Thursday, February 02, 2006

TTAB Shocker: "SUPER" Not Merely Descriptive of Vehicle Lights

In a confounding, perplexing, and downright flummoxing decision, the Board reversed a Section 2(e)(1) refusal to register the mark SUPER, finding it not merely descriptive of vehicle lights. In re Truck-Lite Co., Serial No. 76532510 (January 26, 2006) [not citable].

The Examining Attorney relied on a dictionary definition, on disclaimers in third-party registrations, and on third-party Supplemental Registrations, in maintaining that SUPER "merely describes that applicant's vehicle lighting products 'are of a higher quality or are superior to similar products on the market.'"

Applicant Truck-Lite argued that the mark is suggestive and not merely descriptive because it does not immediately convey any particular idea about or reveal any characteristic of the goods, because the term is "not normally associated with lighting products for vehicles," and because others in the field have neither used the term nor need to use it.

After reviewing the cases cited by the PTO and by applicant, "as well as other Board decisions," the Board distilled the following: "in general, if the word 'super' in a mark is combined with the generic name of the goods, or if the goods come in various grades or sizes, then the mark is merely descriptive rather than suggestive." Here, the Board acutely pointed out, SUPER is not combined with the generic name of the goods, nor is there evidence that lighting products come in various sizes or grades, nor evidence that "super" has been used as a "descriptive designator" in the field.

The Board then found SUPER to be "suggestive and not merely descriptive," observing that "[t]here is a certain ambiguity about the mark." "Some thought or imagination would be required on the part of prospective purchasers in order to perceive any significance of the mark as it relates to applicant's goods."

As to the third-party registrations cited by the PTO, the Board "readily" conceded that "they tend to show that in the past the Trademark Examining Operation has viewed the term 'super' to be merely descriptive for certain goods and services. However, we note that none of the third-party registrations cover goods of the type involved in this appeal."

The Board therefore reversed the refusal.

TTABlog comment: Why is the word SUPER when joined with a generic term deemed to be descriptive, but not descriptive when the generic term is missing? So this means that had applicant sought to register SUPER LIGHT, the word SUPER would be descriptive. But how is the mark SUPER any less descriptive than SUPER LIGHT? To a customer who picks up a package containing a light, don't the marks SUPER and SUPER LIGHT convey exactly the same laudatory meaning? How can one be descriptive and the other not?

What is particularly irksome about this decision is the failure of the Board to consider the laudatory nature of the term. It's as if the "laudatory" case law didn't even exist. Instead, the Board looked for a mechanical rule to apply to the case, not bothering to make a considered analysis.

Thank goodness the decision is not citable.

TTABlog note: The year 2006 is starting off with a bang! Already we have five citable decisions from the Board, and in the SUPER decision we have our second strong candidate for this year's "Ten Worst" list.

Text Copyright John L. Welch 2006.


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