Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CONSOLIDATED CIGAR COMPANY
Serial No. 74/272,203
April 12, 1995
Hearing: September 13, 1994
Darren B. Cohen
Trademark Examining Attorney
Law Office 13
(Craig Morris, Managing Attorney)
Before Rice, Cissel and Hohein
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Registration has been finally refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that, when used in connection with applicant's goods, the expression is merely descriptive of them. Specifically, as stated in the initial Office action, the Examining Attorney contends that "SUPER BUY"
is laudatory because it ascribes a quality of excellence or superiority to the goods. As such, it is descriptive and nondistinctive for purposes of trademark registration.
Applicant has appealed. Briefs have been filed and an oral hearing was held. We affirm the refusal to register.
In support of his position, the Examining Attorney has made of record excerpts from newspaper and magazine articles which were retrieved by his search of the DATATIMES data base. The Examining Attorney, in the final refusal, maintains that such excerpts, the most pertinent of which are set forth below (with emphasis added), demonstrate "common use of the term SUPER BUY in laudatorily describing goods or services of others":
Pork should be a super buy this year, as hog farmers predict record production.... This means attractive prices for consumers. Price should be comparable to, if not less than, last year's.--Tulsa World, February 23, 1993, Living, at C1;
"This is a preventive measure that will really save money in the long run," said ... an assistant civil engineering specialist. "Citizens are getting a super buy with this."--Seattle Times, July 21, 1992, City, at B3;
Given his scenario, O'Higgins, up 15% this year, rates 30-year T-bonds a super buy. Selling around par ($1,000), he sees a total return--yield plus capital gains--of about 34% the next 12 months.--USA Today, May 11, 1992, Money, at 04B;
The Super Bowl may no longer be such a super buy for TV advertisers.--L.A. Times, January 14, 1992, Business, at 1;
The best debut in Seattle was the 1990 Errazuriz Merlot from Chile, with its plummy fruit and nicely chiseled proportions--a super buy worth seeking out for about $8 a bottle.--Wall St. J. Europe, November 1, 1991, at 7;
I am buying shares of large North American producers of gold and am taking a fling on some "penny gold shares." In addition, I consider uncirculated U.S. Double Eagles a super buy.--Barron's, August 12, 1991, at 20;
"The stock is a super buy now.... It normally trades around $11 to $12, " said [the] ... chief financial officer of the women's apparel maker.--Wall St. J., October 11, 1990 (article headlined "Leslie Fay to Buy Back Stock"; no page citation);
*2 Or how about Coca-Cola (45)? A super buy for investors who are shy of cyclicals ........ The 16% projected rise in earnings plus ... the 3% dividend is the "real thing" in total return.--Forbes, January 23, 1989, at 116; and
"We sold less than one case per store. It was a super buy, but our customers just didn't see any need for sterling silver. They didn't want something you had to polish; they need something to eat with. I had to sell it as flatware when we had a sale at five pieces for $1."--Mississippi Business J., June 1, 1988, at 22.
Applicant, on the other hand, asserts that the expression "SUPER BUY" is suggestive rather than laudatorily descriptive of its goods. Citing In re Ralston Purina Co., 191 USPQ 237, 238 (TTAB 1976), in which the term "SUPER" in the phrase "RALSTON SUPER SLUSH" was held not to be descriptive of "a concentrate for making a slush type soft drink" because it was "not used to describe any real or specific item or characteristic or quality" of such goods, applicant likewise argues that its "SUPER BUY trademark connotes only a 'vague desirable characteristic or quality' of Applicant's products." According to applicant, because the expression "SUPER BUY" conveys only a value judgment, but without indicating any factual basis therefor, it is simply too vague to qualify as a literal description of the goods and thus should be categorized as suggestive.
