Monday, September 16, 2013

Precedential No. 37: TTAB Affirms Mere Descriptiveness Refusal of SUPERJAWS for Machine and Hand Tools

The Board affirmed a Section 2(e)(1) refusal to register the mark SUPERJAWS, finding it merely descriptive of machine tools and hand tools, including jaws and metal vice jaws. Examining Attorney Alyssa Paladino Steel and the applicant pointed to numerous third-party registrations for "super-"formative marks in which the word "super" was or was not deemed merely descriptive, the PTO claiming that "super" is laudatory and the applicant claiming that "super" is at most suggestive. In re Positec Group Limited, 108 USPQ2d 1161 (TTAB 2013) [precedential].

The Board first noted that although applicant's identification of goods includes tools other than "jaws" or gripping devices, a mark is deemed merely descriptive under Section 2(e)(1) if it describes even one of the identified goods.

"Super-"formative marks have been discussed in a number of precedential TTAB decisions, and applicant and the Examining Attorney seemingly agreed that there is no per se rule as to how the USPTO treats the word "super." The Board found helpful guidance in In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002), where the Board affirmed a Section 2(e)(1) deceptive misdescriptiveness refusal of SUPER SILK for "shirts made of silk-like fabric:"

A general proposition which may be distilled from the foregoing cases is 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.

The distinction made in Phillips-Van Heusen "explains well the difference in result" between many of the "Super-"formative marks listed by applicant and the Examining Attorney. The marks cited by applicant were either unitary marks in which disclaimer of "super" would not be required, or, for registrations issuing after Phillips-Van Heusen, comprised the word "Super" followed by a suggestive term (e.g., SUPER STRAP, SUPER BRITE, SUPER EDGE). In substantially all of the registrations cited by the Examining Attorney, the second term in the composite mark "names the goods," and therefore the registrations included a disclaimer of "Super" or a Section 2(f) claim of acquired distinctiveness, or resided on the Supplemental Register.

Applicant feebly argued that the term SUPERJAWS will immediately bring to mind connotations of Superman or some other superhero, rather than a laudatory reference to its goods. The Board, however, found no support for this argument in the evidence of record. Instead, it concluded that consumers would readily understand that the applied-for mark "describes a superior vice system for grasping and holding work pieces."

And so it affirmed the mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog note: I think the word "super" should always be deemed merely descriptive. Better yet, there should be a new refusal: Section 2(t): mere triteness.

Text Copyright John L. Welch 2013.


At 9:36 AM, Anonymous Anonymous said...

If "triteness" was a grounds for refusal, the register would be much smaller. So many marks with "PLUS", "SUPER", "FUN", and other meaningless terms carrying descriptive/generic terms.

At 9:42 AM, Anonymous ian said...

Why was this precedential? I have trouble understanding why some TTAB decisions are precedential and some aren't.

At 10:33 AM, Blogger Pamela Chestek said...

I vote for 2(u) too, for words that are ubiquitous.

At 11:05 AM, Anonymous Orrin A. Falby said...

What happen to the idea that marks should be analyzed on a case-by-case basis? Are you saying that there could never be a sitaution where SUPER is used arbitrarily or as part of a composite where the meaning of composite is different than the component parts? I would be very worried if the statute is amended as proposed.

At 11:17 AM, Blogger John L. Welch said...

Orrin, I was being hyperbolic.

Here's a good "super-"formative trademark:

Reg. No. 4081412


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