Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE THE PAINT PRODUCTS COMPANY, INC.
Serial No. 504,654
July 8, 1988
Armand Cifelli, James R. Frederick and Kramer, Brufsky & Cifelli, P.C. for applicant
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Sams, Simms and Seeherman
The Paint Products Company, Inc. has appealed from the Trademark Examining Attorney's final refusal to register its mark 'PAINT PRODUCTS CO.' for goods described as 'interior and exterior paints and coatings, namely, alkyd, oil, latex, urethane and epoxy based paints and coatings.' [FN1] Applicant has disclaimed the word 'PAINT' apart from the mark as a whole [Section 6 of the Trademark Act] and has claimed that its mark 'PAINT PRODUCTS CO.' has become distinctive through use in commerce, thus qualifying the mark for registration under the provisions of Section 2(f) of the Trademark Act. The Examining Attorney refused registration, under Section 2(e)(1) of the Trademark Act, on the grounds that applicant's mark is so highly descriptive of the goods to which it is applied that it cannot function to identify and distinguish applicant's products from the like product of others. In so holding, the Examining Attorney rejected the evidence submitted by applicant in support of its claim under Section 2(f), arguing that evidence of distinctiveness is of no avail where an asserted mark is so highly descriptive that it cannot function as a source indicator.
In support of her holding that applicant's mark is unregistrable, the Examining Attorney offered in evidence excerpts from stories that appeared in various periodicals. These excerpts were obtained through use of Mead Data's LEXIS/NEXIS data base. The Examining Attorney sought to locate all stories in the LEXIS/NEXIS data base in which the words 'paint products' appeared. With the search so framed, the system identified 131 stories. The Examining Attorney made of record excerpts from seven of those stories. All seven stories show generic use of the term 'paint products.'
In support of its claim that its mark 'PAINT PRODUCTS CO.' has become distinctive of its goods through use in commerce, applicant offered a series of affidavits, including the affidavits of its president, its chairman of the board, and ten of its customers.
Most of applicant's submission in support of its claim under Section 2(f) was made in connection with the affidavit of its President, Stuart Schloss. Mr. Schloss stated that applicant has been a family-owned company since it began doing business as a retail paint store in Connecticut in 1934. Applicant now has twelve stores throughout Connecticut, which stores distribute products not only in Connecticut but in adjacent states. Applicant markets private label paints and coatings under the mark 'PAINT PRODUCTS CO.' For the ten-year period ending December 1985 (the date of Mr. Schloss's affidavit), Mr. Schloss stated that applicant had sold more than 600,000 cans of paint bearing its mark with a retail value of more than $6,000,000. Also accompanying his affidavit were sample advertising materials, including (i) newspaper inserts which, he stated, are issued four to six times per year through newspapers with a combined circulation of more than 900,000, (ii) single-page newspaper advertisements that are issued once or twice per week, and (iii) circulars sent to applicant's 2300 industrial accounts. Mr. Schloss stated also that applicant had advertised its goods by means of television, radio, billboards, and trucks on which the mark appears and had placed advertisements in telephone directories in Connecticut. He estimated that applicant had spent $500,000 per year in advertising and promoting its products featuring the words 'PAINT PRODUCTS CO.'
*2 Applicant offered the affidavit of its Chairman of the Board, Sidney Schloss, who stated that he had been with applicant since 1934, had reviewed the affidavit of Stuart Schloss, his son, and that all statements made by Stuart Schloss in his affidavit were accurate.
The ten customer affidavits offered by applicant were from individuals in the painting, wallpapering, and/or contracting business. These individuals had been customers of applicant's for periods ranging from eight to forty-five years. All ten affiants stated that they recognized 'PAINT PRODUCTS CO.' as a trademark identifying applicant as the source of the goods bearing that mark.
The Examining Attorney and applicant have thoroughly briefed the issue presented by this appeal. There can be no doubt that 'paint products' is a generic term for applicant's goods and would not, standing alone, be registrable as a trademark for those goods. Applicant concedes, moreover, that 'PAINT PRODUCTS CO.' is descriptive of its paints and coatings. For her part, the Examining Attorney concedes that 'PAINT PRODUCTS CO.' is not a generic name for paints and coatings. The issue presented, then, is whether 'PAINT PRODUCTS CO.' is a term that, while not the generic name of applicant's products, is so highly descriptive, as applied to applicant's paints and coatings, that it cannot function as a trademark. A second issue is whether, if 'PAINT PRODUCTS CO.' can function as a mark for applicant's goods, that admittedly descriptive term has become distinctive, within the meaning of Section 2(f) of the Trademark Act, through its use and promotion in commerce.
