IN RE WELLMAN PRODUCTS GROUP, 76644135 (TTAB 6-6-2007)
In re Wellman Products Group Inc.
Serial No. 76644135United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: June 6, 2007Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Gary L. Jones of Kohrman Jackson Krantz PLL for Wellman Products Group Inc.
Elissa Garber Kon, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney).
Before Bucher, Holtzman and Zervas, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Wellman Products Group Inc. seeks registration on the Principal Register of the mark RACE PROVEN STREETLEGAL for goods identified in the application as follows:
"Brake blocks for land vehicles; brake hardware for vehicles; brake linings for land vehicles; brake pads for land vehicles; brake rotors for land vehicles; brake shoes for land vehicles; disc brake pads for vehicles" in International Class 12.[fn1]Page 2
This case is now before the Board on appeal from the final refusal of the Trademark Examining Attorney to register this designation under Section 2(e)(1) of the Trademark Act based upon the ground that the mark is merely descriptive when considered in relation to applicant's identified goods, i.e., that the term "race proven street legal" immediately informs potential purchasers about the nature and quality of applicant's goods.
Applicant and the Trademark Examining Attorney have briefed the issues involved in this appeal. We affirm the refusal to register.
A mark is merely descriptive, and therefore unregistrable pursuant to the provisions of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys information of a significant ingredient, quality, characteristic, feature, function, purpose or use of the goods or services with which it is used or is intended to be used.In re AbcorDevelopment Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) [GASBADGE merely descriptive of a "gas monitoring badge"]. See also In reMBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD merely descriptive of "credit cardPage 3
services." The Court found that a "mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service."]. Hence, the ultimate question before us is whether the termRACE PROVEN STREET LEGAL conveys information about a significant feature or characteristic of applicant's goods with the immediacy and particularity required by the Trademark Act.
A mark is suggestive, and therefore registrable on the Principal Register without a showing of acquired distinctiveness, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services. In re Gyulay,820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) [APPLE PIE merely descriptive of potpourri mixture: "Whether a given mark is suggestive or merely descriptive depends on whether the mark `immediately conveys . . . knowledge of the ingredients, qualities, or characteristics of the goods . . . with which it is used,' or whether `imagination, thought, or perception is required to reach a conclusion on the nature of the goods.'" (citation omitted)].
The question of whether a particular term is merely descriptive is not decided in the abstract. That is, whenPage 4
we analyze the evidence of record, we must keep in mind that the test is not whether prospective purchasers can guess what applicant's goods are after seeing applicant's mark alone.In re Abcor, supra
at 218 ["Appellant's abstract test is deficient — not only in denying consideration of evidence of the advertising materials directed to its goods, but in failing to require consideration of its mark `when applied to the goods' as required by statute"]; In reHome Builders Associationof Greenville, 18 USPQ2d 1313 (TTAB 1990) [NEW HOME BUYER'S GUIDE merely descriptive of "real estate advertisement services"]; and In re AmericanGreetings Corp., 226 USPQ 365, 366 (TTAB 1985) [APRICOT is merely descriptive of apricot-scented dolls]. Rather, the proper test in determining whether a term is merely descriptive is to consider the applied-for mark in relation to the goods or services for which registration is sought, the context in which the mark is used, and the significance that the mark is likely to have on the average purchaser encountering the goods or services in the marketplace. See In reOmaha
Page 5
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) [the term "first tier" describes a class of banks]; In reIntelligent InstrumentationInc., 40 USPQ2d 1792 (TTAB 1996) [the term VISUAL DESIGNER is merely descriptive of "computer programs for controlling the acquisition of data from measurement devices"];In re PennzoilProducts Co., 20 USPQ2d 1753 (TTAB 1991) [MULTI-VIS is merely descriptive of "multiple viscosity motor oil"]; In reEngineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely descriptive of computer graphics programs]; and In reBright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS merely descriptive of a coaster suitable for direct mailing].
In arguing for registrability, applicant contends that its mark is suggestive at worst, if not even arbitrary; that it is incongruous and susceptible to multiple connotations; and that it requires a great deal of imagination in order for the relevant public to perceive any significance of the words of the mark, taken as a whole, as it relates to the applicant's goods.
By contrast, the Trademark Examining Attorney contends that the applied-for mark immediately tells consumers thatPage 6
its vehicle braking components are of a high quality, that they have been "race proven" and yet they are still "street legal."
The term "Race Proven"
The Trademark Examining Attorney has included in the record a number of third-party websites demonstrating that the term "race proven" is a term of art used in a variety of vehicle-racing industries. She argues that this term informs consumers that the involved vehicle parts are of extremely high quality precisely because their effectiveness has been "proven" under demanding racing conditions. The record contains several sample websites that show others in the industry using this phrase to convey this same, laudatory meaning in connection with their vehicle parts. For example, the following sites involve the promotion of vehicle brakes and related goods [emphasis supplied by the Trademark Examining Attorney]:
— Track tested and race proven, Lyndall Racing Brakes offers a uniquely engineered Carbon/Kevlar brake pad which excels at virtually all applications. Use it on the street, in the canyons, and on the track! (excerpted from www.lyndallracingbrakes.com).
