Lead Opinion
This is an appeal from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (“board),
BACKGROUND
Appellant’s application
In its opinion, the board, citing Ex parte International Spike, Inc.,
whether or not a term is merely descriptive in a trademark sense must necessarily be considered in relation to the specific goods for which registration is sought, the context in which it is used on labels, packages, or advertising material directed to these goods, the possible significance of the term in relation to the goods, and the likely reaction thereto of the average purchaser as he encounters the goods in the marketplace.
The board considered appellant’s advertising literature, describing the “Walden Gas Monitoring Badge Service” and the badge,
Citing Stix Products, Inc. v. United Merchants & Manufacturers, Inc.,
OPINION
Marks which are “merely descriptive” of the goods or services have long been denied protection. The Supreme Court, in Beckwith v. Commissioner,
the law would not secure to any person the exclusive use of a trade-mark consisting merely of words descriptive of the qualities, ingredients or characteristics of an article of trade; this for the reason that the function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied, and words merely descriptive of qualities, ingredients or characteristics, when used alone, do not do this.
The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. Armour & Co. v. Organon Inc.,
The Lanham Act incorporates the common law proscription against “merely descriptive” marks in section 2(e)(1)
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them .
Various tests have been used in determining whether a mark is “merely descriptive.”
“Generally speaking, if the mark imparts information directly, it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive.”
This is similar to appellant’s alternate proposed test. It is also similar to the test approved by the Second Circuit in Abercrombie & Fitch Co. v. Hunting World, Inc.,
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.14
In In re American Society of Clinical Pathologists,
However, implicit in this test is the requirement that descriptiveness of a mark, when applied to the goods or services involved, is to be determined from the standpoint of the average prospective purchaser.
Appellant’s proposed 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 the statute.
Considering appellant’s trademark GASBADGE when applied to appellant’s goods and considering further the record evidence of appellant’s advertising materials to which the average prospective purchaser is presumed to have been exposed, which clearly identify the gaseous pollutants collection function of appellant’s device and its use in determining personal exposure to such pollutants, leaving nothing for the exercise of imagination when viewing the mark,
Accordingly, we hold that GASBADGE is “merely descriptive” for purposes of section 2(e)(1) of the Lanham Act.
The decision of the board is affirmed.
AFFIRMED.
Notes
. Reported at
. 15 U.S.C. § 1052(e)(1).
. Serial No. 69,925, filed November 24, 1975.
. One item describes the badge as follows:
The Walden Gas Monitoring Badge provides a means of determining personal exposure to certain gaseous pollutants. A specially-treated element in the badge collects the gas in proportion to the product concentration and time of exposure. By standardizing and recording exposure time, gaseous pollutant determinants can be related to the eight hour time weighted average (T.W.A.) concentration encountered during exposure as required by OSHA.
. The only one found by the board to be material was the service mark NUCLIBADGE for “determining the radiation dosages accumulated by persons exposed to X-rays and nuclear radiations and particles.” The service mark GASBADGE for “analysis and reporting of the concentration of vapors and gases to which individuals are exposed” has not been made of record.
. Andrew J. McPartland, Inc. v. Montgomery Ward & Co.,
. This court has indicated that “merely” means “only.” In re Colonial Stores,
. For example, Warner & Co. v. Lilly & Co.,
. Andrew J. McPartland, Inc. v. Montgomery Ward & Co., supra.
. In re Reynolds Metals Co.,
. Sylvania Elec. Prods., Inc. v. Dura Elec. Lamp Co.,
. See J. Gilson, Trademark Protection and Practice § 2.03 at 2-31 (1977); E. Vandenburgh, Trademark Law and Procedure § 4.30 (2d ed. 1968).
. E. Vandenburgh, Trademark Law and Procedure, supra at 91-92.
. Although citing Stix Prods., Inc. v. United Merchants & Mfrs., Inc., supra,
. The perception of the mark to nonprospective purchasers would be irrelevant, because a mark primarily functions to indicate a single quality control source of the goods or services involved, and this is meaningful only to prospective purchasers or patrons.
. Conceivably, a “gas badge” could be designed to detect the danger of a gaseous explosion in an area unoccupied by personnel, but such a device is clearly excluded by appellant’s advertising.
. We note that the board did not rest its decision on the ground that GASBADGE is the shortened form of the name GAS MONITORING BADGE. If the board believed that the term was the name for the goods, it would have so held. Also, it is not for this court to indulge in speculation that at some future time the public will inevitably so regard the term. See 15 U.S.C. § 1.064(c).
Concurrence Opinion
concurring, with whom MARKEY, Chief Judge, joins.
For all the majority’s extensive review and discussion of various “tests,” propounded from time to time in various places, for determining § 2(e)(1) descriptiveness, the opinion fails to state why I believe GAS-BADGE is “merely descriptive” under the statute.
My reasoning is very simple and requires no application of an elusive test. The ultimate in descriptiveness is the name of a thing. Weiss Noodle Co. v. Golden Cracknel & Specialty Co.,
Appellant’s brief, I note, never comes to grips with this realistic analysis and seems pointedly to avoid discussion of the name of the object to which the mark is applied. The argument is devoted mostly to discussion of other cases which, we have repeatedly said, are of very little value in solving trademark registration problems.
Furthermore, nearly a half century of dealing with trademark problems persuades me that “descriptiveness,” “mere” or otherwise, is a many-faceted question which must be decided on a case-by-case basis. I do not believe it is possible to devise any universally applicable test for determining the multifarious problems which arise under § 2(e) and (f). I note particularly that there is a big difference between a case involving the name of a thing and a case involving a mark which describes or suggests some function, ingredient, quality, or characteristic of the thing. We have here a name problem and I see no point in discussing cases of other types, which are without value as precedents, or other unhelpful generalities. It is not the function of an opinion to write a treatise but to explain why an issue is decided as it is.
The majority does not appear to read the board opinion as I do. (See footnote 17). While the board did not use the word “name” in its opinion, it used its equivalent —“appellation.” It noted that the specimen labels “display the notation ‘WALDEN’ and the notation ‘GASBADGE’ ” and then it immediately pointed out that the labels contain “no generic appellation for the goods * * To me that is equivalent to saying that GASBADGE is the only “appellation” appearing on the labels, espe
The board also said in its conclusion, “ ‘GASBADGE’ leaves nothing for speculation or conjecture. The term immediately and unequivocally describes the purpose and function of appellant’s goods.” That is what names do. They tell you what the thing is. I am sure the board believed GASBADGE to be a name — in fact, a “generic” name in the sense in which trademark lawyers use that term.
Concurrence Opinion
concurring.
I agree with both the analysis and result reached in the majority opinion and accordingly join therewith.
It appears to me that the mark for which registration is sought not only describes the purpose and function of appellant’s goods, but is also the name of the goods.