As the Examining Attorney correctly argues, when confronted with marks consisting of generic or highly descriptive terms coupled with entity designations such as 'Inc.', the Board has found the resulting designations incapable of functioning as service marks. In re Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) ['INDUSTRIAL RELATIONS COUNSELORS, INC.' held so highly descriptive of 'educational services, namely, conducting seminars and research in the field of industrial relations' as to be incapable of exclusive appropriation and registration as a service mark]; In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) ['OFFICE MOVERS, INC.' for 'moving services, namely the moving of office facilities, warehouse facilities, industrial plant facilities (etc.)' held so highly descriptive as to be incapable of distinguishing applicant's services in commerce]. Applicant seeks to distinguish these holdings of the Board by arguing that the marks involved in those cases were applied to services, rather than goods, and that its mark, 'PAINT PRODUCTS CO.,' is used in conjunction with goods rather than services. In answer to that argument, the Examining Attorney contends that the abbreviation 'CO.', standing for the word 'COMPANY', when added to the words 'PAINT PRODUCTS', does not serve to create a mark which can serve to identify and distinguish the source of applicant's paints and coatings any more than it could serve to identify and distinguish retail paint store services, because 'PAINT PRODUCTS CO.' is 'clearly applicable to any company which sells or produces paint products.' (Examining Attorney's appeal brief p. 3). We agree and affirm the refusal to register.
*3 Citing In re Merrill Lynch, Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987), applicant argues that its mark is registrable because the Examining Attorney's evidence does not amount to convincing proof that the public uses the term 'PAINT PRODUCTS CO.' as a generic or common descriptive term for paints and coatings like those marketed by applicant under the mark. Applicant also points to the Board's decision in In re Failure Analysis Associates, 1 USPQ2d 1144 (TTAB 1986), where the Board found the mark 'FAILURE ANALYSIS ASSOCIATES' for 'consulting services in the field of mechanical, structural, matallurgical, and metal failures, fires and explosions, (etc.)' capable of functioning as a service mark and registrable under the provision of Section 2(f).
In Merrill Lynch, the U.S. Court of Appeals for the Federal Circuit reversed the decision of the Board holding the mark 'CASH MANAGEMENT ACCOUNT' a generic term for financial services. The Court there found that the evidence of public perception contained in the material retrieved via the LEXIS/NEXIS data base was not convincing that the term 'CASH MANAGEMENT ACCOUNT' was generic. Many of the articles retrieved through use of the LEXIS/NEXIS data base referred specifically to services offered by Merrill Lynch under the designation 'CASH MANAGEMENT ACCOUNT.' Because the evidence showed a 'mixture of uses' of the term 'CASH MANAGEMENT ACCOUNT', the Court concluded that there was insufficient evidence for a finding that the public recognized 'CASH MANAGEMENT ACCOUNT' as a nonproprietary, generic term for the services rendered by applicant under that designation. Here, unlike the record in Merrill Lynch, the LEXIS/NEXIS evidence submitted by the Examining Attorney reveals no proprietary uses of 'PAINT PRODUCTS CO.' We should add quickly that neither does it reveal generic or descriptive uses of 'PAINT PRODUCTS CO.' There is, in fact, little direct evidence before us of the likely public perception of the term 'PAINT PRODUCTS CO.' as applied to applicant's goods.
