NCI Group, Inc.

Trademark Trial and Appeal Board

Feb 24, 2012

No. 76693637 (T.T.A.B. Feb. 24, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: February 24, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NCI Group, Inc.
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Serial No. 76693637
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Kay Lyn Schwartz of Gardere Wynne Sewell LLP, for NCI
Group, LLC.

Colleen Dombrow, Trademark Examining Attorney, Law Office
101 (Ronald Sussman, Managing Attorney).
_______

Before Cataldo, Ritchie, and Shaw, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On October 17, 2008, NCI Group LLC (“applicant”) filed
an application to register DOUBLE-LOK in standard
characters on the Principal Register for “standing seam
metal roof deck panels” in International Class 6.
Applicant filed the application under Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a), alleging May 25, 1989 as
its date of first use as well as its date of first use in
commerce.
Serial No. 76693637
The examining attorney refused the application under
Section 2(e)(1) of the Trademark Act; 15 U.S.C.
§1052(e)(1), on the grounds that (1) the proposed mark
DOUBLE-LOK is generic for the applied-for goods, or, in the
alternative, (2) the proposed mark DOUBLE-LOK is highly
descriptive and applicant’s showing of acquired
distinctiveness is not sufficient to allow registration
under Section 2(f) of the Trademark Act; 15 U.S.C.
§1052(f).
GENERICNESS REFUSAL
Generic terms are terms that the relevant purchasing
public understands primarily as the common or class name
for the goods and/or services. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Generic terms are by
definition incapable of indicating a particular source of
the goods and/or services, and cannot be registered as
trademarks and/or service marks; doing so “would grant the
owner of the mark a monopoly, since a competitor could not
describe his goods as what they are.” See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1142 (Fed. Cir. 1987).
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
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Serial No. 76693637
genericness by "clear evidence." Merrill Lynch, supra, 4
USPQ2d at 1143; see also In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Wm. B.
Coleman Co., 93 USPQ2d 2019 (TTAB 2010). The critical
issue is to determine whether the record shows that members
of the relevant public primarily use or understand the term
sought to be registered to refer to the category or class
of goods or services in question. H. Marvin Ginn Corp.,
supra, 228 USPQ at 530; see also In re Women's Publishing
Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Making this
determination “involves a two-step inquiry: First, what is
the genus of goods or services at issue? Second, is the
term sought to be registered ... understood by the relevant
public primarily to refer to that genus of goods or
services?” H. Marvin Ginn Corp., supra, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, supra, 4 USPQ2d at 1143, and
In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227
USPQ 961, 963 (Fed. Cir. 1985).
Turning to the first inquiry, both parties agree that
the genus is properly defined as the identification of
goods set forth in the application, “standing seam metal
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Serial No. 76693637
roof deck panels.” (appl’s brief at 8) (examiner’s brief at
unnumbered 6). This is consistent with our precedent.
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551,
1552 (Fed. Cir. 1991). See also In re Country Music
Association Inc., 100 USPQ2d 1828 (TTAB 2011). Thus, we
find that the genus of goods at issue in this case is
adequately defined by applicant’s identification of goods,
specifically, “standing seam metal roof deck panels.”
Turning to the second inquiry, the examining attorney
argues that the term “DOUBLE-LOK” is the phonetic
equivalent of the term “double lock,” and is understood by
the relevant public primarily to refer to “standing seam
metal roof deck panels.” We agree that our precedent
dictates that a minor and intentional misspelling does not
avoid a finding of genericness if the term sought to be
registered is clearly understood visually and phonetically
as a term that would otherwise be found generic. See Micro
Motion Inc. v. Danfoss A/S 49 USPQ2d 1628, 1631 (TTAB 1990)
(holding MASSFLO generic for mass flowmeters); In re
Stanbel Inc., 16 USPQ2d 1469, 1470 (TTAB 1990) (holding ICE
PAK generic for ice packs); aff’d, 20 USPQ2d 1319 (Fed.
Cir. Jan. 24, 1991); In re Hubbard Milling Co., 6 USPQ2d
1239, 1240 (TTAB 1987) (holding MINERAL-LYX generic for
mineral licks for feeding livestock).
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Serial No. 76693637
Both applicant and the examining attorney stipulate to
the following dictionary definition:
Double Lock Standing Seam: (construction) A
standing seam that uses a double overlapping
interlock between two metal panels. Wiktionary
(2009).

