In re Abcor Development Corp. , 588 F.2d 811 ( 1978 )

MILLER, Judge.

This is an appeal from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (“board),¹ affirming the examiner’s refusal to register appellant’s trademark GASBADGE on the principal register as “merely descriptive” within the meaning of section 2(e)(1) of the Lanham Act.² We affirm.

BACKGROUND

Appellant’s application³ states that the goods for which the mark has been adopted are “Device to determine and monitor personal exposure to gaseous pollutants.”

In its opinion, the board, citing Ex parte International Spike, Inc., 190 USPQ 505, 506 (TTAB 1976), said that—

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,⁴ and the specimen labels (“Gas Badge” appears within a parallelogram preceded by “Walden”) filed with the application. It found that “[t]he purchasers and prospective purchasers of these goods are obviously aware of the function and characteristics of applicant’s badges.” After considering the nature of the goods and the context in which the mark was used (particularly the advertising literature), it concluded that GASBADGE “leaves nothing for speculation or conjecture” and that “[t]he term immediately and unequivocally describes the purpose and function of applicant’s goods.” It, therefore, held that GAS-BADGE is “merely descriptive” and not registrable.

Citing Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 487, 160 USPQ 777, 784 (S.D.N.Y.1968), appellant argues that the proper test for determining mere descriptiveness is whether the mark conveys forthwith an immediate idea of the ingredients, qualities, or characteristics of the goods “to the ultimate consumer, who has never seen the product and does not know what it is.” It contends that GASBADGE does not satisfy this test, because: (1) the mark “does not convey any idea of the ingredients, qualities, or characteristics of the goods,” i. e., the mark is not descriptive; and (2) the mark does not convey such an idea forthwith and immediately, and examination and study of appellant’s literature is required to reach a conclusion regarding the nature of appellant’s goods. Alternatively, appellant contends that, assuming the mark . describes the goods, the mark is not “merely descriptive,” since considerable thought (over a period of time) is required to arrive at a conclusion regarding the nature of the goods. Appellant also argues that certain third-party registrations⁵ were not given full consideration.

The solicitor agrees with the test used by the board and contends that determination of whether a mark is “merely descriptive” requires consideration of the mark as it is applied to the goods, and not in the abstract as proposed by appellant.

OPINION

Marks which are “merely descriptive” of the goods or services have long been denied protection. The Supreme Court, in Beckwith v. Commissioner, 252 U.S. 538, 543, 40 S.Ct. 414, 416, 64 L.Ed. 705 (1920), said that—

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., 245 F.2d 495, 498 and 500, 44 Cust.Pat.App. 1010, 1014 and 1016, 114 USPQ 334, 337 and 338 (1957).

The Lanham Act incorporates the common law proscription against “merely descriptive” marks in section 2(e)(1)⁶ as follows:

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.”⁷ In early cases the Supreme Court⁸ considered whether the mark describes the ingredients, qualities, or characteristics of the goods. This court has applied the same test.⁹ It has also looked to whether the mark conveys information regarding a function, or purpose, or use of the goods.¹⁰ Other considerations include whether the mark describes a feature or part of the goods¹¹ and whether it conveys information about any properties of the goods.¹² Although a mark may be generally descriptive, if it also functions as an indication of origin, it is not “merely descriptive.”¹³

We note that the Seventh Circuit, in Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 379, 188 USPQ 623, 635, cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94, 191 USPQ 416 (1976), quoted A. Seidel, S. Dalroff & E. Gonda, Trademark Law and Practice § 406, at 77 (1963), for what it regarded as the best statement of the distinction between a descriptive and suggestive mark:

“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., 537 F.2d 4, 11, 189 USPQ 759, 765 (CA 2 1976), namely:

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, 442 F.2d 1404, 1407, 58 CCPA 1240, 1243, 169 USPQ 800, 801 (1971), this court impliedly approved this test by stating that the service mark involved was “merely descriptive,” since it “would immediately convey to one seeing or hearing it the thought of appellant’s services.”

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.¹⁵ In re Andes Candies, Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA 1973); In re Automatic Radio Manufacturing, 404 F.2d 1391, 56 CCPA 817, 160 USPQ 233 (1969); Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 699, 131 USPQ 55, 60 (CA 2 1961). See E. Vandenburg, Trademark Law and Procedure, supra note 12, at 92-93. Evidence of the context in which a mark is used on labels, packages, or in advertising material directed to the goods is probative of the reaction of prospective purchasers to the mark. In re American Society of Clinical Pathologists, supra. See In re Thunderbird Products Corp., 406 F.2d 1389, 56 CCPA 969, 160 USPQ 730 (1969). To hold otherwise would be to separate the concept of the average prospective purchaser from the world of reality.

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,¹⁶ we agree with the board that the term GASBADGE immediately and unequivocally describes the purpose and function of appellant’s goods.¹⁷

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.

1 . Reported at 197 USPQ 547 (1978).

2 . 15 U.S.C. § 1052(e)(1).

3 . Serial No. 69,925, filed November 24, 1975.

4 . 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.

5 . 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.

6 . Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 35 CCPA 802, 76 USPQ 97 (1947), cert. denied, 333 U.S. 875, 68 S.Ct. 904, 92 L.Ed. 1151 (1948).

7 . This court has indicated that “merely” means “only.” In re Colonial Stores, 394 F.2d 549, 552, 55 CCPA 1049, 1053, 157 USPQ 382, 385 (1968).

8 . For example, Warner & Co. v. Lilly & Co., 265 U.S. 526, 528, 44 S.Ct. 615, 68 L.Ed. 1161 (1924); Beckwith v. Commissioner, supra.

9 . Andrew J. McPartland, Inc. v. Montgomery Ward & Co., supra.

10 . In re Reynolds Metals Co., 480 F.2d 902, 178 USPQ 296 (CCPA 1973); In re Realistic Co., 440 F.2d 1393, 58 CCPA 1204, 169 USPQ 610 (1971); Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 43 CCPA 970, 110 USPQ 293 (1956); In re W. A. Sheaffer Pen Co., 158 F.2d 390, 34 CCPA 771, 72 USPQ 129 (1946).

11 . Sylvania Elec. Prods., Inc. v. Dura Elec. Lamp Co., 247 F.2d 730, 114 USPQ 434 (CA 3 1957).

12 . See J. Gilson, Trademark Protection and Practice § 2.03 at 2-31 (1977); E. Vandenburgh, Trademark Law and Procedure § 4.30 (2d ed. 1968).

13 . E. Vandenburgh, Trademark Law and Procedure, supra at 91-92.

14 . Although citing Stix Prods., Inc. v. United Merchants & Mfrs., Inc., supra, 295 F.Supp. at 487, 160 USPQ at 785, it is significant that the Second Circuit did not include the phrase “to one who has never seen it [the product] and does not know what it is,” which appears on the preceding page of the Stix opinion and is the essence of appellant’s abstract test.

15 . 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.

16 . 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.

17 . 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).