The Examining Attorney suggests that we need not examine the evidence submitted by applicant in support of its Section 2(f) claim in determining public perception of applicant's mark, that is, determining whether applicant's mark is so highly descriptive that it cannot function as a trademark. In support of that position, she cites In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986), which, in turn, cites a number of precedents of the Court of Customs and Patent Appeals and of this Board for the proposition that, where a term is so highly descriptive that it is incapable of becoming distinctive, registration must be refused no matter what evidence of alleged distinctiveness is adduced. With that proposition we have no quarrel. Thus, if we find applicant's mark so highly descriptive that it cannot function as a trademark, the evidence of distinctiveness submitted by applicant under Section 2(f) will be of no avail on the ultimate issue of registrability. On the other hand, in deciding whether, in the first instance, applicant's mark can function as a trademark, we are obliged to consider all the evidence of record touching on the public perception of the term 'PAINT PRODUCTS CO.' That evidence includes the affidavits from applicant's customers, representing the perception of ten individuals concerning the meaning of the words 'PAINT PRODUCTS CO.' Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words 'PAINT PRODUCTS CO.' in conjunction with paints and coatings. For us, the unambiguously descriptive meaning of the words that make up applicant's mark is more convincing evidence of public perception than the customer affidavits or other evidence offered by applicant.
*4 Each of the words that compose applicant's mark has a clear, unequivocal meaning; when combined, those words mean, just as unequivocally, a company specializing in paint products. The U.S. Court of Appeals for the Federal Circuit has held that, where genericness is the issue,
. . . the PTO has satisfied its evidentiary burden if . . . it produces evidence including dictionary definitions that the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound. In re Gould Paper Corp., _______ F.2d _______, 5 USPQ2d 1110 (Fed. Cir. 1987).
We see no reason that the burden should be any different where the public perception of a highly descriptive term, rather than a generic term, is involved. Here, we believe the Examining Attorney's LEXIS/NEXIS evidence, combined with the obvious significance of the abbreviation 'Co.', establish that purchasers encountering the words 'PAINT PRODUCTS CO.' on the goods for which registration is sought would view those words not as a trademark, but in their ordinary dictionary sense: a company that sells paint products. Moreover, because it describes the goods of any company selling such products, the phrase should remain available for applicant's competitors. Cf. In re Phone Co., Inc., 218 USPQ 1027 (TTAB 1983) [highly descriptive term 'THE PHONE COMPANY' 'would . . . equally describe [telephone] equipment emanating from one of applicant's competitors.'].
We hold, furthermore, that 'PAINT PRODUCTS CO.' is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company. Cf. In re Wickerware, 227 USPQ 970 (TTAB 1985) [mark 'WICKERWARE' held not capable of functioning as a service mark for mail order distributorship services in the field of wicker products, the Board finding 'WICKERWARE' is as incapable of distinguishing the services of selling wicker as of distinguishing goods made of wicker]; In re Bonni Keller Collections, Ltd., 6 USPQ 1224 (TTAB 1987) [mark 'LA LINGERIE' (French equivalent of English 'lingerie') held incapable of functioning as either a trademark for undergarments or a service mark for retail clothing store services]; In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) [mark 'HALF PRICE BOOKS RECORDS MAGAZINES' held apt descriptive term for retail store services featuring the sale of goods at half price and less]. We distinguish the present case from In re Failure Analysis Associates, supra, in that the word 'ASSOCIATES' was not shown there to be a common entity designation such as the designation 'CO.' in the mark now before us.
Even had we found applicant's mark not so highly descriptive that it cannot function as a trademark, we would nonetheless affirm the refusal to register on the ground that the evidence submitted in support of the Section 2(f) claim is insufficient to convince us that such a highly descriptive term has become distinctive through use in commerce. While there has been use of the term on applicant's products since 1957 and not insubstantial sales and advertising of goods bearing the words 'PAINT PRODUCTS CO.,' such use alone does not convince us that ordinary purchasers of applicant's goods have come to view 'PAINT PRODUCTS CO.' as a trademark. The affidavit evidence from ten of applicant's customers, while certainly evidence tending to show acquired distinctiveness as a trademark, must be weighed against the highly descriptive nature of the words that compose the mark. To put the matter simply, that ten of applicant's customers through many years of doing business with applicant, have come to recognize applicant's trade name 'PAINT PRODUCTS CO.' as a trademark for paints and coatings is less persuasive evidence on the issue of distinctiveness than is the inherently descriptive nature of applicant's mark. Assuming 'PAINT PRODUCTS CO.' could function as a trademark, a good deal more evidence than that offered here would be necessary to establish the distinctiveness of such a term.
*5 Decision: The refusal to register is affirmed.
J. D. Sams
R. L. Simms
E. J. Seeherman
FN1. Serial No. 504,654, filed October 19, 1984.