Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CARLSON DOLLS CO.
Serial No. 73/815,966
April 4, 1994
Released: May 24, 1994
Karen K. Bush
Trademark Examining Attorney
Law Office 9
(Sidney Moskowitz, Managing Attorney.)
Before Simms, Cissel and Seeherman
Administrative Trademark Judges
Opinion by Cissel
Administrative Trademark Judge
Applicant applied to register the mark "MARTHA WASHINGTON" on the Principal Register for "historical dolls made of plastic, fabric, leather and porcelain." [FN1] Registration was refused under Section 2(e)(1) of the Act on the ground that the name sought to be registered is merely descriptive of applicant's dolls, which embody applicant's conception of the image of the famous first First Lady of our country. The Examining Attorney also stated that the name is "so highly descriptive that it is incapable of identifying the source of applicant's goods and distinguishing them from those of others." (Third Office Action, May 7, 1990). She specifically refused registration on the Supplemental Register and under the provisions of Section 2(f) of the Act, although applicant had not sought registration on the Supplemental Register or on the Principal Register based on a claim of acquired distinctiveness.
The refusal was made final, following which applicant requested reconsideration, supported by three affidavits from retailers of applicant's dolls. The affiants state that they view "MARTHA WASHINGTON" as a distinctive trademark which identifies the source of applicant's dolls. Applicant specifically declined to seek registration under the terms of section 2(f), but instead argued that these affidavits establish that the name which applicant seeks to register is capable of identifying the source of applicant's dolls.
Following further exchanges between the Examining Attorney and applicant's attorney, a timely Notice of Appeal was filed on July 24, 1992. Briefs were filed, but applicant did not request an oral hearing.
At various junctures during the examination process the Examining Attorney took different positions concerning the refusal to register. The sole issue for our resolution, however, is whether the name sought to be registered is merely descriptive of applicant's dolls within the meaning of Section 2(e)(1) of the Act. Notwithstanding statements in the briefs and Office Actions, capability under Section 23 is not an issue, nor is it an issue whether the name has become distinctive as an indication of the source of applicant's dolls. As noted above, applicant has not sought registration on the Supplemental Register, nor has it claimed registrability under Section 2(f) of the Act based on acquired distinctiveness.
Neither applicant nor the Examining Attorney disputes the fundamental principle, as enunciated in cases such as In re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA1978), that a mark is merely descriptive of goods of it describes features, qualities or characteristic of them or if it conveys information about any properties of the goods. As the Second Circuit stated in the Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11, 189 USPQ 759, 765 (2nd Cir.1976), "(a) term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods."
*2 About these concepts there is no argument. The argument in this case concerns whether "MARTHA WASHINGTON" is only suggestive of applicant's dolls or whether it is, instead, merely descriptive of them. Central to applicant's argument that the name is not merely descriptive of the dolls is applicant's interpretation of the Court's decision in In re D.C. Comics, Inc., 689 F.2d 1042, 215 USPQ 394 (CCPA1982). In that case the Court found that a graphic representation of the Superman character was registrable for a doll made in the form of the character.
That case is readily distinguishable from the case at hand, however. There the issue presented on appeal was whether a graphic representation of a fictional character could function as a trademark for a doll modeled after the character. Here the issue is neither functionality nor the registrability of a design. Rather, we are presented with the simpler question of whether the name of a historical figure, Martha Washington, is merely descriptive of a doll intended to represent her.
Application of the previously mentioned, acknowledged rules for resolving the issue of descriptiveness necessarily results in the conclusion that the name sought to be registered is merely descriptive of applicant's goods because a key feature, quality or characteristic of the dolls is that they portray Martha Washington, and the name "MARTHA WASHINGTON" on the dolls immediately and forthwith conveys this information when the name is used in connection with such dolls.
While it can also be argued that a characteristic of the dolls bearing either the configuration of the Superman character or the name "SUPERMAN" is that they embody the appearance of the Superman character, an important difference exists which distinguishes that situation from the circumstances presented by the instant application. Superman was and is a proprietary creation, a character featured by a business entity which markets all manner of products, from comic books to dolls, by identifying the common source of those goods with the name and/or image of its proprietary fictional character. Consumers reasonably expect goods and services bearing the name or image of this character to emanate from, or be produced or marketed under license from, the entity which created the character and therefore owns the right to profit from commercialization of it.
This is not the case with historical figures, whose names and images are not necessarily linked to particular commercial entities. In short, while prospective purchasers of dolls may reasonably expect dolls labeled with the name "SUPERMAN" or the likeness of the Superman character to emanate from the same source which is responsible for the comic books and other products which bear the name or image of the character, the likely reaction of ordinary consumers presented with "MARTHA WASHINGTON" on tags attached to "historical dolls" made to look like women in colonial clothing would be that the name indicates not the commercial source of the dolls, but rather is used as a description of the historical figure the dolls are supposed to represent.
*3 We hasten to emphasize that our ruling is only that based on the record before us, the refusal to register based on Section 2(e)(1) is proper.
DECISION: The refusal to register is affirmed and registration to applicant is refused.
R.L. Simms
R.F. Cissel
E.J. Seeherman
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. That application was filed on July 3, 1989 based on a claim of use since October of 1968. Applicant later amended the application to state that "the mark is the name of a historical character, now deceased."