— Why buy from Precision Brakes Company? High quality workmanship, our performance guarantee,Page 7 race proven engineering. . . . (excerpted from www.precisionbrakescompany.com)
— Serious driving requires serious braking, which is why this kit is the perfect upgrade for those seeking the highest level of performance from their WRX . . . . Massive, race-proven
billet aluminum 6 piston Superlite calipers are matched to vented, drilled and slotted 12.90 inch rotors in the front. (excerpted from www.kartek.com)
— Race proven brake technology adapted for the street-slotted and cross-drilled replacement rotors (excerpted from www.stylinconcepts.com)
— The 200SL brakes have also been race-proven by pro teams like Shaklee and the LA Sheriffs and many top pro triathletes. (excerpted from www.canecreek.com)
— CASTROL SRF Racing Brake Fluid: Race Proven — Ultimate Racing Brake Fluid. Castrol SRF Racing Brake Fluid is an ultra high performance product formulated specifically to satisfy the ever increasing stresses placed upon the braking systems used in international motorsport. (excerpted from www.hrpworld.com)
— Proven Race Chassis. The Mustang GT-R [automobile] benefits from the 2005 Mustang's race-inspired chassis, developed and tuned by engineers with Ford Racing engineering experience or a passion for weekend track time . . . . The race-proven dampers are coil-over, fully adjustable units . . . Rounding out the chassis package are huge, race-proven Brembo brakes. (excerpted from www.fordmuscle.com)
We conclude from these excerpts that the two-word term "Race Proven" immediately conveys information about braking components across a wide spectrum of vehicles, as the above examples includes motorcycles, trucks, SUV's, automobiles and bicycles.Page 8
Moreover, as noted by the Trademark Examining Attorney, applicant even uses a variation on this wording in a descriptive sense in its own specimen:
— Hawks Performance's leading-edge brake friction technology is proven
everyday in severe-duty aerospace, military, commercial truck fleet, motorsports and performance "street" brake applications. [Trademark Examining Attorney's appeal brief, unnumbered p. 5, [emphasis supplied by the Trademark Examining Attorney].
Accordingly, we find that the term "Race Proven" alone is merely descriptive of the identified goods.
The term "Street Legal"
The Trademark Examining Attorney has included in the record a number of third-party websites demonstrating that the term "Street Legal" is widely used in the automotive industry "to indicate that certain vehicles may contain high performance parts, but are still legal to drive on the street, as opposed to only on racetracks." Id. at unnumbered p. 5 The record contains numerous examples of such descriptive use drawn from a variety of websites [emphasis supplied by the Trademark Examining Attorney]:
— Hawk's ceramic pads are the greatest way to control that horrible brake dust while improving your braking performance at the same time. High performance street brake pads are world renowned for increasingPage 9
stopping power on street-legal cars, trucks and SUV's. (excerpted from www.pitstopautoparts.com, discussing the applicant's products)
— High Performance Street disc brake pads are world renowned for increasing stopping power on your street legal vehicle. (excerpted from www.modacar.com)
— Street legal brake lines [followed by a long list of the car brands served by the site] (excerpted from www.russellperformance.com/auto/brake)
— Subsequently, Brembo brakes have crossed over to street legal vehicles . . . . This list is a who's who of street legal
rockets. Clearly, a large number of high performance automakers seek the stopping power that aided so many championship-racing teams. (excerpted from www.findarticles.com)
— It is the most comfortable medium friction sport compound. The sport pad is street legal, rotor friendly and DE on various Ferraris and Corvettes [discussing a brand of brake pads]. (excerpted from www.importrp.com)
— Our bike motors are street legal and offer over 200 MPG at 25 MPH. (excerpted from www.bikemotor.com)
— For the record, the world's fastest street legal car is not the McLaren F1, it's the 1988 Twin Turbo Callaway Sledgehammer Corvette. (excerpted from http://hypertextbook.com/facts)
— Exhaust: Must be routed through street legal mufflers . . . . Tires: Approved racing slicks are permitted, as well as street legal DOT approved treaded tires [discussing rules for street legal drag way racing] (excerpted from www.californiaspeedway.com)Page 10
The Trademark Examining Attorney has also referred to third-party trademark registrations[fn2] wherein this involved term was registered consistent with the provisions of Section 2(f) of the Act.
____________________________________________________________________________________________
STREET LEGAL MC for "association services,
namely, promoting the
interests of those who ride
motorcycles" in
International Class 35;[fn3] and
____________________________________________________________________________________________
STREET LEGAL MOTORCYCLE CLUB for "association services,
namely, promoting the
interests of lawyers and law
professionals who ride
motorcycles" in
International Class 42;[fn4]
____________________________________________________________________________________________
In spite of this evidence, applicant argues as follows:
Applicant would defy anyone to provide an example of how the words "race proven street legal", taken together or alone, would directly conjure the image of vehicle brakesPage 11
in anyone's mind, no matter how sophisticated or unsophisticated.