Applicant also stipulates to the authenticity of much
of the other evidence submitted by the examining attorney,
and indeed applicant resubmitted much of it in its own
February 24, 2011 Response to Office Action, along with
explanatory notes. In particular, we take note that
applicant disputes not the evidence itself, or the fact
that the term “double lock” is frequently used in the
construction industry, as referenced below, but rather the
way in which it is referenced. Indeed, we need include
only a sampling of the dozens of articles and websites
cited by the examining attorney referring to the term
“double lock” in reference to “standing seam metal roof
deck panels.” As we do so, we agree with applicant that
not many refer specifically to a “double lock panel.”
Most, rather, refer to the term “double lock” in reference
to the standing seam (as does the dictionary definition,
above).
A double lock standing seam panel offers superior
wind uplift resistance. Some forms of these
panels can now be curved.
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Serial No. 76693637
www.archmetalroof.com. Attached to January 27,
2009 Office Action, p3.

Most roofers who work with steel, zinc and copper
use a single-lock clip system called lap joints.
Not us. Every seam in a Max-Tite roof is a
double lock standing seam. Which is just about
as close as you can get to having a seamless
roof. www.maxtite.net. Attached to January 27,
2009 Office Action, p5.

The two basic types of standing seam panels are
the double lock and the angle lock. These two
types of seam configurations have been used since
the nineteenth century for both roofing and wall
cladding and they provide superior weather
resistance in all climates. The double lock is
measurably more weather resistant than the angle
lock and it is the preferred seam type for most
roofing applications. www.profoundit.com.
Attached to January 27, 2009 Office Action, p10.

Metal roofs come in several major types:
concealed fastener systems include mechanical
lock and snap-lock assembly systems: double-lock,
batten seam, and t-panel are among the most
common concealed fastener panels. The double-
lock standing seam system is truly the top of the
line roofing system. www.staterfg.com. Attached
to January 7, 2010 Office Action, p17.

A mechanically seamed panel is most commonly used
on very low slope roof areas (3 ½ pitch or less).
This style of metal roofing requires the two roof
panels to be engaged with a seaming tool that
folds the metal into a single or double lock
seam. A double lock standing seam panel offers
superior wind uplift resistance.
nemetalsystems.com/productsNE. Attached to
August 19, 2010 Office Action, p3.

CopperCraft offers traditional metal roof panels
including double-lock, standing seam, flat seam,
and ornamental diamond panels. Clips and
accessories are available for each roof panel.
www.coppercraft.com. Attached to March 25, 2011
Office Action, p5.
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Serial No. 76693637

Royal Roofing can install double or single-lock
panels, snap-lock panels and batten-on panels and
with our portable roll-form machine almost any
panel length can be achieved. www.royal-
roofing.com/sheet_metal. Attached to March 25,
2011 Office Action, p7.

