G-Force, Inc.

Trademark Trial and Appeal BoardMar 6, 2013

No. 85301113 (T.T.A.B. Mar. 6, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 6, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re G-Force, Inc. _____ Serial No. 85301113 _____ Clement Cheng of Newhope Law PC for G-Force, Inc. Nelson B. Snyder III, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _____ Before Bergsman, Wellington and Lykos, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: G-Force, Inc. (“applicant”) filed an intent-to-use application to register the mark GYROBALL, in standard character form, for “exercise machines; manually- operated exercise equipment,” in Class 28. The Trademark Examining Attorney refused registration on the ground that applicant’s mark is merely descriptive. Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1). According to the Trademark Examining Attorney, the mark GYROBALL describes exercise balls with gyroscopes. Serial No. 85301113 2 “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (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). 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 In re Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial cooking Serial No. 85301113 3 towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). In this regard, we must consider the issue of descriptiveness by looking at the mark in its entirety. However, “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, 498 (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). In this regard, “incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498 (the association of applicant’s mark TENNIS IN THE ROUND with the phrase “theater-in-the-round” creates an incongruity because applicant’s services do not involve a tennis court in the middle of an auditorium). Applicant explained that the mark GYROBALL identifies a “gyro exerciser, that is an exercise machine held in the hand and manually-operated to function as a wrist exerciser.”1 While applicant concedes that the term “gyro” refers to a 1 Applicant’s Brief, p. 4. Serial No. 85301113 4 gyroscope and that the term “ball” refers to a spherical object,2 applicant contends that the relevant public will describe applicant’s product as a gyroscopic tool, not a gyroscopic ball and, thus, “GYROBALL is a new and unique term that has given rise to a new commercial impression.”3 However, the Trademark Examining Attorney submitted two articles using the term “Gyro Ball” in a descriptive or generic manner. The first article entitled “What Does A Gyro Ball Exerciser Do? was posted on the July 10, 2011 LIVESTRONG.COM website.4 The article reads, in pertinent part, as follows: A gyro ball is a novel exercise device. Proponents claim that the gyro ball, sold by companies under such names as Powerball, GyroBall and Gyro Ball, can benefit you in a number of ways. … As of publication date, there is no research to validate these claims, although the gyro ball operates as an isometric resistance device, which are proven strengthening tools. HOW IT WORKS A gyro ball is about the size of a tennis ball. It has rotor in the center. When it is activated, the ball starts to rotate. … POTENTIAL BENEFITS 2 A “gyro” is an abbreviation for a “gyroscope.” Yahoo!Education website (http://education.yahoo.com) attached to the November 5, 2011 Office action. A “gyroscope” is defined as follows: A device consisting of a spinning mass, typically a disk or wheel, mounted on a base so that its axis can turn freely in one or more directions and thereby maintain its orientation regardless of any movement of the base. Id. A “ball” is defined as “[a] spherical object or entity. Id. 3 Applicant’s Brief, pp. 5-6. 4 November 5, 2011 Office action. Serial No. 85301113 5 Gyro ball manufacturers tout its ability to strengthen and tone your arms, shoulders, wrists and hands in the same as a dumbbell curls. … TARGET MARKETS In addition to weightlifters and people undergoing rehab, manufacturers recommend gyro balls for specific sports such as baseball, basketball, golf and tennis. … * * * REFERENCES •Dynaflex International: What is a GyroBall? •Powerballs: NSD Powerball & Sport •The Sharper Image: GyroBall Hand Exerciser A similar article was posted on the September 26, 2011 health section of the eHow.com website.5 Gyro Ball Exercises Overview Gyro balls create torque resistance, which makes them a great tool for strengthening the wrists, forearms, upper arms and fingers. It is roughly the size of a tennis ball and weighs about a half pound. The ball contains a gyroscope, a spinning wheel inside the ball, which reacts to your movement. … Wrists and Forearms Grasp the gyro ball in one hand and stretch out your arm. … The Examining Attorney also submitted an excerpt from the Weterm Electronics website (weterm.com) advertising the sale of Gyro Balls.6 5 November 5, 2011 Office action. Serial N W exercise consum the des readily does no commer T applican Parsons and Har 1150 (T 6 Novem o. 853011 e find th equipme ers that th criptive te convey to t, as appl cial impre hat other t's goods Ammonia tford Fire TAB 1982) ber 5, 2011 13 at within nt,” the m e product rms “gyro consumers icant asse ssion. equally does not a Company Insurance . Office actio the contex ark GYR is an exerc ” and “ba the essen rts, creat or more lter the fo , Inc., 299 Co. v. The n. 6 t of “exer OBALL d ise ball wi ll” retain tial featur e an incon apt descri regoing. I F.2d 855, Structure cise mach irectly an th a gyrosc their desc e of the pr gruous te ptive term n re Rosel 132 USP d Settleme ines; man d precise ope. The riptive si oduct. Th rm that inology ux Chemic Q 627, 632 nts Co., 21 ually-oper ly convey combinatio gnificance e combina creates a may exist al Co., In (CCPA 1 5 USPQ 1 ated s to n of and tion new for c., v. 962) 145, Serial No. 85301113 7 Moreover, the fact that a term is not found in a dictionary is not controlling on the question of registrability if the examining attorney can show, as he did here, that the term has a well understood and recognized meaning. See In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (BREADSPRED held merely descriptive of jellies and jams). Finally, applicant contends that its European registration for the mark GYROBALL is probative that the mark is not merely descriptive. However, the Federal Circuit has held that “evidence of registration in other countries is not legally or factually relevant to potential consumer perception of [applicant’s goods] in the United States.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007). Even assuming the European Trademark Office prosecution of trademark applications is similar to U.S. trademark examination practice and procedure, the European Trademark Office decision to register GYROBALL does not bind the Board. The Board must decide each case on its own merits and assess each mark on the record of public perception submitted with each application. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Section 20 of the Trademark Act, 15 U.S.C. § 1070, gives the Board the duty and authority to decide an appeal from an adverse decision of the Examining Attorney. This duty may not be delegated by adoption of the conclusions reached by a different trademark office. See In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). Decision: The refusal to register is affirmed.