the best trademarks are often highly suggestive of the advantageous characteristics of the goods
How later courts described this case
- the best trademarks are often highly suggestive of the advantageous characteristics of the goods
Written by the judges who cited it.
The opinion
Baldwin, Judge,
concurring.
It seems to me well established that two or more words which would be merely descriptive by themselves can be joined together into a single term in such a way that the resulting term is a valid technical trademark. In re Ada Milling Co., 40 CCPA 1076, 205 F.2d 315 , 98 USPQ 267 (1953) (STARTGROLAY); In re Colonial Stores, 55 CCPA 1049, 394 F.2d 549 , 157 USPQ 382 (1968) (SUGAR & SPICE); In re Chesapeake Corp. of Virginia, 57 CCPA 838, 420 F.2d 754 , 164 USPQ 395 (1970) (SUPERWATERFINISH); Henry Muhs Co. v. Farm Craft Foods, Inc., 37 F. Supp. 1013 , 49 USPQ 162 *975 (E.D.N.Y., 1941) (FARMCRAFT). In my opinion, SKINVISI-BLE is such, a term. It is a coined term, and a fanciful one. As applied to the goods, it does not necessarily describe either the tape itself as “invisible skin” or the tape as applied as allowing the skin to remain visible. It is a play on the spelling of the words “skin,” “visible,” and/or “invisible.” It is just such fanciful terms as this which are most likely to be remembered by consumers. The term SKDSTVTSI-BLE is thus not merely descriptive within the meaning of 15 USC 1052(e)(1).
With regard to the theory that the test for mere descriptiveness under section 1052(e) (1) is somehow related to and less important than the test governing the likelihood of confusion under section 1052(d), I agree with the comments of both of my dissenting colleagues. This proposition was not argued by either party. To inject it into the decision of this case could only create confusion in the law. It should be noted that this theory has previously been before this court. 1 Perhaps now that it has been specifically rejected by the majority of this court, it can finally be laid to rest.
See Armour and Co. v. Organon Inc., 44 CCPA 1010, 245 F.2d 495 , 114 USPQ 334 (1957).