American Infrastructure, Inc.

Trademark Trial and Appeal Board

Sep 13, 2010

No. 77044836 (T.T.A.B. Sep. 13, 2010)

Hearing: Mailed: September 13, 2010
July 21, 2010 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Infrastructure, Inc.
________

Serial Nos. 77044834; 77044836; and 77044841
_______

Timothy D. Pecsenye of Blank Rome LLP for American
Infrastructure, Inc.

David Elton, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Bucher and Holtzman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

American Infrastructure, Inc. filed applications to
register the marks shown below for the following services:
“construction consultation; construction management;
construction planning; consultation services for the
construction of water and waste water plants; construction
of water and waste water plants; laying and construction of
pipelines; road and highway construction; road and highway
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77044834; 77044836; and 77044841
2
paving services; bridge construction” in International
Class 37.
(1)

Application Serial No. 77044834, filed November
15, 2006, claiming first use and first use in
commerce in June 2000. The application includes
the following description of the mark: “The mark
consists of the words ‘R.G. GRIFFITH’ and “A
COMPANY OF AMERICAN INFRASTRUCTURE’ and a
fanciful design of a pipe to the left of the
wording, with a solid line bisecting the pipe
design and underlining the words ‘R.G. GRIFFITH’
and overlining the words ‘A COMPANY OF AMERICAN
INFRASTRUCTURE.’”

(2)

Application Serial No. 77044836, filed November
15, 2006, claiming first use and first use in
commerce in November 2000. The application
includes the following description of the mark:
“The mark consists of the words ‘Allan A. Myers’
and ‘A COMPANY OF AMERICAN INFRASTRUCTURE’ and a
fanciful design of a pipe to the left of the
wording, with a solid line bisecting the pipe
design and underlining the words ‘Allan A. Myers’
and overlining the words ‘A COMPANY OF AMERICAN
INFRASTRUCTURE.’”

Ser Nos. 77044834; 77044836; and 77044841
3
(3)

Application Serial No. 77044841, filed November
15, 2006, claiming first use and first use in
commerce on May 6, 1998. The application
includes the following description of the mark:
“The mark consists of the words ‘AMERICAN
INFRASTRUCTURE’ with the fanciful design of a
pipe.”

In application Serial Nos. 77044834 and 77044836, the
examining attorney refused registration of applicant’s
marks in the absence of a disclaimer of the wording A
COMPANY OF AMERICAN INFRASTRUCTURE; in application Serial
No. 77044841, the examining attorney refused registration
of applicant’s mark in the absence of a disclaimer of the
wording AMERICAN INFRASTRUCTURE. The examining attorney
maintains that A COMPANY OF AMERICAN INFRASTRUCTURE and
AMERICAN INFRASTRUCTURE are merely descriptive of
applicant’s identified services within the meaning of
Section 2(e)(1) of the Trademark Act.
After the examining attorney made the refusals to
register final, applicant appealed. Applicant and the
examining attorney have filed briefs. Applicant’s counsel
and the examining attorney appeared before the Board at an
oral hearing.
Ser Nos. 77044834; 77044836; and 77044841
4
In view of the similarity of the records and issues in
the three applications, and in the interest of judicial
economy, we have consolidated the applications for purposes
of our final opinion. Thus, we have issued this single
opinion.
Before turning to the merits of the cases, we note
that in each application, applicant filed a request for
reconsideration wherein it submitted an alternative claim
of acquired distinctiveness under Section 2(f) of the Act
as to the wording AMERICAN INFRASTRUCTURE. In his brief in
application Serial No. 77044841, the examining attorney has
indicated that the alternative claim of acquired
distinctiveness is acceptable. In his briefs in
application Serial Nos. 77044834 and 77044836, the
examining attorney has indicated that the alternative claim
of acquired distinctiveness would be acceptable if
accompanied by a disclaimer of the term COMPANY. Thus, if
we find that the wording AMERICAN INFRASTRUCTURE is merely
descriptive of applicant’s services, applicant will be
entitled to registration of the mark in application Serial
No. 77044841 with a claim of acquired distinctiveness as to
the wording AMERICAN INFRASTRUCTURE; and if we find that
the wording A COMPANY OF AMERICAN INFRASTRUCTURE is also
merely descriptive of applicant’s services, applicant will
Ser Nos. 77044834; 77044836; and 77044841
5
be entitled to registration of the marks in application
Serial Nos. 77044834 and 77044836 with a claim of acquired
distinctiveness as to the wording AMERICAN INFRASTRUCTURE
and a disclaimer of the word COMPANY.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term 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 on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
Ser Nos. 77044834; 77044836; and 77044841
6
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537, 1539 (TTAB 1998).
We begin our discussion by reviewing the evidence that
has been submitted on the issue of the descriptiveness of
the wording AMERICAN INFRASTRUCTURE. The evidence consists
of dictionary definitions of the word “infrastructure;” the
following is a representative definition: “public services
or systems: the large-scale public systems, services, and
facilities of a country or region that are necessary for
economic activity, including power and water supplies,
public transportation, telecommunications, roads, and
schools.” MSN Encarta online dictionary. In addition, the
examining attorney submitted Internet articles that refer
to “infrastructure” in the United States, and in particular
to, “American Infrastructure” and “America’s
Ser Nos. 77044834; 77044836; and 77044841
7
infrastructure.” The following are excerpts from the
Internet articles:
The American Infrastructure
In the aftermath of last night’s bridge collapse
in Minneapolis, a lot of Americans may well have
driven to work today wondering how things are
where they live. The American Society of Civil
Engineers has raised the question in regular
“report cards,” the latest of them in 2005. They
gave America’s bridges a grade of C …. They
worried more, however, about other parts of
America’s infrastructure--they gave grades of D-
minus to drinking water, navigable waterways and
wastewater treatment systems.
www.abcnews.com