Furthermore, applicant contends that classifying its mark as descriptive instead of suggestive "is contrary to the position taken by the PTO with respect to other marks that are so closely analogous to Applicant's mark that [[[there] can be no rational basis for treating Applicant's mark differently." In support thereof, applicant has furnished copies of pages from relatively recent editions of the Official Gazette showing, in particular, (i) the publication of the following marks, in connection with intent-to-use applications, for cigarettes: "PREMIUM BUY"; "POPULAR BUY"; "QUALITY BUY"; "VALUE BUY"; "GOOD BUY"; and "GREAT BUY"; [FN2] and (ii) the registration of the following mark for cigarettes: "BARGAIN BUY". [FN3]
In view of such evidence, and the numerous additional examples which accompany applicant's initial brief, [FN4] applicant urges that:
The crucial point is that the trade and consuming public, particularly in the tobacco category, are aware that there has been launched a plethora of price-value brands. The PTO itself has also reflected a recognition of this fact by its allowance of other legally indistinguishable laudatory marks. Appellant's SUPER BUY is one such brand. All are recognized as being capable of serving as a trademark and as, in fact, serving a trademark function. All are entitled to trademark protection.
There is no basis for the Examining Attorney's opinion that results in a denial of registration to Appellant of its instant laudatory, price-value mark, when other marks are being afforded registration protection that are legally indistinguishable. There is no factual underpinning that allows the Trademark Examining Attorney to [disregard] ... the prior allowed applications/registrations and rely so heavily upon the few cited non-trademark uses of "SUPER BUY" as justifying denial of protection to Appellant. Why is Appellant's mark treated so cavalierly and disdainfully as contrasted with these prior allowed/registered marks which have been determined by other (possibly even this) Examining Attorneys to be entitled to respect? Appellant submits that registrability should not be permitted to be grounded on such lack of evidence, opinion, speculation and conjecture.
*3 The approval of the other laudatory marks for registration and publication reflects a determination by the PTO that such marks are suggestive, not descriptive. As in Appellant's instant application, the goods covered by many of these approved applications (e.g., SMART BUY, PREMIUM BUY, POPULAR BUY, QUALITY BUY, VALUE BUY, GOOD BUY, GREAT BUY and BONUS BUY) are tobacco products.
Appellant's application to register its SUPER BUY mark is no different from the numerous allowed applications/registrations for a plethora of goods and services recited hereinabove. There is no rational basis to distinguish between Appellant's SUPER BUY mark and these approved marks. Clearly, there is no basis to deny Appellant protection for its SUPER BUY mark while, at the same time, permitting registration of these other marks. Like these approved marks, Appellant's SUPER BUY mark should be classified as suggestive, not descriptive.
It is well settled that a term or expression is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term or expression describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term or expression describes a significant attribute or idea about them. Moreover, whether or a term or expression is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used or is to be used in connection with those goods or services and the possible significance that the term or expression would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Classified within the category of merely descriptive designations set forth above are those which Professor McCarthy refers to as "self-laudatory terms". As explained in 1 J. McCarthy, McCarthy on Trademarks & Unfair Competition § 11.05[b] (3d ed. 1994) (footnotes omitted):
Marks that are merely "laudatory" and descriptive of the alleged merit of a product are also regarded as being "descriptive." This includes such terms as SPEEDY, FRIENDLY, DEPENDABLE, PREFERRED, DELUXE, GOLD MEDAL, BLUE RIBBON, and the like.
Since each tangible product carries with it a "psychic load" of intangible consumer psychological expectations about the product, a mark could be "descriptive" of the product itself or those intangible expectations, or both. Self-laudatory or "puffing" marks are regarded as a condensed form of describing the character or quality of the goods.
*4 In particular, as to expressions used to tout preeminence, the court in Burmel Handkerchief Corp. v. Cluett, Peabody & Co., Inc., 127 F.2d 318, 53 USPQ 369, 372 (CCPA 1942), pointed out that (emphasis added):
[J]udicial notice can be taken of expressions ... indicating that the persons or objects to which they are applied stand out preeminently above the class to which they belong by reason of some outstanding achievement or quality. That such expressions are laudatory and are intended to attract attention to persons or objects by reason of achievement or quality cannot be doubted.....
