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United States Court of Customs and Patent Appeals, February 5, 1970

APPEAL from Patent Office, Serial No. 177,682 (Reversed] Jacobi, Davidson & Jacobi, attorneys of record, for appellant. Siegfried A. Schoedal, of counsel. Joseph Schimmel for the Commissioner of Patents. D. Lenore Lady, of counsel.

(Oral argument January 8, 1970 by Mr. Schoedal and Mrs. Lady) Before RICH, ALMOND, BALDWIN, LANE, A88ociate Judges, and McMANUS, Judge, sitting by designation.

ALMOND, Judge, delivered the opinion of the court:

This is an appeal from a decision of the Trademark Trial and Appeal Board, 154 USPQ 248, affirming the examiner's refusal to register on the Principal Register “SUPERWATERFINISH” as a trademark for kraft paper on the ground that the mark is “so highly descriptive of the goods as to be merely an apt commercial designation * * * believed to be without the ability to distinguish the goods of one entity from the goods of another.” Exclusive and continuous use of the mark since at least 1949 is asserted.

The examiner characterized the refusal as being based on the preface to section 2 and the definition of a trademark in section 45 of the Trademark Act of 1946 (15 USC 1052, 1127). Appellant, on the other hand, contends that the mark is not "merely descriptive” of its goods under section 2(e) of the Act (15 USC 1052(e)) and, moreover, it is not generically descriptive and has become distinctive of appellant's goods in commerce so as to permit registration under section 2(f) of the Act (15 USC 1052(f)). We agree with the solicitor that appellant's contentions frame the questions involved in this appeal.

In a comprehensive opinion dispositive of the issues, the board found and held, one member dissenting, as follows: The designation "SUPERWATERFINISH” is not only composed of three descriptive words; but the term "WATER FINISII” admittedly has a well-known meaning in the paper industry and manifestly the addition of the term "SUPER" does not in any way change the inherent meaning of the term "WATER FINISH”. * * * In fact, since applicant admittedly is applying a water finish to its Kraft paper, the adjectival superlative designation serves only to emphasize or enhance the descriptive significant of "WATER FINISH", as in the case of a "super-calendering" finish, rather than lend any distinctive character thereto. As such, "SUPERWATERFINISH” is merely descriptive of applicant's Kraft paper which has been treated with applicant's super water finish. *

Although, as alleged by applicant, it may be the only one in the trade to have used the term "SUPERWATERFINISH" over a seventeen-year period, a word or term such as that involved in this proceeding, which by its very nature conveys a readily understood meaning and significance, is not elevated to the stature of a

1 Application serial No. 177,682 iled September 25, 1963.

374-293-71-11

registrable trademark merely as a result of origination and long use. * * * That applicant may have adopted and used the term “SUPERWATERFINISH” on its goods with an intent that it function as a trademark does not necessarily establish that it has succeeded in that regard. That is to say, the ultimate test in a proceeding of this character is what do the customers for Kraft paper understand by the term "SUPERWATERFINISH”.

The board then considered ten letters from appellant's customers received in reply to appellant's request to them stating, in essence, that “we would appreciate your indicating whether or not the mark 'SUPERWATERFINISH' identifies only the products of Chesapeake.” The board found that a majority of the letters generally indicated an association of the mark in question with appellant's product, stating, however, that the weight to be accorded such letters depends to a large degree on the nature of the mark sought to be registered in each particular case. The board cited several decisions of this court and concluded: It is our opinion that the designation in issue herein "SUPERWATERFINISH" * * * falls within the category of marks * * * that may have acquired a "de facto secondary meaning" but which because of its inherent character is not entitled to registration as a trademark under the statute. Admittedly, the record does not show that the composite mark “SUPERWATERFINISH" as such is a common descriptive name of a paper finishing process. But, “WATERFINISH” is and, as indicated above, the addition of the superlative "SUPER" does not change the inherent significance thereof. Certainly, any manufacturer of Kraft paper treating its product with a water finish which it believes to be superior to similar finishes employed by others should be free to use various adjectives including "super" to describe or extol its finish. The registration sought by applicant would preclude this right.