In March 2001, ASCE released a Report Card for
America’s Infrastructure, grading 12
infrastructure categories at a discouraging D+
overall …. In September 2003, ASCE released a
Progress Report that examines current trends for
addressing the nation’s deteriorating
infrastructure …
www.asce.org

The American Society of Civil Engineers (ASCE)
conducts a study every two years grading (A-F)
various infrastructure problems in the U.S. The
most recent one in 2005 declared that overall
American infrastructure received a D. The report
included 15 areas that were graded, but I want to
focus on four of them today: roads, bridges,
transit and wastewater.
www.pennysleuth.com

… Aging infrastructure is expected to be an
increasing prominent issue in many parts of the
world … To put this in context, the ASCE
estimates that traffic congestion costs the US
economy $67.5 billion annually in lost
productivity and wasted fuel. Even more
seriously, the Federal Highway Administration
(FHWA) reports that outdated and substandard road
and bridge design, paving conditions, and safety
features are factors in 30% of all fatal highway
Ser Nos. 77044834; 77044836; and 77044841
8
accidents … The ASCE estimates that an
investment of $1.6 trillion over five years is
required to bring U.S infrastructure to good
condition.
http://geospatial.blogs.com

S. 2345, The American Infrastructure Investment
and Improvement Act of 2007
An original bill to amend the Internal Revenue
Code of 1986 and to extend funding for the
Airport and Airway Trust Fund.
www.WashingtonWatch.com

Republicanism Harms American Infrastructure
It is common knowledge, even among conservatives,
that maintaining a nation’s infrastructure
requires money … Sadly, the Minnesota bridge
collapse may be as much a sign of what is to come
…
http://effectsofgop.blogspot.com2007/08

The examining attorney also submitted printouts of the
Internet websites of three companies whose names consist of
or include the wording “American Infrastructure.” The
companies are named “Zachary American Infrastructure,”
“American Infrastructure, Inc.,” and “American
Infrastructure Technologies Corporation.” The following
excerpts from their respective websites show that these
companies are involved in constructing public systems such
as highways, water systems, and pipelines:
Zachary American Infrastructure is the first U.S.
owned company with the capabilities to develop
and invest in private sector solutions to public
infrastructure needs.
We are able to privately finance, build and
operate highways, water systems, freight rail and
power lines for public entities.
www.zacharyamericaninfrastructure.com
Ser Nos. 77044834; 77044836; and 77044841
9
American Infrastructure, Inc. has become the
leader in pipeline utilities since opening its
doors in 2004 … Specializing in pour in place
drainage structures, American Infrastructure,
Inc. has poured just over 30,000 cubic yards of
concrete for cast-in-place manholes, box
culverts, inlets, trickle channels and fore bays
…
With the expanding population in the Colorado
market, channeling storm runoff is a necessity.
www.americaninfrastructureinc.com1

American Infrastructure Technologies Corporation
(AITC) is a utility construction company
specializing in analysis, maintenance and
rehabilitation of pipelines for municipal and
industrial use.
http://aitechcorp.com

Based on the above evidence, we find that the term
AMERICAN INFRASTRUCTURE is merely descriptive when used in
connection with applicant’s services as they are recited in
the applications, i.e., “construction consultation;
construction management; construction planning;
consultation services for the construction of water and
waste water plants; construction of water and waste water
plants; laying and construction of pipelines; road and
highway construction; road and highway paving services;
bridge construction.” The term immediately describes the
nature of applicant’s services, that is, they involve

1 We note that as far as the record shows this company has the
same trade name as applicant, but it obviously has a different
web address.
Ser Nos. 77044834; 77044836; and 77044841
10
consultation and construction services in the field of
infrastructure in the United States, i.e., “American
infrastructure.”
Applicant argues that “infrastructure” is “a nebulous
term with varying meaning” and thus, “[a]t worst, the
phrase AMERICAN INFRASTRUCTURE is suggestive, not merely
descriptive of Applicant’s services.” (Brief Serial No.
77044841, p. 4). We find, however, that the term
“infrastructure” has been shown to possess the requisite
degree of particularity when used in connection with
applicant’s services. The examining attorney’s evidence
shows common usage of the term “infrastructure” to describe
public systems such as water and waste water systems,
pipelines, roads and highways, and bridges. That the term
“infrastructure” may have other meanings in other contexts
is immaterial to our analysis under Section 2(e)(1). In re
Bright-Crest, Ltd., supra. Furthermore, it is beyond
dispute that applicant’s construction and consultation
services involve infrastructure in the United States, i.e.,
“American infrastructure.” In this regard, we note the
following statement at applicant’s website, a printout of
which was submitted by the examining attorney:
Put simply, our name is what we do – American
Infrastructure. We build the civil
infrastructure that our communities depend on to
Ser Nos. 77044834; 77044836; and 77044841
11
provide clean drinking water, to move goods,
services and people, and to support new growth
and development.
www.americaninfrastructure.com

