Van Patton Industries Inc.

Trademark Trial and Appeal Board

Sep 8, 2000

No. 75375188 (T.T.A.B. Sep. 8, 2000)

Paper No.
12
GDH/gdh
9/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Van Patton Industries Inc.
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Serial No. 75/375,188
_______
Basil E. Demeur of Knechtel, Demeur & Samlan for Van Patton
Industries Inc.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Van Patton Industries Inc. has filed an application to
register the term "THE INHIBITOR" for "capsules containing
corrosion inhibiting chemicals for use in the protection of
metallic objects for general public use."1

1 Ser. No. 75/375,188, filed on October 17, 1997, which alleges a bona
fide intention to use such term in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/375,188
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant's goods, the
term "THE INHIBITOR" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not held. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). 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 considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant
attribute or idea about them. Moreover, whether a term is
merely descriptive is determined not in the abstract, but 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

Ser. No. 75/375,188
3
significance that the term would have to the average purchaser
of the goods or services because of the manner of its use. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Consequently, "[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Applicant, by way of background information about its
goods, notes in its initial brief that:
Applicant's mark THE INHIBITOR is
applied to capsules containing corrosion
inhibiting chemicals to protect metallic
objects for general public use. The
capsules are designed with an industrial
strength rust prevention system .... The
capsules contain VCI [("Volatile Corrosion
Inhibitor)"] vapors that are actuated when
the capsule is rotated to open vents within
the capsule and, thereby, expose the VCI
vapors to protect the objects. ....
In addition, the advertising literature made of record by
applicant states, with respect to the goods, that:
eliminate rust and corrosion
Protect all your valuable metal equipment
from rust and corrosion. .... Extend the
life of your valuable equipment and avoid
the ongoing expense of constantly replacing
rusted or corroded equipment. The Inhibitor
is light, easy to use, inexpensive and it
works!
how does the inhibitor work?
The chemical compound used in The Inhibitor
System is called VCI (Volatile Corrosion
Inhibitor). The VCI slowly vaporizes into
Ser. No. 75/375,188
4
an enclosed area, placing an invisible
barrier over a wide variety of metal
surfaces. These vapors not only provide a
great barrier, but they are capable of
penetrating into the smallest cracks or
crevices, rendering moisture and oxygen
incapable of starting the corrosion process.
The Inhibitor's VCI has a proven track
record of protecting a variety of metals
such as Iron, Steel, Brass, Bronze, Copper
and many others.
....
development of the inhibitor
Volatile corrosion inhibition (VCI) has
previously been available only to the
industrial manufacturing industry. Jeff
Sorensen, inventor of The Inhibitor, has 10
years experience working with what he
believes is the world's top VCI manufacturer
- Cromwell Phoenix - and realized how useful
this industrial grade rust prevention system
would be to sportsmen, boaters, travellers
[sic] and homeowners alike. He created The
Inhibitor System to bring these unique
capabilities ... to consumers in a form that
is light, easy to use and relatively
inexpensive.
Applicant's advertising literature also contains such
testimonials about its goods as "That product keeps those guns
from rusting and saves us a lot of work in the course of the
[hunting] season"; "The Inhibitor is the best rust preventative
product I've ever seen"; and "I think The Inhibitor is the best
rust preventative product I've ever used or sold--that is why I
invented it."
Referring, inter alia, to a number of dictionary
definitions of the term "inhibitor," applicant argues that,
Ser. No. 75/375,188
5
regardless of whether an imagination test, competitors' need
test or competitors' use test is utilized to distinguish between
a suggestive mark and a merely descriptive one, the term "THE
INHIBITOR" is not merely descriptive of its goods.
Specifically, besides noting that the Examining Attorney relies
upon dictionary definitions of the term "inhibitor," which The
American Heritage Dictionary of the English Language (3rd ed.
1992) defines as meaning "[o]ne that inhibits, as a substance
that retards or stops a chemical reaction," and which Hawley's
Condensed Chemical Dictionary (12th ed. 1993) lists as connoting
"(1) A compound (usually organic) that retards or stops an
undesired chemical reaction, such as corrosion, oxidation, or
polymerization. .... Such substances are sometimes called
negative catalysts,"2 applicant points out that such term "is
defined several other ways as follows" in that:
(a) Hawley's Condensed Chemical
Dictionary (12th ed. 1993) further lists
"inhibitor" as connoting "(2) A biological

