Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 25, 2019

U NITED STATES P ATENT A ND T RADEMARK O FFICE
Trademark Trial and Appeal Board
————
In re Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation
_____

Serial No. 79214692
_____

David Ehrlich of Fross Zelnick Lehrman & Zissu PC,
for Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation.

Deborah Meiners, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.

_____

Before Cataldo, Wolfson, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

Kabushiki Kaisha Pilot Corporation t/a Pilot Corporation (“Applicant”) seeks

registration on the Principal Register of the mark for

“stationery” in International Class 16.1

The Trademark Examining Attorney refused registration of Applicant’s mark

under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

1Application Serial No. 79214692 was filed on April 11, 2017, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), requesting an extension of protection based on
Applicant’s International Registration No. 1361161 registered on April 11, 2017.
Serial No. 79214692

Applicant’s mark, in its entirety, is merely descriptive of the goods identified in its

application.

When the refusal was made final, Applicant appealed. Both Applicant and the

Examining Attorney filed briefs. We affirm the refusal to register.2

I. Initial Matter – Identification of Goods

As noted above, Applicant seeks to register its mark for

“stationery.” However, as discussed more fully below, the evidence of record

demonstrates that Applicant’s goods are actually writing instruments. The dictionary

definition of the term “stationery” is “materials (such as paper, pens and ink) for

writing or typing,”3 which encompasses Applicant’s actual goods. The Examining

Attorney maintains that Applicant’s identification of goods did not need to be

narrowed because the term “stationery” by definition includes writing instruments.4

2All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
3 The Examining Attorney included the dictionary definition of the term “stationery” with
her appeal brief purportedly accessed on July 9, 2019 from the website
www.meriamwebster.com. By doing so, it appears that the Examining Attorney is requesting
the Board take judicial notice of this definition. The dictionary definition from the actual
website, however, was not attached to the Examining Attorney’s brief, but “the Board may,
sua sponte, take judicial notice of dictionary definitions, In re Jimmy Moore LLC, 119
USPQ2d 1764, 1768 (TTAB 2016), and we take judicial notice of this definition and will
consider it for any probative value that it may have. We do note, however, that the better
practice would have been to submit the dictionary definition downloaded from the website
during the prosecution of Applicant’s application. However, since Applicant has not objected
to the inclusion of this dictionary definition in the Examining Attorney’s brief, we find no
prejudice to Applicant in considering it, particularly since Applicant relies on this definition
as an apt description of its goods in traversing the refusal. See Applicant’s Appeal Brief p. 5;
4 TTABVUE 8 (“The Applicant intended ‘stationery’ (the goods identified in the application)
to include writing instruments such as pens or pencils.”)
4 See Examining Attorney’s Appeal Brief, p.7; 6 TTABVUE 7.

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Serial No. 79214692

In view thereof and solely for purposes of this decision, our analysis regarding the

Section 2(e)(1) refusal will focus on Applicant’s apparent actual goods, namely,

writing instruments.

II. Mere Descriptiveness – Applicable Law

Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the

registration of a mark which, when used on or in connection with the applicant’s

goods, is merely descriptive of them. “A term is merely descriptive if it immediately

conveys knowledge of a quality, feature, function, or characteristic of the goods or

services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,

102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82

USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114

USPQ2d 1574, 1575 (Fed. Cir. 2015) and In re Gyulay, 820 F.2d 1216, 3 USPQ2d

1009, 1009 (Fed. Cir. 1987).

Descriptiveness is analyzed in relation to an applicant’s identified goods, “the

context in which the [term] is being used, and the possible significance that the term

would have to the average purchaser of the goods because of the manner of its use or

intended use”; that a term may have other meanings in different contexts is not

controlling. In re Bayer AG, 82 USPQ2d at 1831. Descriptiveness is not considered in

the abstract. Id. In other words, we evaluate whether someone who knows what the

goods are will understand the mark to convey information about them. DuoProSS

Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757

(Fed. Cir. 2012); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780

(Fed. Cir. 2003).

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When two or more merely descriptive terms are combined, the determination of

whether the composite mark also has a merely descriptive significance turns on

whether the combination of terms evokes a new and unique commercial impression.