[1] We consider it well settled that to show that a common descriptive name has acquired a de facto secondary meaning, in the sense that some or even many people have come to associate it with a particular producer, is not in itself enough to show that it has become entitled to registration as a trademark. Roselux Chemical Co. v. Parsons Ammonia Co., Inc., 49 CCPA 931, 299 F. 2d 855, 132 USPQ 627 (1962). However, we do not feel that that statement of law applies to the facts of this case. The board admits, properly we believe, that the composite mark SUPERWATERFINISH as such has not been shown to be a common descriptive name of a paper finishing process. While "water finish” may be descriptive of an attribute of the paper, more specifically its finish, it cannot be said, based on this record, that the [2] unitary designation here in question is no more than a common descriptive name for kraft paper itself. Appellant's customers referred to appellant's product and like products from competitors variously as “Modelfinish” or “butcher paper.” The weight of the evidence indicates that the unitary designation SUPERWATERFINISH is considered to be distinctive of appellant's goods by those in the

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trade, and we do not consider it to be so highly descriptive as to be incapable of registration. The situation before us is not unlike that in In re Ada Milling Co., 40 CCPA 1076, 205 F. 2d 315, 98 USPQ 267 (1953), where this court stated with regard to the mark “Startgrolay”:

Here appellant has so combined three words into a unitary notation as to result in a mark which, in our opinion, may suggest but does not necessarily describe the character of its goods. While it is, of course, true that if the mark were dissected, the words "Start,” “grow," and "lay" might well be descriptive of the characteristics of various types of poultry feed, it is our belief that when the mark is viewed in its entirety, as it is viewed in the market place, it is capable of distinguishing applicants goods from those of others.

In response to the board's view that the registration here sought would preclude others from describing the finish of their products, we note this court's observation in In re Automatic Radio Mfg. Co., 56 CCPA 817, 404 F. 2d 1391, 160 USPQ 233 (1969), that "descriptive words may become trademarks and subject to protection as such, without inhibiting the use of the same words in a non-trademark sense.”'

The decision of the board is, accordingly, reversed.

420 F. 2d 1086; 164 USPQ 386
IN RE MAJESTIC DISTILLING COMPANY, INC. (No. 8220)

TRADEMARKS 1. MARKS AND NAMES SUBJECT TO OWNERSHIP_DESCRIPTIVE-HOW DETERMINED

Mark may be merely descriptive and not registrable if it only decribes a characteristic of the goods; however a legal distinction is drawn between merely descriptive terms and terms that are only suggestive of goods or their

characteristics. 2. MARKS AND NAMES SUBJECT TO OWNERSHIP_DESCRIPTIVE-MISDESCRIPTIVE OR

NOT DESCRIPTIVE-PARTICULAR MARKS "Charred Keg" is not merely descriptive as appiled to bourbon whiskey.

United States Court of Customs and Patent Appeals, February 5, 1970

APPEAL from Patent Office, Serial No. 204,484

[Reversed]
Mercer L. Stockell, attorney of record, for appellant.

Joseph Schimmel for the Commissioner of Patents. Charles R. Fowler, of counsel.

(Oral argument December 1, 1969 by Mr. Fowler; appellant submits on brief]

Before RICH, ALMOND, BALDWIN, LANE, A88ociate Judges, and RAO, Judge, sitting by designation.

Rich, Judge, delivered the opinion of the court:

This appeal is from a decision by the Trademark Trial and Appeal Board, 153 USPQ 884 (Abstract), affirming the examiner's refusal to register “CHARRED KEG” as a trademark for whiskey on the ground that the mark is merely descriptive of applicant's goods. (Section 2(e) (1) Trademark Act of 1946, 15 USC 1052(e).) The board also said: “If said term were applied to a type of whiskey other than bourbon it could well be misdescriptive thereof."

While appellant concedes that the mark is not purely arbitrary, it urges that it does not describe any ingredient, condition, or quality of the whiskey but merely suggests the aging of whiskey and serves as no more than a vague association with excellence.

[1] A mark may be "merely descriptive” and not registrable if it only describes a characteristic of the goods. In re Walker Manufacturing Co., 53 CCPA 1133, 359 F. 2d 474, 149 USPQ 528 (1966); In re Preformed Line Products Co., 51 CCPA 775, 323 F. 2d 1007, 139 USPQ 271 (1963); Roselux Chem. Co. v. Parsons Ammonia Co., 49 CCPA 931, 299 F. 2d 855, 132 USPQ 627 (1962). On the other hand, a legal distinction has been drawn between merely descriptive terms and terms that are only suggestive of the goods or their characteristics. In re Colonial Stores, 55 CCPA 1049, 394 F. 2d 549, 157 USPQ 382 (1968); Audio Fidelity, Inc. v. London Records, Inc., 51 CCPA 1429, 332 F. 2d 577, 141 USPQ 792 (1964). The issue is whether, as applied to whiskey, "CHARRED KEG” is merely descriptive or merely suggestive.