As we acknowledge, above, we accept and agree with
applicant’s argument that the bulk of the evidence refers
to “double lock” in reference to the standing seam rather
than to the panel generally. However, we disagree with
applicant that this is actually a legally significant
difference. Indeed, applicant’s identification of goods is
“standing seam metal roof deck panels.” Accordingly, we
find that the panels consist of the seam and there is no
legal differentiation between them. As the evidence
clearly shows, when the seams of the panels are held
together in a “double lock,” the panels are necessarily
thereby joined in a “double lock.” We can find no way
around this argument. Indeed, several of the articles and
websites of record refer directly to the panels as being
“double lock.” Doubt on the issue of genericness is
resolved in favor of the applicant. In re DNI Holdings
Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005). Here, however, we
have none. It is clear from the evidence of record that
the public would understand the term “double-lok,” an
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obvious misspelling and phonetic equivalent of “double
lock,” to refer primarily to “standing seam metal roof deck
panels.” H. Marvin Ginn Corp., supra, 228 USPQ at 530.
Accordingly, we find the applied-for mark to be generic for
the goods for which applicant seeks registration.
ACQUIRED DISTINCTIVENESS
For completeness, we turn next to the refusal that
DOUBLE-LOK is merely descriptive of “standing seam metal
roof deck panels” and that the showing under Section 2(f)
is insufficient to establish acquired distinctiveness.
Since applicant asserted Section 2(f) acquired
distinctiveness during prosecution, while making claim to a
prior Section 2(f) application that disclaimed the term at
issue, applicant has effectively conceded that the mark is,
at a minimum, merely descriptive.1 See The Cold War Museum,
Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d
1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks
registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on
Section 2(f) during prosecution presumes that the mark is
descriptive.”). In any event, as discussed in the prior
section under “Genericness,” we have no doubt that
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Serial No. 76693637
applicant’s mark is merely descriptive of “standing seam
metal roof deck panels” in that the term “double-lok” would
be understood by the relevant public to describes a feature
or function of the “standing seam metal roof deck panels”
for which applicant seeks registration. In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB
1998); In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990); and In re American Greetings
Corporation, 226 USPQ 365 (TTAB 1985).
It is applicant’s burden to prove acquired
distinctiveness. Yamaha Int’l Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988);
In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954) (“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha, supra, 6 USPQ2d at 1008. The amount and character
of evidence required to establish acquired distinctiveness
depends on the facts of each case, Roux Laboratories, Inc.

1 During prosecution, applicant made claim to its prior
Registration No. 1613519, for similar and overlapping goods, and
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Serial No. 76693637
v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970), and
more evidence is required where a mark is so highly
descriptive that purchasers seeing the matter in relation
to the goods or services would be less likely to believe
that it indicates source in any one party. See In re
Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990). Evidence of acquired distinctiveness can
include the length of use of the mark, advertising
expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition. However, a
successful advertising campaign is not in itself
necessarily enough to prove secondary meaning. In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed.
Cir. 1999) (claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars,
not sufficient to establish acquired distinctiveness in
view of highly descriptive nature of mark).
Finding, as we do, that applicant’s mark is generic,
we also find it to be highly descriptive of the goods for
which it seeks registration. Accordingly, as dictated by
our precedent, applicant has a higher hurdle to overcome in
showing acquired distinctiveness.

which disclaims the term “DOUBLE-LOK.”
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Serial No. 76693637
In support of its argument for acquired
distinctiveness, applicant submitted a declaration from its
Vice-president of Marketing, attesting to almost twenty
years of use of the mark in connection with the goods for
which applicant seeks registration. (McCurtain Decl. Par.
2). The declaration also attests to sales revenue of
between $7.8 million and $13.7 million per year over the
past ten years. Id. at Para. 2. The declaration further
attested to between $365 and $58,030 per year in annual
advertising expenses per year over the past six years by
applicant and the “approximately ten (10) NCI
companies/divisions that offer ‘Double-Lok’ standing seam
metal roof deck panels.” Id. at Para. 3, although
apparently the advertising expenditures are only for one
division. Id. at Para. 4. Applicant does not provide any
context for the sales and advertising numbers within the
relevant industry, however. Furthermore, it is evident, as
shown from the evidence submitted by the examining
attorney, a sampling of which is included in the
“Genericness” section, above, that applicant does not
exercise “substantially exclusive” use over its applied-for
“DOUBLE-LOK” mark for the goods sought, as contemplated by
Section 2(f) of the Trademark Act; 15 U.S.C. §1052(f).
Rather, other companies and individuals commonly use the
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Serial No. 76693637
term “double lock” to refer to “standing seam metal roof
deck panels.” Accordingly, we cannot find on this record
that applicant has shown the required level of acquired
distinctiveness of its mark.
Decision: The refusal based on genericness is
affirmed. The refusal based on mere descriptiveness
and applicant’s insufficient showing of acquired
distinctiveness is also affirmed.

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