not counter the descriptive use of the
term "lock" in the description of applicant's product.
In view of the dictionary definition that describes
"lock" as meaning, inter alia, a fastening together or
closing of one thing upon another, and in view of the
asserted description by applicant of its own goods, which
describe the goods as locking and sealing one thing upon
another (i.e., flexible tubing onto barbed fittings), we
find that LOCK is a descriptive term when used on or in
conjunction with the goods. Prospective purchasers of
applicant's product would not have to engage in any
thought, imagination or involved reasoning to understand
the significance of LOCK; rather, such individuals would
Ser No. 78077100
10
readily understand that applicant's product locks the
flexible tubing onto the barbed fitting.8
While we have determined that both BARB and LOCK are
descriptive terms when used on or in conjunction with
applicant's goods, we must now consider whether, as the
examining attorney contends, BARB LOCK is a unitary
expression that is just as descriptive as the individual
words BARB and LOCK. Applicant is entirely correct in
arguing that two individually descriptive terms can, when
joined, form a registrable mark. The examining attorney,
however, is correct in contending that registrability of
combined, descriptive terms generally stems from some
incongruity, ambiguity, double entendre or other
distinctive result accomplished by the combination.
Applicant has contended that it has coined its mark,
but has not explained any theory why the combination of
BARB and LOCK results in an inherently distinctive mark,
rather than a merely descriptive unitary expression. We
can discern no resulting ambiguity, double entendre, or any
sort of play on words that creates a distinctive source
identifier merely by the coupling of the two descriptive
8 We also note that the applicant, in its first of two requests
for reconsideration, conceded that it "is now willing to disclaim
the term 'LOCK' apart from the mark as shown." Applicant never
expressly withdrew the statement.
Ser No. 78077100
11
terms.9 When prospective purchasers of applicant's product
consider BARB LOCK in conjunction with the identified
goods, i.e., barb clamps that clamp flexible tubing onto
barb fittings, they will immediately understand that the
barb clamp and tubing are locked onto the barb fitting.
Applicant's most-pressed arguments in support of
registration without the disclaimer are that BARBLOCK (or
BARB LOCK) cannot be found in dictionaries; that the
evidence entered into the record does not show use of the
term for goods such as applicant's, with the exception of
web pages that are asserted to show only use by applicant
or its distributors; that others do not have a competitive
need to use the term; and that a term is not precluded from
registration merely because it conveys information about
the goods.
We agree with applicant that much of the evidence put
into the record by the examining attorney is irrelevant or
not probative of the significance of the term in relation
9 Moreover, we note that it does not matter whether we consider
the question to involve the unitary expression BARB LOCK or, as
applicant would prefer, the compound word BARBLOCK. As discussed
supra, applicant seeks registration of a particular, stylized
version of its mark, the literal element of which will be
perceived as BARB LOCK, even if there is no space between the
words, because of the use of upper and lower case lettering.
Thus, prospective purchasers will not have to guess or puzzle
about what the term is a combination of; it will readily be
perceived as a combination of BARB and LOCK.
Ser No. 78077100
12
to applicant's goods. However, we otherwise do not find
applicant's arguments persuasive. It is well settled that
the absence of a term from a dictionary does not preclude
it from being held merely descriptive. See In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed.
Cir. 1987) (SCREENWIPE held generic though dictionary
listings available only for components SCREEN and WIPE,
because combination held not distinctive); see also In re
Recorded Books Inc., 42 USPQ2d 1275, 1280 (TTAB 1997)
(absence of dictionary listing for term RECORDED BOOK not
dispositive because combination had a plain and readily
understood meaning). It is equally well settled that the
first or only user of a term is not necessarily entitled to
register the term as a trademark. See In re Interco Inc.,
29 USPQ2d 2037, 2039 (TTAB 1993). Finally, while a term
may be registrable even if it conveys information, it is
not registrable when that is all it does, absent a showing
of acquired distinctiveness.
Decision: The requirement under Section 6 of the
Trademark Act, 15 U.S.C. § 1056, for a disclaimer of “BARB
LOCK” apart from the mark as a whole, is affirmed.
However, the refusal of registration in the absence of a
disclaimer will be set aside and the mark will be published
for opposition if applicant, no later than 30 days from the
Ser No. 78077100
13
mailing date hereof, submits an appropriate disclaimer.
See Trademark Rule 2.142(g).