Bradley K. Lunde

Trademark Trial and Appeal BoardJan 26, 2018

No. 86864631 (T.T.A.B. Jan. 26, 2018)

Mailed: January 26, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bradley K. Lunde _____ Serial No. 86864631 _____ John F. Bradley of Bradley Legal Group, P.A. for Bradley K. Lunde. Shaunia P. Carlyle, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney). _____ Before Kuhlke, Kuczma and Coggins, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Bradley K. Lunde, filed an application to register on the Principal Register the mark shown below for goods identified as “Audio speakers; Loudspeakers; Switch boxes,” in International Class 9. The application was filed on January 4, 2016 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. Applicant subsequently filed an Amendment to Allege Use (“AAU”) claiming January 21, 2016 as the date of first use anywhere and in commerce. The Trademark Examining Attorney accepted the AAU, bringing the application into conformity with Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). This Opinion is not a Precedent of the TTAB Serial No. 86864631 2 The Examining Attorney refused registration based on Applicant’s failure to comply with a requirement to disclaim the wording SUBWOOFER PROS apart from the mark as shown. 15 U.S.C. §§ 1052(e)(1) and 1056. The Examining Attorney maintains that the wording SUBWOOFER PROS is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), when used in connection with Applicant’s goods. When the refusal was made final, Applicant appealed and filed a request for reconsideration. In its request for reconsideration, Applicant disclaimed the word SUBWOOFER but argued it claims exclusive rights to SUBWOOFER PROS and is “entitled to registration without disclaiming SUBWOOFER PROS.” 8 TTABVUE 9; May 8, 2017 Request for Reconsideration at 1.1 The request was denied on May 30, 2017. The appeal was subsequently resumed and is now fully briefed. As a preliminary matter, Applicant argues that the Examining Attorney should have issued a new non-final action in response to its request for reconsideration, rather than returning the file to the Board, because Applicant raised “the new issue” that Applicant is the first and only user. New arguments or legal theories challenging the same refusal generally do not raise a new issue and this is no exception. The Examining Attorney was correct in issuing the 1 It is unclear if Applicant intended the disclaimer to be submitted in the alternative and intended to maintain that no disclaimer was necessary based on its argument that the term is unitary; however, we need not address that issue in view of our decision below. Serial No. 86864631 3 reconsideration letter and returning the file to the Board’s jurisdiction. We now turn to the refusal before us. An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. 15 U.S.C. § 1056. This section of the statute was amended in 1962 to allow the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary. See TMEP § 1213.01(a) (Oct. 2017). See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015). Merely descriptive or generic terms are unregistrable under Section 2(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. La. Fish Fry, 116 USPQ2d at 1264 (citing In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005)) (“The PTO can condition the registration of a larger mark on an applicant’s disclaimer of an ‘unregistrable component of a mark otherwise registrable.’ 15 U.S.C. § 1056(a)”). See also In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). A mark is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it immediately conveys information of a quality, feature, function, or characteristic of the goods or services in connection with which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark is merely descriptive must be made “in relation to the goods for which registration Serial No. 86864631 4 is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a “single feature or attribute” of the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). In support of the refusal, the Examining Attorney relies on the following dictionary definitions for the words SUBWOOFER, PRO and PROFESSIONAL: SUBWOOFER: A loudspeaker that is designed to produce sounds that are very low-pitched;2 PRO: (informal) short for professional;3 and PROFESSIONAL: a skilled practitioner; and expert.4 2 The American Heritage Dictionary of the English Language (5th ed. 2013) retrieved from www.yourdictionary.com attached to April 25, 2016 Office Action at 4. 3 Collins Dictionary, retrieved from www.collinsdictionary.com, attached to April 25, 2016 Office Action at 9. It is unclear whether this excerpt is from the American or British version of the Collins Dictionary (see In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1313 n.18 (TTAB 2014)); however, a similar definition for pro as “a professional” is found at www.dictionary.com/browse/pro based on the Random House Dictionary (2018). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 4 The American Heritage Dictionary of the English Language, retrieved from www.ahdictionary.com, attached to the November 6, 2016 Final Office Action at 96. Serial No. 86864631 5 The Examining Attorney asserts that “both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. … Specifically, the applicant is a PROFESSIONAL or expert in the field of SUBWOOFERS and the goods, namely speakers, are of a PROFESSIONAL quality.” 