APPLICATION OF CHESAPEAKE CORPORATION OF VIRGINIA, Patent Appeal No. 8251.

• Decision Date: 05 February 1970
• Docket Number: Patent Appeal No. 8251.
• Citation: 164 USPQ 395,420 F.2d 754
• Parties: Application of the CHESAPEAKE CORPORATION OF VIRGINIA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

164 USPQ 395, 420 F.2d 754 (1970)

Application of the CHESAPEAKE CORPORATION OF VIRGINIA.

Patent Appeal No. 8251.

United States Court of Customs and Patent Appeals.

February 5, 1970.

Jacobi, Davidson & Jacobi, Washington, D. C., attorneys of record, for appellant; Siegfried A. Schoedel, Washington, D. C., of counsel.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents, D. Lenore Lady, Washington, D. C., of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN, LANE, Judges, and McMANUS, Chief Judge, sitting by designation.

ALMOND, Judge.

This is an appeal from a decision of the Trademark Trial and Appeal Board, 154 USP 248, affirming the examiner's refusal to register on the Principal Register "SUPERWATERFINISH" as a trademark for kraft paper¹ on the ground that the mark is "so highly descriptive of the goods as to be merely an apt commercial designation * * * believed to be without the ability to distinguish the goods of one entity from the goods of another." Exclusive and continuous use of the mark since at least 1949 is asserted.

The examiner characterized the refusal as being based on the preface to section 2 and the definition of a trademark in section 45 of the Trademark Act of 1946 (15 U.S.C. §§ 1052, 1127). Appellant, on the other hand, contends that the mark is not "merely descriptive" of its goods under section 2(e) of the Act (15 U.S.C. § 1052(e)) and, moreover, it is not generically descriptive and has become distinctive of appellant's goods in commerce so as to permit registration under section 2(f) of the Act (15 U.S.C. § 1052(f)). We agree with the solicitor that appellant's contentions frame the questions involved in this appeal.

In a comprehensive opinion dispositive of the issues, the board found and held, one member dissenting, as follows:

The designation "SUPERWATERFINISH" is not only composed of three descriptive words; but the term "WATER FINISH" admittedly has a well-known meaning in the paper industry and manifestly the addition of the term "SUPER" does not in any way change the inherent meaning of the term "WATER FINISH". * * In fact, since applicant admittedly is applying a water finish to its Kraft paper, the adjectival superlative designation serves only to emphasize or enhance the descriptive significance of "WATER FINISH", as in the case of a "super-calendering" finish, rather than lend any distinctive character thereto. As such, "SUPERWATERFINISH" is merely descriptive of applicant\'s Kraft paper which has been treated with applicant\'s super water finish. * * *

* * * * * *

Although, as alleged by applicant, it may be the only one in the trade to have used the term "SUPERWATERFINISH" over a seventeen-year period, a word or term such as that involved in this proceeding, which by its very nature conveys a readily understood meaning and significance, is not elevated to the stature of a registrable trademark merely as a result of origination and long use. * * * That applicant may have adopted and used the term "SUPERWATERFINISH" on its goods with an intent that it function as a trademark does not necessarily establish that it has succeeded in that regard. That is to say, the ultimate test in a proceeding of this character is what do the customers for Kraft paper understand by the term "SUPERWATERFINISH".

The board then considered ten letters from appellant's customers received in reply to appellant's request to them stating, in essence, that "we would appreciate your indicating whether or not the mark `SUPERWATERFINISH' identifies only the products of Chesapeake." The board found that a majority of the letters generally indicated an association of the mark in question with appellant's product, stating, however, that the weight to be accorded such letters depends to a large degree on the nature of the mark sought to be registered in each particular case. The board cited...