Appellant's application sets forth that the mark has been used "For Whiskey,” but the specimen label shows it is applied to "STRAIGHT BOURBON WHISKEY.” Certain background facts must be considered in resolving the issue.

Bourbon whiskey, as defined in Websters's Third International Dictionary (1966), is “a whiskey distilled from a mash containing at least 51 percent com, the rest being malt and rye, and aged in new charred oak containers.” Corn whiskey, however, is defined as “whiskey distilled from a mash made up of not less than 80 percent corn and aged in an uncharred or used oak container.” 1

The regulations under the Federal Alcohol Administration Act, Title 27, Code of Federal Regulations, Part 5, section 5.10 provide:

(j) Age. * * * In the case of American type whiskies produced on or after July 1, 1936, other than corn whisky, straight corn whiskies, blended corn whisky, and blends of straight corn whisky "age” means the period during which the whisky has been kept in charred new oak containers.

In support of its position that the term "CHARRED KEG” is suggestive rather than descriptive, appellant relies on In re Colonial

1 See also “The Earnest Drinker" by Oscar A. Mendelsohn; “Grossman's Guide to Wine, Spirits and Beers" by Harold J. Grossman; "The Bourbon Production Story" appearing in “Patterson's California Beverage Gazetteer” for September 1965. These indicate that bourbon and American type whiskeys, except corn whiskey, are aged in charred oak containers.

Stores, supra. The court there indicated that one of the tests used to determine whether a given mark is “merely descriptive” is based upon what it would mean to a potential customer when applied to applicant's goods. In that case it was held that the term “SUGAR & SPICE” applied to bakery goods did not tell the potential customer only what the goods were, their functions, characteristics, use, or ingredients, but would, by virtue of the old nursery rhyme, evoke an association with "everything nice.”

Appellant also cites In re Sunbeam Corp., 54 CCPA 901, 370 F. 2d 358, 152 USPQ 116 (1967), wherein it was held that the mark “Spray Mist” as applied to an electric pressing iron, although suggestive of one feature or function of the goods, was not merely descriptive.

In the Roselux case, supra, it was sought to register “Sudsy” as a trademark for ammonia containing synthetic detergent. The product was a new type of household ammonia which became sudsy when the bottle was shaken. We held that "sudsy ammonia” was a common descriptive name for the product, stating (pp. 937-938): One common descriptive name of the product to which “sudsy" is applied is "detergent ammonia” but proof of this fact does not establish that "sudsy ammonia" is not also a common descriptive name. Another descriptive name is "ammonium hydroxide solution containing synthetic detergent”. However, in considering whether “sudsy ammonia" is a common descriptive name of the product we cannot fail to take into consideration the class of people who will commonly be using it and what they will commonly call it. The record here shows, through the testimony of Mr. Ingham and in other respects, that the product is intended, not for chemists, but in his words for "Mrs. Consumer," the average housewife. Assuming her familiarity with clear ammonia or cloudy ammonia or even pine-scented ammonia, the thing she is most likely to remember about this new product, especially after having once used it or seen it demonstrated, is that it is sudsy ammonia.

[2] In the instant case, while it appears that bourbon is an American-type whiskey which has been aged in charred containers, it does not, in our opinion, follow that “CHARRED KEG” when used on whiskey conveys to the consuming public that it is a particular type of whiskey, though it may suggest that it is one which has been aged in charred containers. The record does not show that bourbon or other whiskey is actually aged in "kegs.” Registration will not interfere with the right of the trade to state the fact that its whiskey has been aged in charred oak barrels, vats or other containers.

On the misdescriptive question, which we cannot regard as a ground of rejection, it may be that the Patent Office will wish to reconsider, in light of our reversal of the rejection for descriptiveness, whether the description of the goods is too broad in view of the specimens which show use only on bourbon.

The decision of the board is reversed.

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