Bradley J. Holmes

Trademark Trial and Appeal Board

Dec 11, 2003

No. 78055793 (T.T.A.B. Dec. 11, 2003)

Mailed:
December 11, 2003
Paper No. 14
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bradley J. Holmes
________
Serial No. 78055793
_______
David A. Lowe of Black Lowe & Graham PLLC for Bradley J.
Holmes.
Tarah K. Hardy Ludlow, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Bradley J. Holmes seeks registration on the Principal
Register for the mark 5 MINUTE INFIDELITY TEST KIT for
“forensic test kits for home use consisting primarily of
diagnostic reagents for detecting the presence of semen on
any material,” in International Class 1.1
This case is now before the Board on appeal from the
final refusal to register on the ground that the entire
1 Application Serial No. 78055793 was filed on March 29, 2001
based upon applicant’s allegations of use in commerce since at
least as early as May 5, 2000. At the request of the Trademark
Examining Attorney, applicant has agreed to disclaim the generic
term TEST KIT apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78055793
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alleged mark, 5 MINUTE INFIDELITY TEST KIT, is merely
descriptive of applicant’s goods under Section 2(e)(1) of
the Lanham Act, 15 U.S.C. §1052(e)(1).
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
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, if it immediately conveys information
of significant ingredients, qualities, characteristics,
features, functions, purposes or uses of the goods or
services with which it is used or is intended to be used.
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. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the mark in relation to the
goods for which registration is sought, the context in
Serial No. 78055793
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which the mark is used or is intended to be used, and the
possible significance that the mark is likely to have on
the average purchaser encountering the goods in the
marketplace. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792, 1793 (TTAB 1996); In
re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Does the term immediately convey information?
The Trademark Examining Attorney, having examined the
entire five-word phrase, takes the position that “[t]he
applicant’s proposed mark merely describes the type of
product, the length of time required to use the product,
and the purpose of the product.” (Trademark Examining
Attorney’s appeal brief, p. 1)
With regard to the length of time required to use the
product, we note that applicant has not discussed at length
the appropriateness of the descriptiveness refusal as to
the “5 MINUTE” portion of the phrase. Indeed, the record
shows that applicant appears to use “Quick and Easy” on his
website and the trade dress of the packaging in a manner
Serial No. 78055793
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parallel to the use of the term “5 Minute” at the beginning
of his applied-for mark. While we must look at the entire
phrase, we find that the initial descriptive modifier, “5
minute,” does not really affect the nub of this discussion.
Rather, the real issue in this appeal has to do with the
merely descriptive nature of the separable “infidelity test
kit” portion of the mark, with or without the prefatory
term “5 Minute.”
Furthermore, applicant and the Trademark Examining
Attorney have focused much of their discussion on the word
“Infidelity” alone. However, the ultimate question before
us is whether this entire phrase (not the word “Infidelity”
alone) conveys information about the purpose or significant
features of the listed goods with the immediacy required by
Section 2(e)(1) of the Lanham Act.
In partial support of her position that the entire
phrase is merely descriptive, the Trademark Examining
Attorney placed into the record a dictionary definition of
the word “infidelity” as meaning “unfaithfulness to a
sexual partner, especially a spouse” or “an act of sexual
unfaithfulness.” She argues from the plain meaning of the
word “infidelity” that applicant is using the term
“infidelity test kit” to “describe the purpose of the test,
namely, to provide evidence of infidelity.” (Trademark
Serial No. 78055793
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Examining Attorney’s appeal brief, unnumbered page 3) She
also points to examples from applicant’s website where the
product is referred to as an “infidelity test kit” or
merely as an “infidelity test.” She contends that these
readily understood and abbreviated uses are further
evidence that the term “infidelity” is being used
descriptively by applicant, and not as a source indicator.
Or does the term require multi-stage reasoning?
The Trademark Examining Attorney contends that “[n]o
mental jump need be made to determine that the applicant is
providing a TEST KIT that takes 5 MINUTES to perform in
order to determine INFIDELITY.” (Trademark Examining
Attorney’s appeal brief, unnumbered page 4)
By contrast, applicant argues that his trademark is
not merely descriptive, while conceding that it may well be
suggestive. As noted above, a mark is suggestive if
imagination, thought or perception is required to reach a
conclusion on the purpose or features of the goods. See In
re Gyulay, supra. Accordingly, applicant argues that
potential consumers would have to use some imagination or
thought in order readily to understand the purpose or
features of the goods being offered by applicant in
connection with this alleged mark:
Serial No. 78055793
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It requires a great deal of imagination,
thought, or perception to discern from
Applicant’s 5 MINUTE INFIDELITY TEST KIT
that it is a “forensic test kit” (sic) for
home use consisting of (sic) primarily of
diagnostic reagents for detecting the
presence of semen on material.” Nothing in
the mark 5 MINUTE INFIDELITY TEST KIT takes
the public immediately to the notion of
semen detection for the purpose of finding
infidelity. This, by definition, confirms
that applicant’s mark is suggestive rather
than merely descriptive.