10 TTABVUE 6. In further support of her position, the Examining Attorney submitted copies of several third-party registrations where the marks contain the terms PRO, PROS, SUBWOOFER, or WOOFER for speakers, and such terms were disclaimed, registered on the Supplemental Register or registered based on acquired distinctiveness. The Examining Attorney also submitted excerpts from websites of retail outlets advertising their PRO or PROFESSIONAL series of audio equipment.5 This evidence shows consumer exposure to use of these terms to describe a PROFESSIONAL or PRO category of speakers. Finally, the Examining Attorney points to an excerpt from Applicant’s website that includes statements that he has “experience” in the area of subwoofers, offers a “‘best in class’ solution” for subwoofers, his goods are the “preferred way to achieve studio grade low end support,” and his clients’ “equipment is too important to trust to amateur” companies.6 Applicant argues that SUBWOOFER PROS is unitary and denotes “the advantages of bass” thus creating a double-entendre because the “pros of 5 May 30, 2017 Request for Reconsideration Letter at 2-17. 6 November 6, 2016 Final Office Action at 93-94. Serial No. 86864631 6 subwoofers include improved and enriched sound quality.” 8 TTABVUE 8. Applicant further argues that “since SUBWOOFER PROS is capable of more than one interpretation that is not merely descriptive, as the first and only user of SUBWOOFER PROS, Applicant is hereby entitled to registration without disclaiming SUBWOOFER PROS.” Id. These arguments are not persuasive. Descriptiveness must be determined in relation to the goods or services for which registration is sought. Therefore, the fact that a term may have a different meaning(s) in a different context is not controlling. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012); In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); In re Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974). Applicant asserts but does not explain how SUBWOOFER PROS is incongruous. “A phrase qualifies as unitary in the trademark sense only if the whole is something more than the sum of its parts.” TMEP § 1213.05(b). See also Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design for cosmetic products not unitary because the “elements are not so merged together that they cannot be regarded as separate” and the proximity of the words to the design feature “does not endow the whole with a single, integrated, and distinct commercial impression”). In cases where incongruity was found the juxtaposition of terms was pronounced; here, we find nothing incongruous about SUBWOOFER PROS. See, e.g., In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978) (TENNIS IN THE ROUND for providing tennis Serial No. 86864631 7 facilities–tennis is not played in the round)); In re Shutts, 217 USPQ 363, 364-5 (TTAB 1983) (SNO-RAKE for snow removal hand tool–rakes are not used for snow); In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966) (TINT TONE for hair coloring composition–redundancy in meaning created incongruity). In addition, Applicant’s argument that as the first and only user of SUBWOOFER PROS the term is not merely descriptive is unpersuasive. It is well-established that simply because an applicant is the first and only user of a term “does not render that term distinctive, if it otherwise meets the standard set forth in In re Gyulay, In re Chamber of Commerce, and DuoProSS.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016). Applicant argues that SUBWOOFER PROS denotes the source by pointing to Applicant as the professional and indicates “the desired result of using Applicant’s products” because Applicant’s website has a list of pros and cons of using subwoofers and the desired end result of addressing the problems of using subwoofers. 8 TTABVUE 15; 11 TTABVUE 3. Specifically, Applicant asserts: Assuming, arguendo, that SUBWOOFER PROS tells consumers that the goods are created by PROS or PROFESSIONALS in the area of SUBWOOFERS, the term would not be merely descriptive of Applicant’s goods by immediately conveying information as to the qualities, features, or characteristics of the goods “with a degree of particularity.” Instead, it would denote the source and/or serve as an indication of the goods’ origin, namely, the Applicant himself (the “PROFESSIONALS in the area of SUBWOOFERS”). … SUBWOOFER PROS only vaguely suggests a desirable characteristic of Applicant’s goods and a desired result of using the goods, namely, that they reproduce the sought-after bass. 8 TTABVUE 16. Serial No. 86864631 8 While it is correct that the term PROS points to where the goods come from in a qualitative sense, it does not serve as a source identifier. In addition, the argument that it connotes a desired end result is a stretch at best. We find that the wording SUBWOOFER PROS in Applicant’s mark is merely descriptive of the goods in that it immediately conveys a characteristic or feature of the goods, i.e., that they are subwoofers provided by those with experience. No multi-stage reasoning, small leap or mental pause is required to immediately grasp the meaning of the wording SUBWOOFER PROS in connection with “Audio speakers; Loudspeakers; Switch boxes,” which include subwoofers provided by professionals. Decision: The refusal to register is affirmed. However, if Applicant submits the required disclaimer within 30 days of the mailing date of this decision, the decision will be set aside, and the application passed to registration. Trademark Rule 2.142(g). If the disclaimer is submitted, the wording will read as follows: No claim is made to the exclusive right to use “SUBWOOFER PROS” apart from the mark as shown. See TMEP § 1213.08(a)(i).