TTAB - Trademark Trial and Appeal Board - *1 IN RE PENCILS, INC. Serial No. 638,299 October 28, 1988

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 638,299

October 28, 1988


Laurence R. Brown and Laurence Brown & Associates for applicant



P. Elaine Parthemos



Trademark Examining Attorney



Law Office 7



(Lynne Beresford, Managing Attorney)



Before Sams, Rice and Quinn






Opinion by Quinn






 An application has been filed by Pencils, Inc. to register the mark shown below for "retail stationery and office supply services." [FN1]






 Registration has been finally refused in view of applicant's failure to comply with a final requirement to disclaim the term "pencils" apart from the mark as shown. It is the Examining Attorney's position that the term "pencils" is merely descriptive, under Section 2(e)(1) of the Trademark Act, of applicant's services, which include the sale of pencils, and that, as such, it must be disclaimed under Section 6(a). The Examining Attorney relies on prior case law in support of her argument that no extensive thought is required by purchasers "to make the descriptiveness link between pencils and retail stationery and office supply services."



 Applicant, on the other hand, contends that, at most, the term "pencils" is suggestive of its services. Applicant asserts that the sale of pencils is not a primary feature of its services but rather that pencils constitute only an insignificant product line sold by applicant. Applicant's appeal brief is accompanied by Exhibits A-H, some of which are now being submitted for the first time. While evidence not made of record during prosecution of the application generally will not be considered by the Board, the Examining Attorney has made no objection to the evidence and, in fact, addresses the evidence, in part. Thus, the exhibits have been considered.



 Section 6(a) of the Trademark Act provides, in part, that the Commissioner may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. As noted in Section 904.01(a) of the Trademark Manual of Examining Procedure (1986), the basic purpose of a disclaimer is to make of record, if it might otherwise be misunderstood, that a significant element of a composite mark is not being exclusively appropriated, apart from the composite. We believe that the term "pencils", when applied to applicant's services, is merely descriptive and conclude that the Examining Attorney properly exercised her discretion in requiring a disclaimer of this term.



 In determining whether a term is merely descriptive of the services in connection with which that term is used, we must analyze the term in relation to the services recited in the application, the context in which it is used and the possible significance it would have to the recipient of such services. See, e.g., In re Broco, 225 USPQ 227 (TTAB 1984).



 In the present case, applicant is in the business of retail sales of stationery and office supplies. The specimens of record are, in part, copies of a sales flyer which shows that applicant sells a variety of stationery and office supplies. The flyers list products ranging from paper clips to wooden desks. While pencils are not listed in this particular flyer and applicant asserts that pencils are not a primary feature of its services, applicant states in the appeal brief that pencils are "an insignificant one of many office supply product lines retailed by applicant."



  *2 We agree with applicant that the sale of pencils is not the central characteristic of applicant's services. Nevertheless, pencils are significant stationery/office supply items that are typically sold in a store of applicant's type, that is, a stationery and office supply store. [FN2] While applicant's stores may carry a variety of products, pencils are one of those products, and, thus, the term "pencils" is merely descriptive as applied to retail stationery and office supply services.



 Applicant, in arguing against the refusal, places heavy reliance on prior decisions in the cases of Quill Corp. v. Quill Printing Corp., 215 USPQ 986 (N.D.Ill.1982) and In re The Registry Hotel Corp., 216 USPQ 1104 (TTAB 1983). The Quill case is easily distinguished given the fact that the term "quill" evokes the image of an antiquated writing instrument, an item unlikely to be found in an office supply store. [FN3] The instant case also is distinguishable from the holding in Registry Hotel. In that case, the Board found that the mark "LA CHAMPAGNE" was not descriptive of restaurant services; that, while champagne might have been available for sale in applicant's restaurant, sale of champagne was only incidental to the rendering of applicant's restaurant services; and that, in any event, "La Champagne" was the name of a French province and, thus, suggestive of French cuisine. We believe, on the other hand, that pencils are more than just an incidental stationery item in an office supply store. Pencils are items used every day in the office setting.



 Applicant additionally argues that the matter sought to be registered corresponds to applicant's corporate name and, as such, functions as an indicator of origin rather than being merely descriptive. The fact that a mark may be the same as or an adaptation of the applicant's corporate name does not remove the mark from the proscriptions of Section 2(e)(1). See, e.g., In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984); In re The Phone Company, Inc., 218 USPQ 1027 (TTAB 1983); and In re Computer Store, Inc., 211 USPQ 72 (TTAB 1981).



 Applicant also has pointed to third-party registrations of marks for office supply services where the registered marks identify goods that may be sold in an office supply store, as for example, Registration No. 1,438,390 of "STAPLES" for "office supply store services." These registrations are of little value in determining the issue of descriptiveness in this case since each case must be determined on its own facts. We are not privy to the records which supported registrations in those cases. See: In re Inter-State Oil Co., Inc., 219 USPQ 1229 (TTAB 1983). In any event, we are not bound by an Examining Attorney's determination of registrability of another mark. Moreover, one can argue that the mark "STAPLES" has a double entendre and, therefore, is not merely descriptive.



  *3 With respect to applicant's argument regarding resolving any doubt as to descriptiveness in its favor, we agree with the general proposition. The problem for applicant in this case, however, is that we entertain no doubts as to the descriptiveness of the term "pencils" as applied to appilcant's services.



 In affirming the requirement of a disclaimer of the term "pencils", we recognize that the sale of pencils is not the central characteristic of applicant's services. Thus, in reaching our determination, we do not rely on the line of cases cited by the Examining Attorney. See, e.g., In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) and cases cited therein ["LA LINGERIE" held incapable of distinguishing applicant's retail store services in the field of lingerie]; and In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) ["WICKERWARE" held incapable of functioning as a service mark to identify applicant's mail-order and distributorship services]. In those cases, the matter sought to be registered identified the product featured in the offer of services. The same cannot be said in this case, that is, applicant's stationery and office supply stores do not specialize in or primarily feature the sale of pencils. Accordingly, and considering our finding of descriptiveness, we are of the view that the term "pencils" would not be precluded registration under Section 2(f) with the proper showing. [FN4]



 Inasmuch as the term "pencils" is merely descriptive of an item that is sold in stationery and office supply stores such as applicant's, it must be disclaimed apart from the mark as shown.



 Decision: The requirement of a disclaimer of the term "pencils" is affirmed and, in the absence of a disclaimer, registration is refused. If a disclaimer is filed within thirty days of the mailing date of this decision, we will set aside this decision and the mark will be published for opposition.



J. D. Sams



J. E. Rice



T. J. Quinn



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 638,299, filed January 5, 1987. The lining shown in the drawing is a feature of the mark and does not indicate color.



FN2. Applicant argues that the Examining Attorney has failed to present evidence that pencils are sold in the claimed field of services. We believe that the fact that pencils are typically sold in stationery and office supply stores is so obvious that no proof thereof is necessary. Applicant appears to admit as much in its August 4, 1987 amendment wherein applicant states that "[m]erely because 'pencils' identifies a product typically sold in office supply stores does not render the word 'pencils' descriptive of applicant's services."



FN3. For the same reason, Registration No. 1,137,326 of "QUILL" and design for office supply mail order catalog sales services is not probative.



FN4. Proof of substantially exclusive and continuous use of the term as a mark by applicant in commerce for the 5 years next preceding the date of the filing of the application for its registration may be accepted as prima facie evidence that the mark has become distinctive as applied to applicant's goods in commerce.


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