In the final analysis such expressions as we are discussing with relation to objects of trade are a "puffing of wares" and are intended to call attention to the superiority of the advertised goods. Such expressions are a condensed form of describing in detail the outstanding character or quality of the objects to which they are applied. So with the expression "Handkerchiefs of the Year". It merely in condensed fashion describes handkerchiefs having every characteristic as to material, quality and style that the best handkerchiefs should possess.
We think that the notation sought to be registered is descriptive of the character or quality of handkerchiefs. We are further of the opinion that the notation inherently cannot function as a trademark. Such a common expression which can indicate nothing but high quality surely would not be indicative of origin to the purchasing public.
Keeping the foregoing in mind, we find that the expression "SUPER BUY," when used in connection with cigars, pipe tobacco, chewing tobacco and snuff, is laudatory and merely descriptive of such products because, as observed by the Examining Attorney, "it ascribes a quality of superior value to the goods." In this regard, we judicially notice [FN5] that The Random House Dictionary of the English Language (2d ed. 1987) at 1907 defines "super" as an adjective meaning, inter alia, "of the highest degree, power, etc.[;] ... of an extreme or excessive degree[;] ... Informal. very good; first-rate; excellent [[[;] ... superfine" and at 286 lists "buy" as a noun signifying, among other things, "something bought or to be bought; purchase: That coat was a sensible buy. [;] ... a bargain: The couch was a real buy." To the same effect, Webster's Third New International Dictionary (1976) at 2292 sets forth "super" as an adjective which connotes "of a superfine grade or quality[;] ... of great worth, value, excellence, or superiority," while at 306 "buy" is listed as a noun meaning "a thing bought or to be bought[;] ... something of value at a favorable price; esp.: BARGAIN <this stock is a good--at the current asking price>".
Although, as stated in Ralston Purina, supra, "the term 'SUPER' has been held to be both descriptive and suggestive," depending upon the context in which it is used, we believe that combining such term with the word "BUY" to form the expression "SUPER BUY" results in an expression of preeminence, analogous to a grade designation, which is indicative of superior value for applicant's goods just as the terminology "SUPER STEEL RADIAL" was indicated to be descriptive of a grade designation for tires in In re General Tire & Rubber Co., 194 USPQ 491, 494 (TTAB 1977). The expression "SUPER BUY," as applied to certain tobacco products which, applicant admits, are known to the trade and consuming public to form "a plethora of price-value brands," [FN6] would immediately describe to such purchasers, without the need for any imagination, conjecture or speculation, that applicant's tobacco products are an exceptionally high value for their price. The words "SUPER" and "BUY," when joined to form the compound "SUPER BUY," have a meaning identical to the meaning which ordinary usage would ascribe to those words in combination. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed.Cir.1987).
*5 We recognize that, as stated in In re Inter-State Oil Co., Inc., 219 USPQ 1229, 1230 (TTAB 1983): "The borderline between terms that signify quality in a laudatory sense and those that do not is not easy to delineate and there are no precise rules to follow in this regard." However, decisively tipping the balance in favor of our holding that "SUPER BUY" is a laudatory expression which is merely descriptive as applied to applicant's goods are the excerpts of record from the DATATIMES data base. Such evidence, as the Examining Attorney points out, demonstrates that the expression "SUPER BUY" "has been widely adopted in common language as referring to bargains of exceptional note" and is used "in describing or identifying high value or worth in certain goods and services." Consequently, and especially to those consumers who are price-value oriented, the expression "SUPER BUY" conveys forthwith that in the segment of the marketplace in which applicant's goods would be sold, its cigars, pipe tobacco, chewing tobacco and snuff are of a superior value in relation to comparable goods. As such, "SUPER BUY" is a laudatory expression which is merely descriptive of applicant's goods. Clearly, as stated by the Board in In re Erwin, 1 USPQ2d 1665, 1667 (TTAB 1986): "The long and short of it is that common and laudatory terms of this character must remain available for the trade and competitive use to which they are so relentlessly put and, at least in the absence of demonstrated secondary meaning, cannot be accepted as registrable under the Trademark Act."
