Interstate Resources, Inc.

Trademark Trial and Appeal BoardMay 11, 2011

No. 77787077 (T.T.A.B. May. 11, 2011)

Mailed: May 11, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Interstate Resources, Inc. ________ Serial Nos. 77787077 and 777871011 _______ John S. Hale of Gipple & Hale for Interstate Resources, Inc. Kelly Trusilo, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Bucher, Kuhlke and Wolfson, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Interstate Resources, Inc., has filed applications to register as trademarks on the Principal Register the standard character mark INTERSTATE RESOURCES2 1 Inasmuch as the issues raised by these appeals are similar, the Board is addressing them in a single opinion. Citations to the briefs refer to the briefs filed in application Serial No. 77787077, unless otherwise noted; however, we have of course, considered all arguments and evidence filed in each case. 2 Application Serial No. 77787077, filed on July 22, 2009, based on an allegation of an intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial Nos. 77787077 and 77787101 2 and 3 for services identified as “generation of electricity” in International Class 40. The examining attorney refused registration pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), based on applicant’s failure to comply with the requirement to disclaim the word INTERSTATE on the ground that it is merely descriptive of applicant’s services within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1). We affirm the refusal of registration in the absence of a disclaimer in each application. An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a). Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is ground for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK 3 Application Serial No. 77787101, filed on July 22, 2009, based on an allegation of an intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b). Serial Nos. 77787077 and 77787101 3 Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). A term 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. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term 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; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). In support of her position that the term INTERSTATE is merely descriptive of applicant’s services, the examining attorney submitted several dictionary definitions, including the following: INTERSTATE – existing or carried on between states, especially of the US. Oxford English Dictionary (2010). Serial Nos. 77787077 and 77787101 4 In addition she submitted excerpted articles from various online sources, printouts from applicant’s website and third-party registrations where the term INTERSTATE is either disclaimed or registered on the Supplemental Register. In referencing the record, the examining attorney argues: A web page from the applicant’s website ... evidences that applicant is indeed exporting energy produced to the regional transmission grid. This web page features information regarding applicant’s current services, “this energy can be used at our paper mill ... and the excess exported for sale to the regional electrical transmission grid.” ... As stated in the article ... from the Transmission Agency of Northern California, a “transmission grid” consists of a system of interconnected generating facilities, substations and transmission lines that provide energy from its sources to its end users.” Br. p. 4. The record also includes the following excerpt from an online article on energy deregulation: As the industry continued to develop, utilities combined into large financial holding companies. In 1935, almost half of the generation of electricity in the country was under the control of three large holding companies. Because of the size, complexity and interstate nature of these trusts, their effective regulation by state public utility commissions became impossible. ... At the same time, the Federal Power Commission (now the Federal Energy Regulatory Commission) was created for the purpose of regulating the interstate wholesale electricity market. Serial Nos. 77787077 and 77787101 5 “Electricity Deregulation” August 2004 retrieved from newsbatch.com. She concludes that “according to applicant’s own website, its excess energy generated is being utilized in the interstate transmission grid.” Br. p. 4. We find that the examining attorney has made a prima facie case that the word INTERSTATE used in connection with applicant’s services is merely descriptive. The word INTERSTATE clearly and unambiguously describes a significant feature of the services, namely that they are interstate in scope, as is demonstrated by the record. We also find that the word INTERSTATE when combined with the word RESOURCES and, in the case of Application Serial No. 77787101, the background design, does not lose its descriptive significance. Applicant argues that it “is not a carrier of electricity nor is it a multi-state broker. It merely generates electricity from steam produced in its waste disposal process.” Br. p. 4. However, as noted above, the term INTERSTATE indicates the scope of the service; applicant does not have to be a broker for the term to have descriptive significance. It is similar to the terms “national,” “international,” “global” or “worldwide.” These terms also may be merely descriptive of services that Serial Nos. 77787077 and 77787101 6 are nationwide or international in scope. See TMEP Section 1209.03 (7th ed. 2010) and cases cited therein. In addition, applicant argues that “[a]n ordinary consumer taken from the realm of the general public would not normally associate the word ‘interstate’ with the presently identified services of generating electricity. It is by no means clear as to what information if any would be immediately conveyed to prospective purchasers of the services from Applicant.” Br. p. 4. While the ultimate end users may include the general public, applicant’s direct consumers would be operating at the wholesale market of energy purchasing. As noted on applicant’s website, its excess energy is “exported for sale to the regional electrical transmission grid.” In any event, it would be clear to any consumer that the term INTERSTATE indicates that the energy generated is for use beyond a local or in- state use. Finally, both applicant and the examining attorney submitted third-party registrations to show that the USPTO has alternatively treated the word INTERSTATE as descriptive or not descriptive by sometimes requiring a disclaimer of the term and sometimes not requiring a disclaimer. The examining attorney submitted over 35 third-party registrations for various services where the Serial Nos. 77787077 and 77787101 7 term is either disclaimed, registered under Section 2(f) based on acquired distinctiveness or resides on the Supplemental Register. The third-party registrations submitted by applicant are also for various services, several are cancelled and five support the opposite proposition in that they are registered based on acquired distinctiveness or reside on the Supplemental Register. For the most part, the registrations are not specific to the services involved in this case. The third-party registration highlighted by applicant, for the mark COLORADO INTERSTATE GAS, is registered under Section 2(f), indicating the wording is not inherently distinctive. To the extent these third-party registrations have probative value they weigh in favor of a finding of mere descriptiveness. We hasten to add that we do not rely on them for our ultimate conclusion. As is well established, prior decisions in other applications are not binding on the Board and each case is evaluated on its own record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) Applicant correctly states that in cases of refusals under Section 2(e)(1) we must resolve doubt in favor of applicant; however, we have no such doubt in this case. Serial Nos. 77787077 and 77787101 8 Thus, the disclaimer requirement is appropriate. In view of the above, the requirement to provide a disclaimer for the word INTERSTATE is affirmed in each application. Decision: The refusal to register based on the requirement for a disclaimer of INTERSTATE is affirmed in each application. However, if applicant submits the required disclaimer of INTERSTATE in each application to the Board within thirty days, this decision will be set aside as to the affirmance of the disclaimer requirement.4 See Trademark Rule 2.142(g), 37 C.F.R. §2.142. 4 The standardized printing format for the required disclaimer text is as follows: “No exclusive right to use INTERSTATE is claimed apart from the mark as shown.” TMEP 1213.08(a) (5th ed. 2007).