2 Although the latter definition, unlike the former, was offered for
the first time with the Examining Attorney's appeal brief and is
therefore technically untimely under Trademark Rule 2.142(d), we have
nevertheless considered such evidence inasmuch as it is settled that
the Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal
Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860 (TTAB 1981)
at n. 7. Likewise, while not previously made of record, we have
considered the additional definitions offered by applicant in its
reply brief.
Ser. No. 75/375,188
6
antagonist used to retard growth of pests
and insects and in medicine";
(b) Webster's Revised Unabridged
Dictionary (1996) sets forth the term as
signifying "[t]hat which causes inhibitory
action; esp., an inhibitory nerve";
(c) WordNet (1997) identifies the term
as denoting "a substance that retards or
stops an activity"; and
(d) CancerWEB's On-line Medical
Dictionary (1997-98) defines it as meaning
"[a] molecule which represses or prevents
another molecule from engaging in a
reaction."
Notwithstanding, however, that some of the above
definitions which it cites are plainly inapposite to its goods,3
applicant insists that, "[w]ith at least five definitions of
'Inhibitor', a consumer will not immediately perceive an
ingredient, quality, or characteristic of Applicant's capsule."
Instead, according to applicant:
Applicant's mark requires sufficient
imagination, thought, and perception to
reach a conclusion as to the nature of the
goods and, therefore, Applicant's mark is
not merely descriptive under the imagination
test. As Applicant's mark requires
imagination to associate the mark with the
product, the mark is not likely to be needed
by competitors to describe their products.
Applicant's mark is also not used by
competitors as a descriptive reference on
similar products and, therefore, Applicant's

3 For example, in light of the background information and literature
furnished by applicant, it is obvious that applicant's encapsulated
corrosion inhibiting chemicals are not biological antagonists nor are
they inhibitory nerves.
Ser. No. 75/375,188
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mark is neither a natural nor obvious manner
to describe the goods. Thus, as applied to
the three tests set forth by the ... Board,
Applicant's mark THE INHIBITOR is not merely
descriptive of capsules containing corrosion
inhibiting chemicals for use in protection
of metallic objects for general public use.
The Examining Attorney, on the other hand, contends
that under the pertinent definitions of the term "inhibitor,"
such term clearly "encompasses applicant's goods, which are
corrosion inhibitors." Accurately noting that, in particular,
applicant has acknowledged in its initial brief that "[t]he
literal meaning of 'Inhibitor' is a substance that retards or
stops a chemical reaction," such as the formation of rust or
corrosion on metal, the Examining Attorney maintains that:
The proposed mark[,] "THE INHIBITOR," is
merely descriptive as applied to applicant's
goods because corrosion inhibitors are a
type of inhibitor. It is not necessary that
a term describe all of the purposes,
functions, characteristics or features of
the goods to be merely descriptive. It is
enough if the term describes one attribute
of the goods. In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); In re MBAssociates, 180
USPQ 338 (TTAB 1973). The proposed mark
"THE INHIBITOR" identifies the single most
important characteristic of applicant's
goods, that they are in fact inhibitors.
....
In the present case, it is our view that, when used on
or in connection with applicant's "capsules containing corrosion
inhibiting chemicals for use in the protection of metallic
objects for general public use," the term "THE INHIBITOR"
Ser. No. 75/375,188
8
immediately describes, without conjecture or speculation, a
significant purpose, function or use of such goods, namely, that
they act as an inhibitor to protect metallic objects from
corrosion or rust. As the relevant definitions noted above
confirm, an "inhibitor," in the context of applicant's goods, is
any chemical substance or compound that "retards or stops a
chemical reaction," such as iron oxidation (rust), "retards or
stops an activity," such as rusting, or "retards or stops an
undesired chemical reaction, such as corrosion." Likewise, we
judicially notice that Webster's Third New International
Dictionary (1993) defines "inhibitor" in pertinent part as "one
that inhibits: as a (1) : a substance for reducing corrosion or
rust formation ...." Applicant's arguments to the contrary, as
the Examining Attorney rightly points out, "center around the
contention that consumers would not be able to guess what
applicant's goods are, or guess that applicant's capsules
contain corrosion inhibitors." However, as is plain from
applicant's advertising literature and the testimonials
contained therein for its products, consumers will indeed know
that applicant's goods are corrosion inhibitors, irrespective of
the fact that such chemicals are sold in capsules. Thus, to
customers for its goods, there is nothing in the term "THE
INHIBITOR" which would be ambiguous, incongruous or susceptible,
perhaps, to another plausible meaning.
Ser. No. 75/375,188
9
Moreover, the fact that that there is an absence of
evidence on this record as to whether any of applicant's
competitors utilize the terminology "inhibitor" or "the
inhibitor" in reference to encapsulated or other possible forms
of corrosion inhibiting chemicals for use in the protection of
metallic objects does not mean that the term "THE INHIBITOR" is
at best suggestive rather than merely descriptive of such goods.
The fact that applicant may be the first and only user of such
term in connection with its products, or so it would appear from
the claims in its advertising literature, does not justify
registration when, as the pertinent dictionary excerpts make
clear, the term "THE INHIBITOR" merely describes goods which
function as corrosion inhibitors for metallic objects. See,
e.g., In re International Game Technology Inc., 1 USPQ2d 1587,
1589 (TTAB 1986); In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In re Pharmaceutical
Innovations, Inc., 217 USPQ 365, 367 (TTAB 1983).4

