DDS Environ-mental, Inc.

Trademark Trial and Appeal Board

Aug 22, 2003

No. 76317128 (T.T.A.B. Aug. 22, 2003)

Mailed: August 22, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DDS Environmental, Inc.
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Serial No. 76/317,128
_______
Mark Levy of Salzman & Levy for DDS Environmental, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Hairston, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
DDS Environmental, Inc. has filed an application to
register the mark DUALSAND for “water and wastewater
filters.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e(1), on the
1 Serial No. 76/317,128, filed on September 26, 2001, alleging a
date of first use of March 1, 1997 and a date of first use in
commerce of June 22, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/317,128
2
ground that, when used in connection with applicant’s
goods, the mark DUALSAND is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested. We affirm the refusal to
register.
Before turning to the merits of the case, there are
two matters we must discuss. First, applicant submitted
with its response to the Examining Attorney’s first Office
action a typed list of third-party registrations of marks
containing the word “DUAL” or “SAND.” The Examining
Attorney, in her next office action, advised applicant that
“[s]ince copies of the registrations were not provided,
these registrations are not part of the record and have not
been considered.” The Examining Attorney also cited to
several Board decisions in support of her position.
Applicant, in its appeal brief, again listed the third-
party registrations and the Examining Attorney, in her
appeal brief, has now objected thereto. In its reply
brief, applicant argues that the Examining Attorney’s
objection is unjustified because the list of third-party
registrations was taken from the USPTO’s Trademark
Electronic Search System (TESS). A mere list of third-
party registrations is insufficient to make them of record.
In re Duofold, 182 USPQ 638, 640 (TTAB 1974). Rather,
Ser No. 76/317,128
3
copies of the actual registrations or the electronic
equivalent thereof, i.e., printouts of the registrations
which have been taken from the USPTO’s computerized data
base must be submitted. Under the circumstances, the
Examining Attorney’s objection is well taken and we will
not consider applicant’s list of third-party registrations.
We hasten to add that even if we had considered these
registrations, our decision herein would be the same.
Second, for the first time in its appeal brief,
applicant argues that the mark DUALSAND is registrable
under the provisions of Section 2(f) of the Act. Applicant
points to evidence which it maintains is sufficient to
support registration under Section 2(f). Applicant’s
evidence is clearly untimely under Trademark Rule 2.142(d),
and has not been considered. Thus, the only issue in this
case is whether the mark DUALSAND is merely descriptive of
the identified goods.
We turn then to the merits of the case. The Examining
Attorney contends that the term “dual sand” is used in the
water and wastewater treatment industries to describe a
specific filtration process and the filters used in that
process. Thus, it is the Examining Attorney’s position
that DUALSAND immediately conveys information about a
feature or characteristic of the identified goods, namely
Ser No. 76/317,128
4
that they are for use in the “dual sand filtration
process.” In support of the refusal, the Examining
Attorney points to Utility Patent No. 5,843,308 owned by
applicant for a “Wastewater Management System.” The patent
reads in pertinent part:
The use of sand-filtering systems to treat
wastewater has become a preferred means of
eliminating harmful materials from contaminated
effluent. The present invention employs a
double sand filtering system in order to
substantially reduce phosphorous, pathogens
and protozoan from wastewater effluents.
To the best of the inventor’s knowledge, this
is the first time that an up flow, continuously-
cleaning, continuously-backwashed filtration
system uses double sand-filters in series.
. . .
The dual sand-filtration system affords an
outstanding level of removal of phosphorous,
total suspended solids, turbidity and
biochemical oxygen demand. (BOD5).
Further, the Examining Attorney submitted a copy of
Utility Patent No. 4,104,164 owned by a third party which
reads in relevant part:
Waste water from cleaning establishments
containing large amounts of contaminants,
such as salt, dirt, soils, organic compounds,
soaps, detergents, waxes, chemicals and
conditioning agents, enters through the inlet
1 into the dual sand removal chamber means 2
where the gross solids are removed.
In addition, the Examining Attorney submitted a number of
printouts of articles from the Internet which make
Ser No. 76/317,128
5
reference to “dual sand” in connection with water and
wastewater treatment. The following excerpts (with dual
sand highlighted) are representative examples:
Testing Equivalence of Microfiltration and
Continuous-Backwater-Upflow, Dual-Sand
Filtration Technologies.
Accordingly, NYC DEP [New York City Department of
Environmental Protection] developed and implemented
protocols for a study that compares the pathogen
removal capabilities of microfiltration and
continuous backwash-upflow, dual-sand (CBUDS)
filtration by operating a facility of each
system, side by side, with the same influent and
testing methods.
(www.epa.gov/region02/water/nycshed, August 3, 2002).
. . .
Dual Sand Filters are utilized to remove any small
floc (i.e. suspended solids) that passes through
the clarifiers.
(www.durrenvironmental.com, August 3, 2002).
. . .
The new system is a dual sand filtration system
with chlorine treatment, much like the old plant.
(thames.northnet.org, August 5, 2002).
. . .
The design/build team chose an innovative dual
sand filtration process that will follow advanced
secondary treatment of the wastewater.
(www.dufresne-henry.com, August 5, 2002).
. . .
“The main thing we’re doing is installing a dual
sand filtration system,” he said … . “The dual sand
filters are basically two containers filled with
sand. The water is pumped to the bottom of the
Ser No. 76/317,128
6
first and percolates up to the top. Then it is
pumped to the bottom of a second container filled
with finer sand,” Curly said.
(www.thedailystar.com, August 5, 2002, from the
February 7, 2002 issue of The Daily Star).
Applicant, in urging reversal of the refusal to
register, argues that its mark is at most suggestive; that
neither word, “dual” or “sand,” connotes water or filters;
that the average consumer would not understand what is
meant by the mark DUALSAND; and that the combined term
DUALSAND is incongruous.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (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, significant quality or property
thereof. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Further, it is well established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
Ser No. 76/317,128
7
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
We conclude that the evidence establishes that
DUALSAND is merely descriptive of applicant’s water and
wastewater filters in that it immediately conveys that the
filters are for use in the “dual sand filtration” system or
process. It is clear from the evidence that “dual sand” is
a term used in the water and wastewater treatment
industries to describe a type of filtration process. As
the Examining Attorney has noted, where, as here, the
evidence demonstrates that applicant’s combined mark
DUALSAND conveys information about applicant’s goods, it is
unnecessary to engage in an analysis of each individual
component in an effort to ascertain whether, when used
together, said words convey information about the goods.
See In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998). Thus,
this case is distinguishable from those cases relied on by
applicant involving marks that were found to be incongruous
or create a unique commercial impression because of the
combination of words therein. Far from being unique in
commercial impression, applicant’s term is already in use
by others in the water and wastewater treatment industry to
Ser No. 76/317,128
8
describe a type of filtration process and the filters used
therein.
Finally, as pointed out by the Examining Attorney, the
purchasers of applicant’s goods are unlikely to be ordinary
consumers, but rather individuals with some knowledge of
the water and wastewater treatment industry. Such
purchasers would readily recognize the descriptive
significance of DUALSAND as used in connection with the
identified goods.
In view of the foregoing, we find that on the record
before us, the term DUALSAND would be immediately
recognized by prospective purchasers as a term that is
merely descriptive of a feature or characteristic of
applicant’s identified goods.
Decision: The refusal to register under Section
2(e)(1) is affirmed.