Applicant's brief, p. 2. Applicant then proceeds to show how the term "Street Legal" has been registered for a wide variety of goods, including clothing (Registration No. 1509338) and hockey equipment (Registration No. 2705424).
However, there are several problems with this argument. First, contrary to applicant's suggestion, and as seen above, the test under Section 2(e)(1) of the Act is not whether prospective purchasers can guess what applicant's goods are after seeing applicant's mark alone. The question is whether the phrase immediately conveys information when considered in connection with the named goods.
Secondly, while these particular usages of the term "Street Legal" (e.g., applied to clothing or hockey gear) may be arbitrary, that is clearly not the case with braking components for high-performance land vehicles.
Accordingly, we also find that the term "Street Legal" alone is merely descriptive of the identified goods.
The combined term, "Race Proven Street Legal"
Finally, applicant argues that the Trademark Examining Attorney has "totally ignoring the fact that the use andPage 12
meaning of these words, whether taken alone or
together, is incongruous and distinctive," Id., citing to cases such as The InstitutNational des AppellationsD'Origine v. VintnersInternational Co. Inc.,958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) [CHABLIS WITH A TWIST may well project a double meaning, e.g., the unusual approach of adding a citrus flavoring to wine];In re ColonialStores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) [the term SUGAR SPICE held not to be merely descriptive of bakery products]; and Inre Shutts, 217 USPQ 363, 364-365 (TTAB 1983) [SNO-RAKE is not merely descriptive of a snow removal hand tool, the head of which is solid uninterrupted construction without prongs].
Applicant appears to be arguing that the significance of its allegedly incongruous combination would not be grasped without some measure of imagination and "mental pause" in citing toIn re Shutts,supra at 364-365. In addition, applicant argues that the Trademark Examining Attorney has failed to establish the descriptiveness of the combined term, "race proven street legal," while applicant asserts it has shown that this phrase is not a term of art in the vehicle parts industry. Applicant contends that inasmuch as the term "race proven street legal" does notPage 13
have an obvious meaning in relation to its goods, the fact that no third party has used this combination further corroborates applicant's contention that the mark is not merely descriptive.
However, the fact that applicant may be the first and only user of a descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In reNational Shooting SportsFoundation, Inc., 219 USPQ 1018 (TTAB 1983) [SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE is descriptive for conducting and arranging trade shows in hunting, shooting, and outdoor sports products field]. Similarly, the failure of the Trademark Examining Attorney to uncover examples of that specific combination ("race proven street legal") does not detract from the fact that these four words when placed together — combining two separate two-word terms — would be perceived as merely descriptive by those in the vehicle component industry when used in connection with braking components.
Furthermore, we recognize that to the extent any mark creates another meaning (e.g., a double entendre) as applied to the goods or services, the mark comprising the incongruity or double entendre will not be refusedPage 14
registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services. For example, in the oft-cited decision of the predecessor to our principal reviewing court, In reColonial Stores Inc., supra, the Court found this matter clearly functioned as a trademark because "sugar and spice" is a well-known phrase taken from a nursery rhyme. The composite mark is inherently distinctive as applied to bakery products containing these two ingredients, precisely because this combination from the nursery rhyme is familiar to anyone seeing or hearing this mark. Applicant has not explained how its mark creates such a double meaning. Hence, we find the instant mark is not analogous to marks such as CHABLIS WITH A TWIST, SUGAR SPICE or SNO-RAKE.
Rather, we find that when these two descriptive terms are combined into "race proven street legal," the separate meanings of the two individual components are not lost. In fact, to the contrary, this phrase contains two complementary pieces of information — namely, applicant's touting the fact that its customers can get for one's street vehicle the same quality of materials and brake pad technologies originally designed for motor sports race track usage. This combination fails to create anotherPage 15
meaning that might render the combination registrable as a mark.
Accordingly, we find that when these two merely descriptive terms are combined into "Race Proven Street Legal," the overall phrase continues to be merely descriptive of these goods.
Decision: We find the arguments of the Trademark Examining Attorney to be most convincing, and hence, her refusal to register this mark on the Principal Register based upon Section 2(e)(1) of the Lanham Act is hereby affirmed.
[fn1] Application Serial No. 76644135 was filed on August 3, 2005 based upon applicant's allegation of first use anywhere and first use in commerce at least as early as October 15, 2003.
[fn2] Registrations placed into the record by the Trademark Examining Attorney where this term was disclaimed, or where the mark containing this term was registered on the Supplemental Register, have all been cancelled under Section 8 of the Act.
[fn3] Registration No. 2755533 issued on August 26, 2003 based upon an application filed on June 6, 2002 claiming first use anywhere and first use in commerce at least as early as May 27, 1993. No claim is made to the term "MC" apart from the mark as shown. The entire mark was registered under the provisions of Section 2(f) of the Act.
[fn4] Registration No. 2439831 issued on April 3, 2001 based upon an application filed on July 28, 1998 claiming first use anywhere and first use in commerce at least as early as April 7, 1993. No claim is made to the term "Motorcycle Club" apart from the mark as shown. The entire mark was registered under the provisions of Section 2(f) of the Act.