4 While applicant does not raise the argument, it should in any event
be pointed out that the simple addition of the article "the" to the
word "inhibitor" does not create trademark significance for the term
"THE INHIBITOR." See, e.g., Conde Nast Publications Inc. v. Redbook
Publishing Co., 217 USPQ 356, 357 (TTAB 1983) ["THE MAGAZINE FOR YOUNG
WOMEN" held unregistrable for magazines directed to young women]; In
re Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) ["THE COMPUTER
STORE" found unregistrable for computers and computer book outlet
services); and S. S. Kresge Co. v. United Factory Outlet, Inc., 209
USPQ 924, 928 (D. Mass. 1980) ["THE MART" held unregistrable for
retail discount stores]. In particular, as analogously stated by the
Board in finding the term "THE PILL" unregistrable for oral
contraceptive pills (footnote omitted):
Ser. No. 75/375,188
10
Accordingly, because the term "THE INHIBITOR" conveys
forthwith a significant purpose, function or use of applicant's
"capsules containing corrosion inhibiting chemicals for use in
the protection of metallic objects for general public use," it
is merely descriptive of such goods within the meaning of the
statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. F. Cissel
G. D. Hohein

The use of the article "THE" in association with a name or
word such as "PILL" is a common or usual method adopted to
refer to an object or person previously identified or to
refer to something or someone assertedly unique; and it is
frequently employed to shorten or eliminate unnecessary use
of repetitious or descriptive wording. And considering
that applicant's "ENOVID" product was the only one of its
kind then on the market for commercial sale, the use of the
designation "THE PILL" in association therewith was
essentially as a term of reference and not necessarily as
an indication of origin. If we were to give any weight to
applicant's arguments concerning the "unique" effect
created by the utilization of the article "THE" in
association with the mark "PILL" ..., it would seem to
follow that an automobile manufacturer could register the
designation "THE AUTOMOBILE" or an appliance manufacturer
the phrase "THE REFRIGERATOR". Manifestly, the utilization
of the article "the" ... cannot convert a simple notation
comprising ordinary words of the English language used in
their ordinary sense into a registrable trademark.
In re G. D. Searle & Co., 143 USPQ 220, 222-23, aff'd, 360 F.2d 650,
149 USPQ 619 (CCPA 1966).
Ser. No. 75/375,188
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P. T. Hairston
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board