(applicant’s reply brief, p. 3).
Applicant argues that the term “infidelity” as used in
applicant’s 5 MINUTE INFIDELITY TEST KIT mark does not
describe “semen detection.” Applicant then argues that
neither the dictionary definition relied on by the
Trademark Examining Attorney nor the several references to
“infidelity” on applicant’s website supports the Trademark
Examining Attorney’s position.
As to whether the entire claimed mark herein
immediately conveys information about the purpose or
significant features of the goods, applicant focuses on the
word “infidelity” alone. He then argues that the
definition of “infidelity” provided by the Trademark
Examining Attorney points to sexual unfaithfulness, but
“does not describe forensic semen detection.” While the
term “infidelity” clearly conjures up images of sexual
unfaithfulness, in order to be descriptive, according to
Serial No. 78055793
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applicant, “it must immediately describe forensic semen
detection, which it does not.”
In support of his position that this phrase is
suggestive, applicant argues that the fact that there is no
dictionary entry for the phrase “5 minute infidelity test
kit” should weigh in applicant’s favor. In re Sundown
Tech. Inc., 1 USPQ2d 1927, 1928 (TTAB 1986) [GOVERNOR is
nebulous as applied to amplifier controls, and the
dictionary definition “is notable for its absence … as a
term of art in the electronics field …”]; In re Men’s Int’l
Professional Tennis Council, 1 USPQ2d 1917, 1918 (TTAB
1986) [In application to register MASTERS as a service mark
for “organizing and conducting an annual tennis
tournament,” Board found that “the absence of any
particular reference to tennis in the dictionary [entry for
the word “master”] probably favors appellant’s position
that the mark should be published rather than that it
should be refused ex parte.”].
The Trademark Examining Attorney counters that whether
or not a term is found in the dictionary is not controlling
on the question of registrability provided the term has a
recognized meaning. In re Orleans Wines, Ltd., 196 USPQ
516 (TTAB 1977) [BREADSPRED is merely descriptive of
Serial No. 78055793
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function or use of jams and jellies even if it is not a
dictionary term].
We note that all three of these cases involved single
word marks (GOVERNOR, MASTERS and BREADSPRED). By
contrast, rarely would a five-word phrase appear in any
dictionary as a single entry. However, it is well settled
that in order to make a prima facie case of
descriptiveness, the Trademark Examining Attorney may rely
upon dictionary definitions of individual elements in a
multi-word phrase, as the Trademark Examining Attorney has
done in the instant case. If each component retains its
descriptive significance in relation to the goods, the
combination results in a composite that is itself
descriptive. See In re Putman Publishing Co., 39 USPQ2d
2021 (TTAB 1996) [FOOD & BEVERAGE ONLINE held to be merely
descriptive of news and information service for the food
processing industry]; In re Copytele Inc., 31 USPQ2d 1540
(TTAB 1994) [SCREEN FAX PHONE merely descriptive of
“facsimile terminals employing electrophoretic displays”];
In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986)
[SQUEEZE N SERV held to be merely descriptive of ketchup
and thus subject to disclaimer]; In re Uniroyal, Inc., 215
USPQ 716 (TTAB 1982) [STEELGLAS BELTED RADIAL held merely
Serial No. 78055793
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descriptive of vehicle tires containing steel and glass
belts].
In support of his position that this alleged mark is
suggestive, applicant returns to “the mental leap that the
public must make in the Examiner’s descriptiveness analysis
in order to associate applicant’s mark with semen
detection.” Applicant argues that “one must exercise
‘mature thought or follow a multi-stage reasoning process’
to determine that semen detection is an attribute of
Applicant’s 5 MINUTE INFIDELITY TEST KIT,” citing to In re
Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978) [TENNIS
IN THE ROUND held not descriptive of tennis facilities].
