Diamond Communication Products, Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 74677197 (T.T.A.B. Mar. 30, 1999)

Paper No. 15
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Diamond Communication Products, Inc.
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Serial No. 74/677,197
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John A. Clifford of Merchant, Gould, Smith, Edell, Welter &
Schmidt for Diamond Communication Products, Inc.
Caryn L. Hines, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 19, 1995, applicant filed the above-referenced
application to register the mark “CABLE-TY” on the
Principal Register for “hardware, namely straps for
securing communication cables,” in Class 3. The
application was based on applicant’s claim of first use in
interstate commerce as early as December of 1991.
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The Examining Attorney refused registration under
Section 2(e)(1) of the Act on the ground that the mark
applicant seeks to register is merely descriptive of the
goods identified in the application because it is the
phonetic equivalent of a descriptive term for them.
Attached to the refusal were copies of excerpts from
articles retrieved from the Nexis automated database of
articles published in various periodicals. The excerpts
show the term “cable tie” used in a generic fashion, i.e.,
as the name of a device used to bundle or tie electrical
wire. Typical examples are as follows: “Cable ties bundle
electrical wire, preventing unravelling.”; “This proposal
also would require tying back the loom with a cable tie to
the cable loom support bracket…”; “Tyson Corporation’s
automatic cable tie tensioning tool reportedly increases
productivity as it applies, tensions, and cuts off each
cable tie in less than one second.”; “…Secure the bundle of
wires with a new nylon cable tie.”; and “The cable tie
product category is expanding rapidly…”.
Applicant responded to the refusal to register with
argument that the mark shown in the application is
suggestive, rather than merely descriptive, by virtue of
the hyphen and the misspelling of the word “tie.”
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The Examining Attorney was not persuaded, and the
refusal to register was made final in the second Office
Action. Attached to that action were more excerpts from
published articles, all consistent with the excerpts
submitted with the first Office Action.
Applicant filed a timely Notice of Appeal, but
included an amendment to claim registrability under the
provisions of Section 2(f) of the Act, a declaration from
applicant’s vice president of sales and engineering stating
his belief that the term sought to be registered had
acquired secondary meaning by virtue of applicant’s
substantially exclusive use for the five years preceding
the filing of the application, and a request to suspend
action on the appeal and remand to the Examining Attorney
for consideration of the amendment.
The appeal was instituted and suspended, and the
application was remanded for that purpose. The Examining
Attorney held that applicant’s showing in support of the
claim of distinctiveness was insufficient in view of the
evidence that the term is generic. Applicant’s attorney
responded, asserting sales of over five hundred thousand
dollars for the period from 1992 through 1996.
The Examining Attorney was still not persuaded. She
maintained the refusal to register because the term sought
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to be registered is generic or at least highly descriptive
and has not acquired distinctiveness.
The file was then returned to the Board for resumption
of action on the appeal. Both applicant and the Examining
Attorney filed briefs, but applicant did not request an
oral hearing.
Based on careful consideration of the record in this
application and the arguments made by applicant and the
Examining Attorney, we hold that the refusal is proper and
must be affirmed.
Applicant’s claim of distinctiveness under Section
2(f) of the Act is in effect a concession that the term
sought to be registered is merely descriptive of
applicant’s goods. In re Leatherman Tool Group, Inc., 32
USPQ2d 1443 (TTAB 1994). Applicant has never argued that
its goods are not the kinds of goods referred to in the
excerpted articles of record as “cable ties.”
“TY” is plainly the phonetic equivalent of the
descriptive term “tie,” and as such, must be considered to
be as descriptive as “tie” is. In re State Chemical Co.,
225 USPQ 687 (TTAB 1985).
The issue in the instant case is therefore whether the
descriptive term has acquired secondary meaning as an
indication of the source of applicant’s products. A
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generic term can never acquire distinctiveness, and the
level of proof needed to establish that a descriptive term
is registrable under Section 2(f) increases as the
descriptiveness of the term increases. Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
Applicant concedes the obvious fact that “TY” is the
equivalent of “TIE,” but applicant’s argument that under
the Examining Attorney’s reasoning, for “CABLE-TY” to be
generic for applicant’s product, the goods would have to be
ties made out of cable, borders on the disingenuous. The
evidence submitted by the Examining Attorney establishes
that the term “cable tie” is generic for cable ties, the
devices used to secure electric wires or cables, and the
application specifies that applicant’s goods are such
products, “straps for securing communication cables.” That
other generic words like “strap” or “fastener” might also
be used to name such products does not make “cable tie” or
its equivalent any less generic. No amount of evidence of
de facto secondary meaning can dictate registration of a
generic term. Dan Robbins & Associates, Inc., v. Questor
Corp., 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
Moreover, even if we were to hold that the term is
only highly descriptive of the goods on which applicant
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uses it, applicant has not submitted sufficient evidence in
support of the claim that it has acquired distinctiveness
by just noting that it has been used for the five years
prior to the filing of the application and providing the
sales figures for those years. Simply put, the fact that
applicant has used the highly descriptive or generic term
and has sold products bearing the designation does not
establish that customers and prospective customers regard
it as anything but descriptive terminology or a generic
designation. We have no evidence of the promotion of the
descriptive term as a trademark, nor do we have evidence
that it is perceived as such by anyone other than
applicant.
Accordingly, the refusal to register is affirmed.
R. L. Simms
R. F. Cissel
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board
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