American Infrastructure, Inc.Download PDFTrademark Trial and Appeal BoardSep 13, 2010No. 77044834 (T.T.A.B. Sep. 13, 2010) Copy Citation 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. Copy with citationCopy as parenthetical citation