However, the Board, in discussing the TENNIS IN THE
ROUND mark, expressly found that this term created a
misleading association, and that the mark as a whole was
incongruous as applied to the recited services:
In the instant case, applicant’s marks
“TENNIS IN THE ROUND” and “TENNIS IN THE
ROUND INC.” and design evoke an immediate
association with the well-known phrase
“theater-in-the-round.” … This association
of applicant’s marks with the phrase
“theater-in-the-round” creates an
incongruity because applicant’s tennis
facilities are not in fact at all analogous
to those used in a “theater-in-the-round” …
In contrast, the placement at applicant’s
facility of 11 tennis courts one next to
another in a circular configuration has no
real effect upon the manner in which tennis
is practiced at such facility, nor upon the
Serial No. 78055793
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rendering of applicant’s services. Insofar
as the record herein shows, the placement of
applicant’s tennis courts in a circular
configuration, rather than in rows, for
example, serves no particular purpose in the
performance of applicant’s services. Nor
does it appear that others engaged in the
services of providing tennis facilities in
the form of courts and tennis ball machines
and offering instruction in tennis would
have any need to use the phrase “in the
round” in describing such service.
In re Tennis in the Round, Inc., 199 USPQ at 498. Here,
there is no misleading association involved in the applied-
for mark and applicant has not contended that this mark
creates any incongruity when applied to the identified
goods. Hence, we find that this case does not support
applicant’s position herein.
Descriptiveness is not determined in the abstract:
Applicant expressly agrees that the question of
whether a particular term is descriptive or suggestive must
not be determined in the abstract. Yet applicant goes on
to argue that the mark is not merely descriptive because
one cannot tell from the mark alone that the product
involves forensic semen detection:
Even if it is assumed, based on the
definition of “infidelity” offered by the
Examiner, that the context for the mark is a
test kit for proving, predicting or
detecting sexual unfaithfulness, the mark
could describe a wide variety of types of
Serial No. 78055793
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kits, limited only by the imagination of the
person hearing or seeing the mark. As
described in Applicant’s opening brief, none
of these attributes need include forensic
semen detection.
(applicant’s reply brief, p. 3) Applicant and the
Trademark Examining Attorney have agreed with the principle
that this question should not be determined “in the
abstract.” The standard derived from Lanham Act
precedential decisions does not require, for a
descriptiveness refusal, that it is possible for a
blindfolded consumer who has been given only the term or
phrase making up the mark to enumerate the exact features,
technologies or methodologies employed in the goods.
Rather, the question is whether someone who knows what
the goods are will understand the term or phrase to convey
significant information about them – namely, the idea that
these kits are designed to provide a means to test for
evidence of the sexual infidelity of one’s partner. See In
re Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corp., 226 USPQ
365 (TTAB 1985).
We agree with the Trademark Examining Attorney that
the question to ask is whether the term “infidelity test
kit” immediately conveys information about the purpose of a
home test kit designed to shed light on the sexual
Serial No. 78055793
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faithfulness of one’s partner. Applying the general
standard enunciated above to the facts of this case, it is
not a requirement of the case law that the prospective
customer for these goods (e.g., the suspicious partner)
knows immediately upon seeing or hearing the alleged mark
that the methodology involves semen detection. Rather, it
is sufficient that a consumer in the market for a forensic
test kit for detecting semen, when confronted with such a
kit marketed under the designation “5 MINUTE INFIDELITY
TEST KIT,” would immediately know the purpose of the kit,
and a significant feature of the goods, such as how long it
takes to use the product.
This is not a case like In re Reynolds Metals Company,
480 F.2d 902, 178 USPQ 246 (CCPA 1973), wherein BROWN-IN-
BAG was held suggestive, not merely descriptive, because
that applicant was “not seeking to register a direction
such as ‘brown foods in this bag’” and because the bag had
multiple purposes. In the instant case, applicant’s
product has one purpose, i.e., a quick test for the
presence of semen as evidence of infidelity, and the
designation applicant claims as a mark does nothing but
immediately reveal this single purpose for the product.
Serial No. 78055793
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Context:
Applicant argues that upon the introduction of these
goods, there was no existing “context” for the applicant’s
product:
The public has no exposure to these types of
test kits, and therefore cannot frame any
particular characterization for the
description of Applicant’s goods outside of
Applicant’s own branding.
(Applicant’s reply brief, p. 3) Indeed, nothing in the
record contradicts applicant’s contention that consumers
are only recently getting their first exposure to this
novel test kit. To the extent that such exposure comes
from applicant’s website and the product’s trade dress, it
behooves us then to look more closely at this context.
The best evidence in the record providing context for
applicant’s product is applicant’s own website. Upon
examining these webpages, we note that applicant himself
seems to use “infidelity test kit” and “semen detection
test kit” interchangeably. The entire term “5 minute
infidelity test kit” appears on this site in all lower-case
letters.