If each component retains its merely descriptive significance in relation to the goods,

the combination results in a composite that is itself merely descriptive. See, e.g., In

re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372, 1374 (Fed. Cir.

2004) (PATENTS.COM merely descriptive of computer software for managing a

database of records that could include patents and for tracking the status of the

records by means of the Internet).

On the other hand, a mark comprising a combination of merely descriptive

components is registrable if the combination of terms creates a unitary mark with a

non-descriptive meaning, or if the composite has an incongruous meaning as applied

to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382

(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363,

365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a

snow-removing head at one end, the head being of solid uninterrupted construction

without prongs”). In this regard, “incongruity is one of the accepted guideposts in the

evolved set of legal principles for discriminating the suggestive from the descriptive

mark.” Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199 USPQ

496, 498 (TTAB 1978) (the association of applicant’s mark TENNIS IN THE ROUND

with the phrase “theater-in-the-round” creates an incongruity because applicant’s

services do not involve a tennis court in the middle of an auditorium). Thus, we must

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Serial No. 79214692

consider the issue of descriptiveness by looking at Applicant’s mark in its entirety.

III. Arguments and Evidence

In support of her Section 2(e)(1) refusal, the Examining Attorney submitted the

dictionary definitions of the terms “super” and “grip” which are defined as follows:5

SUPER:
1: a: of high grade or quality
b: used as a generalized term of approval – a super cook

2: very large or powerful – a super atomic bomb

GRIP:
1: a: a strong or tenacious grasp
b: strength in gripping
c: manner or style of gripping

2: a firm tenacious hold typically giving control, mastery or
understanding

3: a part or device for gripping;

4: a part by which something is grasped.

Additionally, the Examining Attorney submitted screenshots from Applicant’s

website, as reproduced below:6

5 March 21, 2018 Office Action, TSDR pp. 6-7 (from www.merriam-webster.com).
6 September 19, 2018 Final Office Action, TSDR pp. 29-31. The blue lines that circle the text
in the first and third screenshot were provided by the Board.

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Serial No. 79214692

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The Examining Attorney argues that Applicant’s own website touts the grip as a

feature or characteristic of its identified goods by stating as follows: “It’s grip has

been designed for a more comfortable hold,” and “An ergonomic pen with a rubber

grip to ensure better control and a better writing comfort!” (emphasis added).

To illustrate further the descriptive nature of the term “grip” in relation to

Applicant’s identified goods, the Examining Attorney also submitted Internet

evidence from various third-party retail websites that advertise writing instruments

and that show that “a grip” is discussed as a feature of writing instruments.7 The

third-party website evidence is summarized below:

• “Mechanical Pencils- Black Barrel with Rubber Grip- Refillable,”
“Cushioned, rubber grip provides extreme writing comfort and control”

7 Id., TSDR pp. 7-28.

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Serial No. 79214692

and “Assorted color plastic pocket clips with matching rubber grips.”
(www.anypromo.com);

• “Soft grip enhances comfort” and “BIC Xtra-Comfort Mechanical
Pencils feature comfortable soft grips that help make every day writing
tasks more pleasant.” (www.target.com);

• “Comfortable non-slip rubberized grip.” (Duluth Trading Co. web site);

• “Camo Pop a Point Pencil W/ Grip” and “Grips have been added to the
barrel for writing comfort.” (www.usschoolsupply.com); and

• “Slim, lightweight automatic pencil with ridged finger grips” and
“Sharplet-2 Mechanical Pencil features a slim, lightweight barrel with
ridged finger grips for more comfort and control.” (www.amazon.com).

