API Solutions, Inc.

Trademark Trial and Appeal Board

Nov 27, 2012

No. 85242448 (T.T.A.B. Nov. 27, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re API Solutions, Inc.
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Serial No. 85242448
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Matthew H. Swyers of The Swyers Law Firm, PLLC for API Solutions, Inc.

Charles J. Jenkins, Jr., Trademark Examining Attorney, Law Office 105
(Thomas H. Howell, Managing Attorney).
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Before Seeherman, Holtzman, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
API Solutions, Inc. (applicant) filed an application to register the mark
NO-CRIMP for “plastic safety caps for medical containers.”1
The examining attorney refused registration pursuant to Section 2(e)(1) of
the Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. The refusal was made final in the
Office action dated October 12, 2011. Applicant has appealed the refusal.

1 Application Serial No. 85242448, filed February 15, 2011, based on intent to use
pursuant to Section 1(b) of the Trademark Act.
Serial No. 85242448
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A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. 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 to be
merely descriptive; rather, it is sufficient that the term describes one significant
attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); 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 the goods or services,
and the possible significance that the term would have to the average
purchaser of the goods or services 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).
The examining attorney contends that “NO-CRIMP” defines a feature and
a characteristic of applicant’s goods. Relying on dictionary definitions of “no”
(not at all or not by any degree) and “crimp,” (a crease or bend), the examining
attorney asserts that applicant’s plastic safety caps “contain a ‘no-crimp’
feature that keeps the plastic from bunching up, creasing or bending when the
Serial No. 85242448
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safety cap is placed on top of the medicine container.” Examining Attorney’s
Brief, p. 2.
In support of his position, the examining attorney made of record
excerpts of 42 articles from the LexisNexis database, in which the term “no-
crimp” is used. These excerpts reflect a variety of meanings of “no crimp,”
such as a reversible fiber optic connector, the type of curls in human hair, and
the type of fibers in alpaca hair, which are reflected in the following illustrative
examples:
1. US Patent Issued to Panduit on February 22 for “reversible
fiber optic connector,” described as “a re-terminable, no-crimp ST-
type optical connector assembly”2;
2. “Helpful Tips Produce Some Heads-up Styles,” which
discusses the creation of “no-crimp” curls3; and
3. “Alpacas de Santa Fe a Resource for Ranchers,” which
discusses hair on alpacas as “no-crimp (curly) fine fiber and …a
crimped fiber).”4
None of the uses of “no-crimp” in the excerpts is relevant to applicant’s
identified goods. Further, no evidence was introduced explaining how either
“crimp” or “no crimp” pertains to safety caps for containers.

2 “US Fed News” dated February 25, 2011. Three additional articles on the same
subject were also submitted.
3 “News-Journal (Daytona Beach, Florida)” dated September 8, 2004. Additional
articles regarding “no-crimp” curls and “no-crimp” hair elastics were also made of
record.
4 “Santa Fe New Mexican, dated January 13, 2004.
Serial No. 85242448
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In the final Office action, dated October 12, 2011, the examining attorney
also made of record an additional 20 excerpts from the LexisNexis database
and pages from the following websites: PosiLock.com (which offers “no crimp”
electrical connectors), Ulta.com (which offers ELLE no-crimp ponytail holders)
and Summitracing.com (which offers a “Wire Connector, No-Crimp, Posi-Lock,
18 to 24 Gauge” standard motor no crimp wire connectors).
As with the evidence of record from the first Office action, the evidence
entered in the second Office action does not appear to be relevant to the
applicant’s identified goods.
After reviewing all of the evidence, we are hard pressed to understand
how the term “no-crimp” applies to “plastic safety caps for medicine
containers.” The burden is on the United States Patent and Trademark Office
to make a prima facie showing that the mark or word in question is merely
descriptive from the vantage point of purchasers of an applicant's goods. See:
In re Box Solutions Corp., 79 USPQ2d 1253, 1255 (TTAB 2006) referring to In
re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1144 (Fed. Cir. 1987). Based on the record submitted, we cannot say
that NO-CRIMP directly and immediately conveys information about a
characteristic of the identified goods. Thus, we find that the Office has not met
its burden, and we reverse the refusal under Section 2(e)(1) of the Trademark
Act.5

5 This not to say that we might not reach a different result on a different record
adduced in an inter partes proceeding.
Serial No. 85242448
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DECISION: The refusal to register is reversed.