Thus, the wording AMERICAN INFRASTRUCTURE, when used in
connection with applicant’s construction and consultation
services, immediately conveys to purchasers and prospective
purchasers that such services involve American
infrastructure.
The fact that the wording AMERICAN INFRASTRUCTURE,
when used in connection with applicant’s various
consultation and construction services, is a broad or
encompassing designation does not mean that such word does
not merely describe, with sufficiently particularity, the
consultation and construction services provided by
applicant. Case law has held broad or inclusive
designations to be descriptive of a specific service or
product covered thereby. See, e.g., In re Energy Products
of Idaho, 13 USPQ2d 2049, 2052 (TTAB 1989) phrase “THE
WASTE-TO-ENERGY COMPANY” held merely descriptive of
engineering consulting services in developing, designing,
manufacturing, installing, starting up and operating low
pollution fluid bed equipment], citing In re Analog
Devices, 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989)(unpublished) [term
Ser Nos. 77044834; 77044836; and 77044841
12
“ANALOG DEVICES” found descriptive of certain named devices
having analog capabilities].
Finally, in support of its position that AMERICAN
INFRASTRUCTURE is not merely descriptive, applicant has
submitted printouts of a number of third-party
registrations for marks that include the word
INFRASTRUCTURE. Applicant argues that the USPTO has
permitted marks allegedly similar to applicant’s mark to
register on the Principal Register without a disclaimer of
the word INFRASTRUCTURE.
Several of the marks in the third-party registrations
are for goods or services that are unrelated to applicant’s
services and, for that reason, they therefore are of
limited probative value. Insofar as the other marks are
concerned, we must keep in mind the settled principle that
each case must be decided on its own record and merits, and
that the existence of registrations of marks which may be
similar to applicant’s mark, without a disclaimer of the
word INFRASTRUCTURE, is not determinative. See, e.g., In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
After considering all of the evidence in the record,
we find that the wording AMERICAN INFRASTRUCTURE is merely
descriptive of applicant’s services. The only remaining
Ser Nos. 77044834; 77044836; and 77044841
13
issue is whether the addition of the wording A COMPANY OF
changes the descriptive meaning of AMERICAN INFRASTRUCTURE.
The words “a” and “of” have little to no source-identifying
significance. Furthermore, we find that the word COMPANY
merely describes applicant’s entity. As such, the term is
descriptive and has little or no trademark significance.
See In re JT Tobacconists, 59 USPQ2d 1080, 1083 (“company”
is generic). Thus, the addition of the wording A COMPANY
OF does not change the descriptive meaning of AMERICAN
INFRASTRUCTURE. In other words, the wording A COMPANY OF
AMERICAN INFRASTRUCTURE is also merely descriptive of
applicant’s services.
Decision: In application Serial No. 77044841, the
requirement for a disclaimer of the wording AMERICAN
INFRASTRUCTURE is affirmed. However, the mark in this
application will proceed to publication with a claim of
acquired distinctiveness under Section 2(f) as to the
wording AMERICAN INFRASTRUCTURE.
In application Serial Nos. 77044834 and 77044836, the
requirement for a disclaimer of the word COMPANY and the
wording AMERICAN INFRASTRUCTURE is affirmed. However, the
marks in these applications will proceed to publication
with a claim of acquired distinctiveness under Section
Ser Nos. 77044834; 77044836; and 77044841
14
2(f) as to the wording AMERICAN INFRASTRUCTURE if
applicant submits a disclaimer of the word COMPANY.2
Applicant is allowed until thirty days of the mailing
date of this decision to submit the required disclaimer in
each application following which this aspect of the
decision will be set aside, and the applications passed to
publication.

2 As previously indicated, the examining attorney accepted
applicant’s claim of acquired distinctiveness under Section 2(f)
as to the wording AMERICAN INFRASTRUCTURE. In support of its
claim, applicant submitted the declaration of its CEO A. Ross
Myers, dated June 11, 2008. Mr. Myers states that the wording
AMERICAN INFRASTRUCTURE has become distinctive of applicant’s
services “through applicant’s substantially exclusive and
continuous use in commerce for at least five years immediately
before the date of this statement.” (emphasis added) While it
appears from the evidence submitted by the examining attorney
that there are three third parties whose names consist of or
include “American Infrastructure,” applicant maintains that these
are infringing uses that it has addressed. Indeed, applicant
states that it is currently litigating a trademark infringement
suit against one of the third parties. Thus, on this record, we
are satisfied that applicant has made substantially exclusive use
of the wording AMERICAN INFRASTRUCTURE. In an inter partes
proceeding involving a different record, our ruling might be
different.