Jonathan R. Iverson

Trademark Trial and Appeal Board

Sep 28, 2004

No. 76262553 (T.T.A.B. Sep. 28, 2004)

Mailed: September 28, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jonathan R. Iverson
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Serial No. 76262553
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Richard John Bartz of Bartz & Bartz, P.A. for Jonathan R.
Iverson.
Alicia P. Collins, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
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Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On May 29, 2001, applicant filed the above-identified
application to register the mark SCUBA SYSTEMS on the
Principal Register for “scuba equipment, namely, masks,
fins, buoyancy vests, air regulators, breathing equipment
and travel bags.” The application was based on applicant’s
claim of a bona fide intention to use the mark in commerce.
The Trademark Examining Attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76262553
2
that applicant’s mark is generic for the identified goods.
In particular, the Examining Attorney stated that SCUBA
SYSTEMS identifies “the genus (category or class) of the
applicant’s goods.” First Office action, p. 2. In support
of the refusal, the Examining Attorney submitted
definitions of “scuba diving” as “the sport of swimming
under water with special breathing equipment”1 and “system”
as “[a] group of interacting, interrelated, or
interdependent elements forming a complex whole.”2 In
addition, the Examining Attorney submitted excerpts of
articles from the NEXIS database that refer to “scuba
system(s).” The following are examples:
The complete scuba system consists of a regulator
system (pressure and depth gauges, compass),
buoyancy compensator (a vest that attaches to
the tank) for ….
(Montgomery Advertiser, July 26, 1992);
This is one of those “Why didn’t I think of that?”
ideas. The new SWEM system from Aquavit, Inc.
is a compact scuba system for shallow-water use.
(Trailer Boats, December 1, 2000);
… the Academy will conduct additional breathing
apparatus testing, such as mixing helium and
oxygen in an open circuit scuba system for
deep depths, he said.
(Navy News and Undersea Technology,
January 31, 2000); and
1 Cambridge Dictionaries Online, Cambridge International
Dictionary of English, 2000 (electronic version).
2 The American Heritage Dictionary of the English Language (3d
ed. 1992)(electronic version).
Ser No. 76262553
3
… there will be seminars and demonstrations on
technical diving, nitrox, trimix, or rebreathers.
You can learn all about these advanced scuba
systems.
(Skin Diver, September, 1998).
Also, the Examining Attorney held the identification
of goods unacceptable because it included goods in more
than one class.
Applicant, in response to this Office action, argued
against the refusal to register, maintaining that his mark
is only suggestive. Applicant submitted an excerpt from
Webster’s New Ninth Collegiate Dictionary defining “scuba”
as “an apparatus used for breathing while swimming
underwater.” Also, applicant amended his identification of
goods to “scuba equipment, namely, masks, fins, and travel
bags.”
The Examining Attorney accepted the amendment to the
identification of goods, but was not persuaded by
applicant’s argument on the issue of genericness. The
refusal on this basis was continued. The Examining
Attorney stated that the nature of the goods was not clear
and requested that applicant submit samples of
advertisements and promotional materials for goods of the
same type.
Ser No. 76262553
4
In his response, applicant again argued against the
genericness refusal. Applicant submitted printouts of
pages from the website DiversDiscount.com which shows
masks, fins and backpacks that may be ordered from the
website.
The Examining Attorney issued a final refusal to
register the mark on the ground that SCUBA SYSTEMS is
merely descriptive of “scuba equipment, namely, masks,
fins, and travel bags.”3 It is the Examining Attorney’s
position that the individual terms “scuba” and “system” are
descriptive of applicant’s identified goods and that the
composite term SCUBA SYSTEMS is equally descriptive. The
Examining Attorney argues that the mark SCUBA SYSTEMS
“immediately tells the consumer that applicant’s goods are
components of scuba systems.” Final Office action, p. 2.
With the final Office action, the Examining Attorney
submitted printouts from websites of companies that sell
diving equipment. According to the Examining Attorney,
this evidence “illustrates that masks, fins, and travel
bags are generally used in conjunction with scuba breathing
apparatus (e.g. regulator, octopus, BCD, tank, gauge) for
the purpose of scuba diving. The goods identified in the
3 The Examining Attorney withdrew the refusal based on
genericness.
Ser No. 76262553
5
application are part of an interrelated and interdependent
group of equipment used for scuba diving.” Final Office
action, page 2.
Applicant filed a notice of appeal, which was timely
followed by applicant’s appeal brief. The Examining
Attorney filed a brief and applicant filed a reply brief.
An oral hearing was not requested.
Applicant contends that its mark is at most
suggestive. According to applicant, the individual terms
comprising its mark are not descriptive, that is, the term
scuba is not descriptive of masks, fins or travel bags
because none of these items are used for breathing, and the
word systems is not descriptive of the goods because there
is no connection between the word systems and such goods.
Also, applicant points out that the identified goods may be
used by water enthusiasts other than scuba divers such as
snorkelers, cave divers and float tubers.
The only issue on appeal is whether SCUBA SYSTEMS is
merely descriptive of the identified goods. It is well
settled that a term is considered to be merely descriptive
of goods or services, within the meaning of Section 2(e)(1)
of the Trademark Act, if it immediately describes an
ingredient, quality, characteristic or feature thereof or
if it directly conveys information regarding the nature,
Ser No. 76262553
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function, purpose or use of the goods or services. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the goods or
services in order for it to be considered to be merely
descriptive thereof; rather it is sufficient if the phrase
describes a significant attribute or idea about them.
Moreover, whether a term 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 those
goods or services and the possible significance that the
term would have to the average purchaser of the goods or
services because of the manner of its use. See In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Applicant’s goods, as amended, are “scuba equipment,
namely masks, fins and travel bags.” Although masks and
fins are not underwater breathing apparatus, they clearly
are items, as shown by the record, that are used when scuba
diving.
When the mark SCUBA SYSTEMS is considered in relation
to masks and fins, it immediately informs prospective
purchasers that the identified goods are components of
systems for swimming under water, i.e., scuba diving
Ser No. 76262553
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systems. See, e.g., Remington Products Inc. v. North
American Philips Corp., 892 F.2d 1576, 3 USPQ2d 1444, 1448
(Fed. Cir. 1990)[omission of the word “PERSONAL” from the
phrase “TRAVEL CARE” does not obviate descriptiveness of
such phrase for personal travel care products].
We recognize that masks and fins may also be used in
other water activities. However, as previously noted, it
is not necessary that a term describe all of the properties
or functions of the goods or services in order for it to be
considered to be merely descriptive thereof.
Further, the fact that travel bags may not be thought
of as components of scuba diving systems, since they are
not actually used when swimming under water, does not mean
the mark is not merely descriptive. In order for a term to
be merely descriptive, it does not have to describe all
goods or services that are included within applicant’s
identification of goods or services. In re Analog Devices,
6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d
1879 (Fed. Cir. 1989).
Decision: The refusal to register is affirmed.