Carl R. Meyer

Trademark Trial and Appeal BoardSep 14, 2012

No. 77902939 (T.T.A.B. Sep. 14, 2012)

Mailed: 9/14/2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Meyer ________ Serial No. 77902939 ________ Thomas J. Moore of Bacon & Thomas for Carl R. Meyer. Cheryl Clayton, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Quinn, Kuhlke and Lykos, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Carl R. Meyer filed, on December 30, 2009, an intent-to-use application to register the mark SWIMJET (in standard characters) for “exercising equipment, namely, small swimming pool with apparatus providing current of water against which to swim” (in International Class 28). The trademark examining attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark, when applied to applicant’s goods, is merely descriptive thereof; and on the basis of THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77902939 2 applicant’s failure to comply with the request to provide product information. When the refusals were made final, applicant appealed. Applicant and the examining attorney filed briefs.1 Applicant argues that his mark is just suggestive. The totality of applicant’s rationale is as follows: The mark comprises the term “swim” which is suggestive of swimming, and the term “jet” which is suggestive of someone who swims at a relatively high rate of speed. However, taken together, SWIMJET forms a unitary mark with a unique, nondescriptive meaning, which has a bizarre or incongruous meaning as applied to the goods. The user does not swim as fast as a jet. Significant thought and imagination are required to form an association between the mark and the goods. (Brief, p. 6). As to the requirement to provide additional information about the goods, applicant points to its ownership of a prior registration, now cancelled, that listed the identical goods; applicant urges that the earlier registration reflects the Office’s understanding of the goods for purposes of examination. Applicant also states that since the present application is based on an intention to use the mark, it cannot be reasonably expected that product brochures or advertisements exist. The examining attorney maintains that the mark merely describes a primary feature of the goods, namely, that 1 Pursuant to applicant’s request, the Board scheduled an oral hearing. Applicant subsequently withdrew its request, and the hearing was cancelled, with the appeal being submitted on brief. Ser. No. 77902939 3 applicant’s swimming pool features a jet propulsion system that creates a current against which the user swims. The jet propulsion is provided by an apparatus called a “swim jet” or “swim jet system” that creates a current in the water thrusting against the swimmer, allowing the user to swim in place. In support of the refusal, the examining attorney introduced dictionary definitions, and excerpts of third-party websites. With respect to the request for additional information, the examining attorney states that because the application is based on an intention to use the mark, more information was required to reasonably understand how the goods work and how applicant intends to use his mark. Mere Descriptiveness A mark is deemed to be merely descriptive of goods or services, within the meaning of 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. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark 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; rather, it is sufficient that the mark Ser. No. 77902939 4 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); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark 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 mark would have to the average purchaser of the goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). 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). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See, e.g., In re Petroglyph Games, Inc., 91 USPQ2d Ser. No. 77902939 5 1332 (TTAB 2009) (BATTLECAM is merely descriptive of computer game software); In re Tower Tech Inc., 64 USPQ2d at 1317 (SMARTTOWER is merely descriptive of commercial and industrial cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS is merely descriptive of computer programs for use in development and deployment of application programs). The term “swim” is defined as “to move with a motion like that of swimming.” The term “jet” means “a usually forceful stream of fluid (as water or gas) discharged from a narrow opening or a nozzle.” (www.merriam-webster.com). The examining attorney also introduced excerpts of third- party websites, of which the following are representative: TidalFit Quad Swim Jets Perfect for people looking for an amazing workout without the gym, and provides fun for the whole family! Additional intake areas are needed at different points in the swim spa. These swim jets require two commercial rated swimming pool pumps. (www.tidalfit.com) Swim Jet pump (www.fiberliner.com) Swim Jet Systems (www.myaquasuperstore.com) Nozzle, Swivel for Swim Jet (www.spadepot.com) Ser. No. 77902939 6 Now any pool can become an exercise machine providing a well paced aerobic