Nonetheless, with regard to these appearances of the
word “infidelity” in a variety of ways on applicant’s
website, applicant argues that he is not using the term to
describe the purpose of the product. Instead, applicant
Serial No. 78055793
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argues that the repeated uses of the word “infidelity” in
various forms stands as an indication of the success of
applicant’s having created a “brand image” around the
suggestive term, “Infidelity.”
We disagree, and find that “infidelity” is used
repeatedly by applicant in its ordinary, dictionary sense,
to mean “sexual unfaithfulness,” in a context where
detecting the unfaithfulness of one’s partner is the total
focus of the kits as well as the manner in which applicant
markets these goods.
We do not question but that applicant expected that
the term 5 MINUTE INFIDELITY TEST KIT would distinguish his
goods from potentially competitive goods offered by others.
On the other hand, having chosen these informative words,
and then having employed them in a context totally
consistent with their ordinary meaning, applicant accepted
the risk that this prosaic string of words may not function
as a source indicator for his goods. We note the analysis
and results of In re The Standard Oil Company, 275 F.2d
945, 125 USPQ 227 (CCPA 1960) [GUARANTEED STARTING for
winterizing automobile engines].
In the present case it may be conceded that
in using the words “guaranteed starting” in
order to bring its services to the attention
of the public the applicant intended and
hoped, or perhaps expected, that they would
Serial No. 78055793
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distinguish them from similar services
offered by others. However, having chosen
words which, taken in their normal meaning,
do no more than inform the public with
reasonable accuracy what is being offered,
it did not succeed.
The words are well understood, English words
in common use. Taken together, they amount
to no more than a sort of condensed
announcement that the applicant will
guarantee the work done in order to insure
the starting of the customer’s car. It must
be assumed that the ordinary customer
reading the advertisements displayed by an
automobile service station would take the
words at their ordinary meaning rather than
read into them some special meaning
distinguishing the services advertised from
similar services of other station operators.
Whatever may have been the intention of the
applicant in using them, their use has not
accomplished what the applicant wished to
do. Hence, they are not a service mark.
Hence, we find that applicant’s own website provides
the most damaging evidence that its alleged mark is highly
descriptive and would be perceived by the purchasing public
as merely a common descriptive term for its goods rather
than as a mark identifying the goods’ source. See In re
Gould Paper Corp. 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987); see also In re Diagnostic Products Corp., 216 USPQ
170 (TTAB 1982) [“On review of [applicant’s instructional
literature], it is clear to the Board that the references
to ‘PREMIX’ in such literature cease, as some point, to
refer to applicant’s kit as such and become a descriptor or
Serial No. 78055793
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referent … confirming the descriptive possibilities and
tendencies of the term in the context of applicant’s actual
usage ….” 216 USPQ at 172, footnote 4].
In addition to the website, the trade dress of the
packaging for the goods provides another significant
context for framing consumers’ impressions of applicant’s
product and the relevant source-identifying matter. Images
of applicant’s product packaging are portrayed repeatedly
on applicant’s website. These images are identical to a
color photograph of one surface of the package or carton
that serves as the specimen of record in the instant file:
Serial No. 78055793
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The prominent text in the large center area of the
carton immediately shows the prospective customer that this
is “The Original CheckMate® 5 Minute Infidelity Test Kit. These are “Quick
and Easy” (viz. “5 Minute”) “home test kits” (or “Test Kit”)
that seems clearly to be the CheckMate® brand of such kits.
While a single product may clearly carry multiple marks,
the trade dress of the packaging uses CheckMate in the
prominent manner that consumers are accustomed to seeing in
source-identifiers. Unlike the phrase that is the subject
of this appeal, the CheckMate term is clearly a suggestive
mark. As applied to these goods, it also employs a clever
play on the well-known chess term. In this context, then,
it is not at all surprising that the testimonial of a
satisfied customer shown on applicant’s own website uses
“CheckMate” as the brand name modifying the descriptive
phrase “infidelity test kit.”
To the extent that one does focus on the word
“Infidelity,” as applicant would have us do, we find that
it is unlikely that any reasonable consumers would perceive
the word “Infidelity” – buried as it is in the middle of
this five-word phrase – as applicant’s trademark. Indeed,
if “5 MINUTE … TEST KIT” is highly descriptive of
applicant’s “quick and easy … semen detection kits,” and
Serial No. 78055793
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given that applicant uses “infidelity test kit” and “semen
detection kit” interchangeably, any permutation of these
components derives a phrase that is also highly descriptive
of applicant’s goods irrespective of which precise
formulation is used (e.g., “5 minute semen detection kit,”
“quick and easy infidelity test kit,” “5 minute infidelity
test kit,” “quick and easy semen detection kit,” etc.).
Decision: The refusal to register under Section
2(e)(1) of the Act is hereby affirmed.