Applicant, in its reply brief, nevertheless maintains that "SUPER BUY" is suggestive since such expression simply indicates "a positive attribute without telling the consumer what that attribute is with 'any degree of particularly'," citing Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199, 1205 (TTAB 1981). [FN7] Specifically, with respect to the usages illustrated in the excerpted newspaper and magazine articles, applicant insists that:
The wording "super buy" can connote (1) that a product is inexpensive, (2) that it is of high quality for its price (even if expensive), or (3) that it is a generally desirable commodity without reference to either price or quality..... Thus, there is no "particular quality or characteristic" that is "immediately conveyed by the mark" SUPER BUY. [FN8]
The particular reason, however, as to why a product or service may be described as a "super buy" need not be indicated by the laudatory expression "SUPER BUY" since, as noted previously, such an expression is merely a condensed form of describing in detail the attributes or qualities which make the product or service an exceptional value for its kind. Burmel Handkerchief Corp. v. Cluett, Peabody & Co., Inc., supra. Stated otherwise, irrespective of why a purchaser would consider a product or service to be a "super buy," the expression "SUPER BUY" immediately describes an essential characteristic or feature, namely, the superior worth or high value of the products or services, which would be a significant influence in the purchasing decision made by a consumer. Such expression, regardless of whether it is applied to applicant's tobacco products or to other goods or services which may be touted as exceptional or the foremost of their type, accordingly is merely descriptive inasmuch as it succinctly informs potential buyers, with the requisite degree of particularity, that the product or service possesses attributes which make the purchase or selection thereof a "super buy".
*6 As to the third-party marks referred to by applicant, we simply disagree with applicant that the evidence it has submitted establishes a pattern or policy by the Patent and Trademark Office to treat laudatory terms as suggestive rather than descriptive. Almost all of the examples cited by applicant, even if arguably having some general laudatory connotation in each instance, nevertheless require the exercise of imagination, thought, mental processing or the gathering of further information in order to appreciate the significance of the marks. Such marks are therefore properly characterized as suggestive instead of merely descriptive. Although, in a few instances involving tobacco products, it may indeed be difficult to distinguish between the significance of such designations as "GOOD BUY," "PREMIUM BUY" or "GREAT BUY" and the expression "SUPER BUY," we observe that there is nothing in the record to indicate that the former terms are commonly used to tout or promote the notion of exceptional worth or superior value. In stark contrast, the evidence furnished by the Examining Attorney demonstrates that the terminology "super buy" is used in common, everyday parlance to describe something which is an excellent or unusually good purchase or bargain. The laudatory expression "SUPER BUY," particularly as applied to a line of goods to be sold in the market segment for value-priced tobacco products, has thus been shown to be merely descriptive of applicant's cigars, pipe tobacco, chewing tobacco and snuff.
Finally, as has often been stated, each case must be decided on its own merits. See, e.g., In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 221 (TTAB 1984) and In re Inter-State Oil Co., Inc., supra at 1231. While, concededly, uniform treatment under the Trademark Act is desirable, our task on this appeal is to determine whether applicant's mark is registrable based upon the factual record before us. Moreover, since we are not privy to the file records of the third-party marks which have been published and/or registered, we have no way of knowing whether any of such marks were initially refused on the ground of mere descriptiveness or ultimately issued on the basis of a showing of acquired distinctiveness under Section 2(f) of the statute, 15 U.S.C. § 1052(f). See, e.g., In re Pennzoil Products Co., 20 USPQ2d 1753, 1758 (TTAB 1991). Furthermore, as the Examining Attorney correctly (rather than "caverlierly and disdainfully," as charged by applicant) notes, a merely descriptive mark like the laudatory expression "SUPER BUY" is not registrable simply because other similar (or arguably so) marks appear on the register or in the Official Gazette. See, e.g., In re Consolidated Foods Corp., 200 USPQ 477, 481 (TTAB 1977) and In re Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977).
*7 Decision: The refusal under Section 2(e)(1) is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Ser. No. 74/272, 203, filed on May 4, 1992, which is based upon a bona fide intention to use.