workout, with the installation of BADUSTREAM from Speck pumps. Swim Jets make small pools big and big pools bigger! Speck – The Leader in Swim Jet Systems (www.northwestwholesale.com) The Badu® SwimJet Systems from Speck Pumps are designed for installation during the construction of your pool to create a water treadmill for anyone wanting therapeutic and effective exercise. The self-contained, flush-mounted unit is a jet-propulsion system that pumps water into the pool creating a current in excess of 5,000 gallons per minute from a single recessed jet housing. (www.badujet.com) Based on the evidence of record, we find that the proposed mark SWIMJET is merely descriptive of a significant characteristic or feature of applicant’s type of exercise swimming pool, namely that swim jets are used to create the requisite current. No imagination is required by a purchaser or user to discern that the mark, when applied to the goods, describes a swimming pool featuring swim jets (i.e., an apparatus that emits a forceful stream of water against a swimmer). The third-party evidence shows descriptive uses of “swim jets” in connection with the same or similar type of swimming pool. For the sake of completeness, we are compelled to make one additional observation. Although applicant made reference to Ser. No. 77902939 7 his earlier registration, he did not specifically argue that this fact compels a reversal of the present refusal. Applicant previously owned Reg. No. 1121467 (issued July 3, 1979) on the Principal Register for the identical mark and identical goods involved herein. The registration was not renewed, however, and the registration was cancelled on February 6, 2010. Applicant's prior, cancelled, registration does not compel reversal of the examining attorney herein. We have no information of record regarding applicant's prior registration, nor are we familiar with the prosecution history or evidentiary record thereof. Further, the fact that applicant at one time owned a now-expired registration for the same mark for identical goods does not show that his mark is inherently distinctive and not merely descriptive. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1048 n.2 (TTAB 2002). While it is unfortunate that applicant's prior registration was not maintained, our precedent is clear; a cancelled or expired registration has no probative value other than to show that it once issued. Sunnen Products Co. v. Sunex Int’l. Inc., 1 USPQ2d 1744, 1747 (TTAB 1987). Importantly, the presumptions which benefit a subsisting registration on the Principal Register, see Trademark Act § 7(b), 15 U.S.C. § 1057(b), expire with the registration. Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA 1973) (“Whatever benefits a registration conferred upon Ser. No. 77902939 8 appellee were lost by him when he negligently allowed his registration to become canceled.”); and In re Hunter Publishing Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation “makes the question of registrability ‘a new ball game’”). We acknowledge that, had applicant maintained his prior registration, he would have a registration identical to the one he now seeks. However, that did not happen, and the Office must apply the same standard to the examination of applicant's new application as it applies to any other application. Applicant is not entitled to favorable treatment because he inadvertently allowed his prior registration to be cancelled. Accord In re Piano Factory Group Inc., 85 USPQ2d 1522, 1527 (TTAB 2006) (“Furthermore, the fact that the mark ‘VOSE & SONS’ was at one time registered on the Principal Register does not justify registration in light of the substantial evidence herein as to the primary significance of the term ‘VOSE’ as a surname.”). We conclude that the proposed mark SWIMJET is merely descriptive of swimming pools that feature swim jets. Request for Information TMEP § 814 (8th ed. 2011) reads, in pertinent part, as follows: Sometimes, it is necessary for the examining attorney to request additional information from an applicant in order to examine the Ser. No. 77902939 9 application properly, pursuant to 37 C.F.R. § 2.61(b). If the applicant does not comply with a requirement for information, registration may be refused. The nature of applicant’s goods is readily apparent from the identification of goods itself. As noted above, the identical mark and identically worded identification were the subject of applicant’s earlier registration, now expired. Further, the examining attorney’s evidence comprising third- party websites showing goods the same as or virtually identical to applicant’s goods provides sufficient information regarding “how the goods work” so that nothing more was necessary to examine the intent-to-use application properly. Accordingly, we do not see the need for additional information, and the examining attorney’s request therefor is deemed unnecessary for an effective examination of the present application. Decision: The refusal based on mere descriptiveness under Section 2(e)(1) is affirmed. The refusal based on applicant’s failure to comply with a request for more information is reversed.