The Examining Attorney argues that this third-party retailer evidence shows that

“the word ‘grip’ at best merely describes a feature or characteristic of writing

instruments because it appears in the section of the web sites that supplies customers

with information about the product. Furthermore, the quality and features or

characteristics of the ‘grip’ or ‘grips’ are touted (e.g. ‘comfortable,’ ‘soft,’ ‘ridged,’

etc.)”.8 Additionally, the Examining Attorney contends that this evidence indicates

that a grip is a primary component of writing instruments because the quality and

features or characteristics are promoted as features or benefits to consumers.9

Finally, the Examining Attorney maintains that the addition of the laudatory word

SUPER to the merely descriptive term GRIP results in a composite mark that is itself

merely descriptive of Applicant’s identified goods.10

8 Examining Attorney’s Appeal Brief, p. 3, 6 TTABVUE 3.
9 Id.
10 Id.

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Serial No. 79214692

In traversing the refusal, Applicant argues that (1) its applied-for mark is

suggestive, not descriptive, of the identified goods; (2) the combination of the terms

SUPER and GRIP creates a unitary mark; (3) the mark does not describe a “principal

component” of the identified goods because consumers are most likely to understand

the term GRIP to mean “a strong and tenacious grip” rather than use a less common

definition of the term GRIP to derive a meaning from Applicant’s mark; (4) the term

GRIP could carry different meanings and consumers could interpret its meaning

differently in relation to Applicant’s goods; (5) even if consumers do cycle through the

various definitions of the term GRIP, that process in and of itself would reflect the

very type of advanced thought and perception that separates a descriptive mark from

a suggestive one; (6) consumers may not necessarily know what a grip is in relation

to writing instruments; and (7) the USPTO has previously allowed other GRIP-

formative marks for goods similar or identical to Applicant’s to register without a

disclaimer of the term “grip.”11 Additionally, Applicant requests that the Board

resolve any doubt as to whether Applicant’s mark is

descriptive in Applicant’s favor and allow the application to proceed to publication.12

In support of its arguments, Applicant submitted copies of twelve third-party

registrations of GRIP-formative marks on the Principal Register for goods identical

or similar to Applicant’s identified goods, in which the term GRIP is not deemed

11 Applicant’s Appeal Brief, pp. 4-11, 4 TTABVUE 5-12.
12 Id. at p. 12, 4 TTABVUE 15.

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Serial No. 79214692

merely descriptive, and is not disclaimed.13 The third-party registrations are

identified in the chart below.

Registration No. Mark Relevant Goods

2116495 COMFORT GRIP Writing instruments,
namely, pens and pencils
2658049 COMFORT GRIP Artist brushes; cosmetic
brushes
3035333 ART GRIP Colored pencils

(ART disclaimed)
3058853 ART GRIP Writing implements,
AQUARELLE Pens, pencils, colored
pencils, black lead
(ART or AQUARELLE pencils, artist pencils,
disclaimed) ball-point pens, fiber tip
coloring pens, technical
drawing pens, fountain
pens
2470196 BIC MATIC GRIP Writing instruments,
namely, mechanical
pencils
2780401 CLASSIC GRIP Pens and highlighters

2139265 GREAT GRIP14 Artists’ brushes

2182621 GREAT GRIPS pencils

1914921 DR. GRIP Writing instruments,
namely, pens and
mechanical pencils
2581140 Ball point pens,
mechanical pencils,
writing instruments
4500499 DR. GRIP Writing instruments,
PUREWHITE namely, pens and pencils.

13 August 28, 2018 Response to Office Action, TSDR pp. 10-22.
We note that Registration Nos. 2139265 and 2182621 for the marks GREAT GRIP and
14

GREAT GRIPS, respectively, are owned by the same registrant.

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Serial No. 79214692

Registration No. Mark Relevant Goods

4500499 DR. GRIP FULLBACK Writing instruments,

namely, pens and pencils

In further support of its arguments, Applicant also cites to numerous cases where

the Board has found the subject marks suggestive and not descriptive.15

IV. Analysis

We initially find that the term “SUPER” is a laudatory term, as acknowledged by

Applicant,16 and that said term has been held to be descriptive. See In re Positec Grp.

Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013) (SUPERJAWS is merely descriptive of

“machine and hand tools, including ‘jaws’ for precision clamping’ and ‘metal vice

jaws.”’); see also 1 J. MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION § 11:17 (5th ed. 2019) (laudatory terms are “regarded as being

descriptive.”).

