Degelman Industries Ltd.

Trademark Trial and Appeal BoardFeb 11, 2011

No. 77667257 (T.T.A.B. Feb. 11, 2011)

Mailed: February 11, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Degelman Industries Ltd. ________ Serial No. 77667257 _______ Scott A. Daniels of Daniels Patent Law PLLC for Degelman Industries Ltd. Susan L. Dubois, Trademark Examining Attorney, Law Office 111 (Robert Lorenzo, Managing Attorney). _______ Before Holtzman, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Degelman Industries Ltd. (“applicant”) has appealed from the final refusal of the trademark examining attorney to register ONE PASS, in standard character format, for “lawn mowers; power-operated sprayers; tractor towed agricultural implements, namely mowers,” in Class 7. The issue before us in this appeal is whether applicant’s mark ONE PASS is merely descriptive of lawn mowers, power- THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77667257 2 operated sprayers and mowers pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). 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. 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 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. In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which it is being used on or in connection with the goods, and the possible significance that the term would have to the average purchaser of the goods 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). In other words, the question is not Serial No. 77667257 3 whether someone presented with only the mark could guess what the goods are. Rather, the question is whether someone who knows what the goods are will immediately understand the mark as directly conveying information about them (i.e., whether someone familiar with applicant’s lawn mowers, mowers, and power-operated sprayers will understand ONE PASS to convey information about the goods). In re Tower Tech Inc., 64 USPQ2d 1314, 1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). Finally, in determining whether a mark is merely descriptive, a composite mark such as ONE PASS must be considered in its entirety. In re Richardson Ink Co., 511 Serial No. 77667257 4 F.2d 559, 185 USPQ 46, 47(CCPA 1975); In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030 (TTAB 2007). To support her descriptiveness refusal, the examining attorney referenced the dictionary definitions of the words “one” and “pass.” “One” is defined as “being a single unit.”1 “Pass” is defined as “to go across, over or through.”2 The examining attorney contends that when applied to applicant’s goods “the term immediately identifies a key feature of the goods – that they are able to perform their function of cutting and spraying by going over, across or through a field a single time.”3 The examining attorney also references an excerpt applicant’s website (degelman.com) attached to the April 30, 2009 Office Action. Applicant uses the term “one pass” in the following manner: Furthermore, applicant’s website touts another feature of its products: “ONEPASS system … reduces operating costs by 1 The online Merriam-Webster Dictionary (Merriam-webster.com) attached to the examining attorney’s brief. The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 2 Id. 3 Examining Attorney’s Brief, unnumbered page 4. Serial No. 77667257 5 mowing and applying herbicide simultaneously.” In other words, a user may cut and spray in one pass. Finally, in her January 20, 2010 Office Action, the examining attorney referenced evidence from the Internet by presenting links to access websites but she did not download and attach the information. The examining attorney must download and attach articles found on the Internet to the Office Action to make them of record. Because of the transitory nature of Internet postings, the websites referenced only by links may be modified or deleted at a later date without notification. Thus, the information identified by the links may not be subject to verification by applicant to corroborate or refute the information in the website. See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (“Due to the transitory nature of the Internet, the party proffering information obtained through the Internet runs the risk that the website owner may change the information contained therein”). Although the Trademark Manual of Examining Procedure does not directly address the use of Internet links as evidence, USPTO practice requires that the evidence relied upon by the examining attorney be placed in the record and copies sent to the applicant. TMEP § 710.01 (7th ed. 2010); see also TMEP § 710.01(b) (“Articles Serial No. 77667257 6 downloaded from the Internet are admissible as evidence of information available to the general public”). Accordingly, we did not consider the websites identified by the links referenced by the examining attorney in her Office Action. Based on the meaning of the term “one pass” and the evidence of record, we find that the mark ONE PASS when used in connection with applicant’s goods immediately informs purchasers, without any need for a multistep reasoning process, that the product will cut or spray property in one application. Applicant contends that ONE PASS is suggestive because it implies “a reduction in work.” [A] multi-step reasoning process is required before the consumer can receive the message that ONE PASS goods perform multiple functions to an area of land simultaneously/with the same agricultural machine. The mental leap would consist of the consumer recognizing that the phrase “one pass” as used on agricultural implements, refers to a reduction in work, connect that reduction in work to some function or characteristic of the implement, and determine that the function/characteristic is performing multiple functions to an area of land simultaneously.”4 4 Applicant’s Brief, p. 8. Serial No. 77667257 7 Applicant’s argument is based on the premise that consumers will perceive the characteristic or function at issue as being the ability of applicant’s product to cut and spray simultaneously as opposed to performing the applications once. However, applicant has presented no evidence regarding consumer perception of its mark. Moreover, as indicated above, applicant advertises its products as being able to “Cut And Apply Herbicide In One Pass.” Applicant also contends that the Board follows a three-part test to evaluate whether a mark is merely descriptive: 1. The degree of imagination necessary to connect the mark with the goods; 2. The competitor’s need test; and 3. The competitor’s use test. Applicant bases this argument on No Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985). However, these “tests” were set out in an inter partes case in a discussion of whether use of a term by third parties on their packaging detracted from the plaintiff's trademark rights. Thus, to the extent that applicant is suggesting that the Office must prove all three points, applicant is incorrect. See In re Carlson, 91 USPQ2d 1198, 1203 (TTAB Serial No. 77667257 8 2009). Since this decision issued in 1985, there have been numerous decisions from the Court of Appeals for the Federal Circuit, our primary reviewing court, and by the Board, making clear that the test for descriptiveness is whether a term “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Applicant also referenced three previously registered third-party marks for ONE PASS or ONEPASS; Registration No. 3271591 for squeegees, Registration No. 3481342 for electric hair stylers and Registration No. 2773098 for spackling compound, as the basis for arguing that “ONE PASS is at the very least capable of being an inherently distinctive term.”5 Applicant only made reference to these registrations in its brief; applicant did not submit copies of the registrations during prosecution. This is not the proper way to make such registrations of record. See In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998). Even if the registrations were considered, 5 Applicant’s Brief, pp. 11-12. Serial No. 77667257 9 they would not be persuasive. Third-party registrations are not conclusive on the question of descriptiveness. Each case must stand on its own merits, and a mark that is merely descriptive should not be registered on the Principal Register simply because other marks that share those characteristics appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977) (“we are not so much concerned with what has been registered, but rather what should or should not be registered”). The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001). In view of the foregoing, we find that applicant’s mark ONE PASS when used in connection with lawn mowers, mowers and power-operated sprayers is merely descriptive. Decision: The refusal to register is affirmed.