FN2. Likewise, applicant also has made of record the publication of the following marks for cigarettes, all of which are the subjects of intent-to-use applications: "SMART PRICE"; "POPULAR PRICE"; "EXTRA VALUE"; "BARGAIN KING"; "VALUE PLUS"; "VALUE SAVE"; "VALUE SHOPPER"; "VALUE SENSE"; "VALUE MARQUE"; "PREFERRED STOCK" and "TOP CHOICE".
FN3. Similarly, applicant additionally has introduced pages from the Official Gazette evidencing the registration of the marks "VALUE SENSE" and "VALUE PRIDE" for cigarettes. However, in the case of registrations, copies of pages from the Official Gazette are insufficient to make the registrations properly of record since such copies are not the best evidence thereof. The proper procedure to make registrations of record is, instead, to submit copies of the actual registrations or the electronic equivalents thereof, i.e., printouts of the registrations taken from the Patent and Trademark Office's own computerized data base. See, e.g., In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3 and In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. Nevertheless, inasmuch as the Examining Attorney has treated the registrations as if they had properly been made of record, we likewise have given them consideration. See In re Melville Corp., supra.
FN4. Although such further examples were not furnished previously, applicant asks in its initial brief that they be considered, stating that:
To the extent that any references in this brief were not previously cited to the Trademark Examining Attorney, Appellant requests that the Board take judicial notice of them. In the event that the Board declines to do so, Appellant hereby requests that the Board remand the application to the Trademark Examining Attorney pursuant to Trademark Rule 2.142(d) to allow Appellant to make such references of record.
Applicant is advised, however, that the Board does not take judicial notice of either applications or registrations merely because they reside in the Patent and Trademark Office. See In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Moreover, as to the additional examples of published and registered marks furnished with applicant's initial brief, Trademark Rule 2.142(d) provides that the record in an application should be complete prior to the filing of an appeal. The Board, therefore, will ordinarily not consider additional evidence in the absence of first suspending the appeal and remanding the application to the Examining Attorney for consideration thereof. Nevertheless, as is the case herein, where the Examining Attorney has not only failed to object to the additional evidence as untimely, but has discussed it in his brief, the Board will treat such evidence as being of record. See In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990) at n. 2. Applicant's request is accordingly granted to the extent that the additional evidence is deemed to form part of the record and thus has been considered.
FN5. Judicial notice may properly be taken of dictionary definitions. See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983).
FN6. We take such statement by applicant as indicative that tobacco products of the kinds set forth in the application are available in different grades of quality within various price ranges.
FN7. In addition to finding no likelihood of confusion with opposer's mark "PLUS" for, inter alia, vitamins and food supplements (211 USPQ at 1210), the Board therein found that the marks "ZN-PLUS," "MN-PLUS" and "CA-PLUS," as applied to nutritional supplements, were suggestive of "the presence in the particular product of the chemical material identified by the symbol [therefor] and something more as other ingredients" (211 USPQ at 1204), and that "there is nothing in the marks or, in particular, the term 'PLUS' to indicate with any degree of particularity just what this something more is" (211 USPQ at 1205). Applicant's attention, however, is directed to the fact that such decision was subsequently vacated and a new decision was issued by a different panel which, among other things, found that confusion was likely. Plus Products v. Medical Modalities Associates, Inc., 217 USPQ 464, 464-65 (TTAB 1983). While, as noted in University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1394 (TTAB 1994), "a vacated decision has no precedential value," we nevertheless observe that the panel of the Board in the second Plus Products decision found, as did the previous panel, that the marks of the applicant therein "are not merely descriptive of its goods". 217 USPQ at 465 n. 6.
FN8. Applicant indicates that the quotations in the last sentence set forth above are from the unpublished decision in "In re The Life Insurance Company of Virginia, Serial No. 74/138,512 (January 6, 1994, TTAB), at 2 (holding that ADDED OPTIONS does not forthwith convey, with particularly, any immediate idea of any particular quality or characteristic of the applicant's annuity underwriting services)". Unpublished decisions of the Board, with the exception of certain situations not applicable to this appeal, are not citable, however, as precedent. General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 (TTAB 1992) at n. 9.