The task before us then is to determine whether the combination of the term

15 Applicant also cites to several non-precedential Board decisions in support of its
arguments. Although parties are permitted to cite to any Board decision, citations to non-
precedential decisions is not encouraged and are nonetheless not binding on the Board. See
In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018)
(“Board decisions which are not designated as precedent are not binding on the Board, but
may be cited and considered for whatever persuasive value they may hold.”); In re Morrison
& Foester LLP, 110 USPQ2d 1423, 1427, n.6 (TTAB 2014) (“Although parties may cite to non-
precedential decisions, the Board does not encourage the practice.”); In re Luxuria s.r.o., 100
USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but
they are not binding on the Board and because they have no precedential effect, the Board
generally will not discuss them in other decisions); see also TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) § 1203.02(f) (2019). Accordingly, we have given
these non-precedential Board decision little, if any, consideration in our analysis.
16 Applicant’s Appeal Brief, p. 6, 4 TTABVUE 9.

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Serial No. 79214692

SUPER with the word GRIP renders the composite mark merely descriptive of

Applicant’s identified goods. The Board’s decision in In re Phillips-Van Heusen Corp.,

63 USPQ2d 1047 (TTAB 2002) is instructive. In Phillips-Van Heusen, the Board

reviewed seven of its prior decisions involving SUPER-formative marks, i.e., SUPER

BLEND, SUPER BUY, SUPER GEL, SUPERHOSE!, RALSTON SUPER SLUSH,

SUPER COLLINEAR, and SUPER IRON. Id. at 1051-52. Following a review of these

cases, the Board then distilled an analogous “general proposition” concerning the

mark SUPER SILK for shirts made of silk-like fabric (the subject mark) by stating

that:

if the word ‘super’ is combined with a word which names the goods or
services, or a principal component, grade or size thereof, then the
composite term is considered merely descriptive of the goods or services,
but if such is not strictly true, then the composite mark is regarded as
suggestive of the products or services.

Id. at 1052. (emphasis added).

Applying the guidance set forth in the Phillips-Van Heusen decision, we must now

determine whether the term GRIP constitutes a word which names Applicant’s goods,

or a principal component, grade or size thereof, so that its combination with the

laudatory term SUPER would render Applicant’s composite mark merely descriptive.

Based on the evidence of record, including the excerpts from Applicant’s own

website, we find that the term GRIP does identify a principal component of

Applicant’s writing instruments. As noted by the Examining Attorney and as

demonstrated by the record, Applicant’s own website touts “the grip” of its writing

instruments by informing potential consumers that its writing instrument’s “grip

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Serial No. 79214692

has been designed for a more comfortable hold,” and that Applicant’s writing

instrument is “[a]n ergonomic pen with a rubber grip to ensure better control and

a better writing comfort!” (emphasis added). Thus, it can be reasonably assumed that

the average consumer of Applicant’s writing instruments will understand the

significance of the word “GRIP” to refer to a principal component of Applicant’s goods.

As to Applicant’s arguments in traversing the refusal, we find them unpersuasive.

With regard to Applicant’s argument that the term GRIP may have multiple

meanings, that fact alone is not controlling to the issue of whether Applicant’s

composite mark is merely descriptive of Applicant’s identified goods. In re Franklin

Cnty. Historical Soc’y 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest,

Ltd., 204 USPQ 591, 593 (TTAB 1979)); TRADEMARK MANUAL OF EXAMINING

PROCEDURE (“TMEP”) § 1209.03(e) (October 2018). “It is well settled that so long as

any one of the meanings of a term is descriptive, the term may be considered to be

merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB

2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).

Applicant’s argument that consumers may not know what a grip is in relation to

writing instruments is also unavailing. “Whether consumers could guess what the

product [or service] is from consideration of the mark alone is not the test.” In re Am.

Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). As already noted, determining the

descriptiveness of a term is done in relation to an applicant’s goods, the context in

which the mark is being used, and the possible significance the mark would have to

the average purchaser because of the manner of its use or intended use. See In re The

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Serial No. 79214692

Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer AG, 82

USPQ2d at 1831); TMEP §1209.01(b). Further, “[a] mark may be merely descriptive

even if it does not describe the ‘full scope and extent’ of the applicant’s goods or

services.” In re Oppedahl & Larson LLP, 71 USPQ2d at 1371 (citing In re Dial-A-

Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir.

