AnAerobics, Inc.

Trademark Trial and Appeal Board

Dec 17, 2002

No. 76092581 (T.T.A.B. Dec. 17, 2002)

Mailed:
December 17, 2002
Paper No. 11
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re AnAerobics, Inc.
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Serial No. 76/092,581
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Stephen B. Salai of Harter Secrest & Emery LLP for
AnAerobics, Inc.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Jerry L. Price, Managing Attorney).
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Before Cissel, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
AnAerobics, Inc. seeks to register the term ANAEROBICS
on the Principal Register for “waste treatment services,”
in International Class 40.1
This case is now before the Board on appeal from the
final refusal to register based upon the ground that the
term ANAEROBICS is merely descriptive under Section 2(e)(1)
1 Application Serial No. 76/092,581 was filed on July 20,
2000, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/092,581
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of the Lanham Act, 15 U.S.C. §1052(e)(1), and furthermore,
that even if applicant could claim benefit of 37 C.F.R.
§ 2.41, applicant has not made a sufficient showing of
acquired distinctiveness under Section 2(f) of the Lanham
Act, 15 U.S.C. §1052(f) to overcome the underlying refusal
to register.
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
We affirm the refusal to register.
While much of the argumentation between applicant and
the Trademark Examining Attorney during the course of
prosecution of this application focused on whether or not
the term ANAEROBICS is generic for the recited services, we
are compelled to answer only whether this term is merely
descriptive under Section 2(e)(1) when applied to
applicant’s waste treatment services.
As to the relevant meaning of the word “anaerobic,”
applicant and the Trademark Examining Attorney seem to
agree on the basic science. Anaerobic bacteria (or
anaerobe) is bacteria that does not live or grow in the
presence of oxygen. Similarly, using a series of entries
from the Nexis database, the Trademark Examining Attorney
has shown that anaerobic digestion consists of a series of
Serial No. 76/092,581
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microbiological processes that convert organic compounds
(e.g., residue from livestock farming) into biogas (to
generate heat and/or electricity), digested sludge (e.g.,
fiber for conditioning soil) and liquid fertilizer. At the
heart of the process is a digester or reactor – a
completely sealed chamber devoid of free oxygen and light
that is inoculated with anaerobic bacteria. Moreover,
applicant owns proprietary technology applying these
principles and processes to high-rate, high-strength
wastewater treatment facilities.
Inasmuch as the expression “anaerobic digestion” names
a particular waste treatment process, the pluralized term
ANAEROBICS clearly conveys information about the waste
treatment services using such processes. Indeed, in its
appeal brief, applicant concedes this term may well be
merely descriptive of its processes. (Appeal brief, pp. 4,
5, 7 – 10). Moreover, while not required to demonstrate
that the term as used by applicant is generic, we find that
the Trademark Examining Attorney has made the case that
this term is highly descriptive when applied to the recited
services.
In order to overcome the refusal under Section 2(e)(1)
of the Act, applicant has submitted the declaration of its
president, Edward H. Heslop, attesting to the fact that the
Serial No. 76/092,581
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term has become distinctive of applicant’s services due to
more than five years of exclusive and continuous use in
commerce by applicant.
Initially, we must agree with the Trademark Examining
Attorney that inasmuch as this is still an Intent-To-Use
application where no allegation of use has been made, this
declaration is unavailing for applicant.
Applicant concedes that it has not yet filed an
Amendment to Allege Use under Section 1(c) of the Act.
Nonetheless, applicant argues that it is entitled to file a
claim of acquired distinctiveness in this application.
Unfortunately for applicant, that is not the law.
As noted by the Trademark Examining Attorney, in order
to overcome a refusal under Section 2(e) with a showing of
acquired distinctiveness, the only other option for the
owner of an Intent-to-Use application is to claim that the
established distinctiveness of a mark in use in commerce in
connection with related goods or services will transfer to
applicant’s use of that mark in connection with the
services identified in the affected Intent-To-Use
application. Under this alternative, applicant would have
to establish, by appropriate evidence, the extent to which
the services recited in this Intent-To-Use application are
related to the goods or services in connection with which
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the mark is distinctive, and that there is a strong
likelihood that the mark’s established trademark function
will transfer to the related goods or services when use in
commerce occurs herein. See In re Rogers, 53 USPQ2d 1741
(TTAB 1999).
In view of the underlying facts and the procedural
posture of this case, the question of acquired
distinctiveness is moot. However, in order to render a
complete opinion, we will now consider applicant’s claim of
acquired distinctiveness, assuming for this discussion that
applicant qualified under Section 1(c) of the Act by having
already filed an Amendment to Allege Use, or had
established its use of the identical mark on related goods
or services for some period of time, and that such acquired
distinctiveness transferred to the instant service mark
usage.
As discussed above, applicant’s mark must be deemed to
be highly descriptive. The greater the descriptiveness of
the term, the greater the evidence necessary to prove
acquired distinctiveness. See Yamaha International Corp.
v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988). Thus, the evidence necessary for applicant to
prove acquired distinctiveness is great indeed.
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After reviewing the entire record, we find that
applicant has not met its burden of demonstrating acquired
distinctiveness. Applicant argues that it has made a prima
facie showing of distinctiveness through its statement that
applicant has made substantially exclusive and continuous
use of the mark in commerce for more than five years.
However, the statute states that the Commissioner may
accept such a statement as proof of acquired
distinctiveness, not that the Commissioner must accept it.2
In this case, because of the high degree of descriptiveness
of the term sought to be registered, much more (e.g.,
empirical evidence) would be required.
Decision: The refusal to register is affirmed.
2 37 C.F.R. § 2.41(b): “In appropriate cases, ownership of
one or more prior registrations on the Principal Register or
under the Act of 1905 of the same mark may be accepted as prima
facie evidence of distinctiveness. Also, if the mark is said to
have become distinctive of applicant’s goods by reason of
substantially exclusive and continuous use in commerce thereof by
applicant for the five years before the date on which the claim
of distinctiveness is made, a showing by way of statements which
are verified or which include declarations in accordance with
§2.20, in the application may, in appropriate cases, be accepted
as prima facie evidence of distinctiveness. In each of these
situations, however, further evidence may be required.”
[emphasis supplied].