2001)); TMEP §1209.01(b). It is sufficient if a mark describes only one significant

function, attribute, or property. In re The Chamber of Commerce of the U.S., 102

USPQ2d at 1219; see also In re Oppedahl, 71 USPQ2d at 1371.

Here, the evidence of record demonstrates that the grip component of both

Applicant’s writing instruments, as well as writing instruments provided by third

parties, is often touted as a significant feature or characteristic of such goods.

Accordingly, a potential consumer of writing instruments will understand the

significance of the word “GRIP” in Applicant’s proposed mark.

We next turn to Applicant’s argument that because the USPTO has previously

allowed other GRIP-formative marks to register for writing instruments without a

disclaimer of the word “grip,” the term “grip” cannot be viewed as descriptive of

Applicant’s goods. Applicant’s third-party registration evidence is unpersuasive.

Unlike Applicant’s mark, several of these marks, particularly the DR. GRIP-

formative marks, arguably are unitary in nature. Although some of the third-party

registrations submitted by Applicant appear to show that the USPTO has allowed

the registration of certain marks that include the term GRIP to be registered for

writing instruments or paint brushes without a disclaimer of said term, our desire

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Serial No. 79214692

for consistency with the decisions of prior examining attorneys must yield to proper

determinations under the Trademark Act and rules, as well as the evidence of record.

See In re Shabby Chic Brands, LLC, 122 USPQ2d 1139, 1145 (TTAB 2017) (citing In

re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)). The

Board must assess each mark on its own facts and record. In re Nett Designs Inc., 236

F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). As the Board has previously

stated:

It is axiomatic that we must decide each case on its own merits. The bare
fact that the USPTO allowed the marks in the referenced third-party
registrations to register is of little persuasive value and does not dictate
the result in this case nor does it rebut our finding that LITTLE
MERMAID is descriptive in the context of this mark. When a mark is
refused registration, and the applicant appeals, we must decide the case
based on the record in that case in accordance with the governing
statutory standard. We are not estopped or disqualified from applying
the statute because, in a prior application which we did not review (and
could not have), an examining attorney (or attorneys) may have
overlooked a relevant statutory provision and, perhaps erroneously,
allowed an application to register.

In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1800 (TTAB 2017).

Moreover, the small number of probative third-party registrations submitted by

Applicant is by no means overwhelming so as to demonstrate that the term “grip” is

suggestive of writing instruments or that the mere descriptiveness refusal is contrary

to any established USPTO practice. Further, Applicant’s reliance on various cases it

cites in its brief where the Board found particular marks suggestive, rather than

descriptive, is misplaced. None of those decisions concerned marks that included

either the term SUPER or GRIP. As such, these decisions are inapposite to the issues

before us.

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V. Conclusion

We have carefully considered all arguments and evidence of record. Based on the

record, we conclude that Applicant’s mark, in its entirety, is merely descriptive of

Applicant’s identified goods since the mark merely describes a principal component

of the goods in a laudatory fashion. We further find that the combination of the terms

“SUPER” and “GRIP” does not create a non-descriptive or incongruous meaning.

Instead, we find that each component retains its merely descriptive or laudatory

significance in relation to Applicant’s identified goods, the combination of which

results in a composite mark that is itself merely descriptive.17

Decision: The refusal to register Applicant’s mark on the

Principal Register under Section 2(e)(1) of the Trademark Act on the ground that the

mark, in its entirety, is merely descriptive of Applicant’s identified goods is affirmed.

17Although not argued by either Applicant or the Examining Attorney, we also find that the
stylization or font of the lettering in Applicant’s mark is not so distinctive that it would
obviate our finding of mere descriptiveness. Cf. In re Cordua Rests., Inc., 118 USPQ2d at
1639-40 (stylized font display of the generic name CHURRASCOS for restaurants that
specialize in churrascos-style steak was not so unusual that it created a separate impression);
In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012) (display of generic term was
not distinctive enough to create a commercial impression apart from the word itself).

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