Nicholas D. Scoyni, a Sole Proprietorship

Trademark Trial and Appeal Board

Sep 1, 2017

No. 87197276 (T.T.A.B. Sep. 1, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Nicholas D. Scoyni, a Sole Proprietorship
_____

Serial No. 87197276
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Nicholas D. Scoyni, Sole Proprietorship, pro se.

Mark Rademacher, Senior Attorney, Law Office 112, Jenifer Chicoski,
Administrator for Trademark Examination Policy & Procedure.1
_____

Before Quinn, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Nicholas D. Scoyni, Sole Proprietorship (“Applicant”) seeks registration on the
Principal Register of OFFSPEC SOLUTIONS (in standard characters,
“SOLUTIONS” disclaimed) as a mark for
“Trucking services, namely, hauling of refrigerated items
and dry goods; trucking services, namely, hauling of
motorized semi-trucks used on the highways in the hauling

1 The involved application originally was examined by a different Trademark Examining
Attorney. In this decision, we will refer to both collectively as “Examining Attorney.”
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of commercial goods across the continental states” in
International Class 39.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
the proposed mark merely describes a feature of the identified services.
When the refusal was made final, Applicant appealed and submitted several
requests for reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Prior to our consideration of the issue under appeal, we address several preliminary
matters.
Examining Attorney’s Brief.
In its reply brief, Applicant argues that the Examining Attorney submitted a non-
conforming brief on appeal.
First point is that the examining attorney did not summit a proper brief,
as the brief that was submitted to the TTAB on 06/09/2017 as
EXAMINER’S STATEMENT, had no reference, or case cite section in
the brief rendering all cites by examiner unacceptable, according to
TTAB regulations on briefs. As this is the case appellant is asking the
TTAB respectfully to disregard all case precedents presented by
examiner’s [brief] to the TTAB.3

A brief filed in an ex parte appeal must conform to the requirements of Trademark
Rules 2.126 and 2.142; 37 C.F.R. §§ 2.126, 2.142. See also Trademark Manual of
Examining Procedure (TMEP) § 1501.02(b) and Appendix A (April 2017). However,

2 Application Serial No. 87197276 was filed on October 8, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
3 15 TTABVUE 6.
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an ex parte appeal brief need not include the formal requirements of a trial brief in
an inter partes case, such as a table of contents, description of the record, and index
of cases. See Trademark Board Manual of Procedure (TBMP) §1203.01 (June 2017)
and authorities cited therein. Cf. Trademark Rule 2.128(b). In other words, a brief
submitted by an applicant or examining attorney in an ex parte appeal may include
such formalities as an index of cases or table of contents. Unlike a brief submitted in
an inter partes proceeding, they are not required, and the Examining Attorney’s
failure to include an index of cases as part of his brief does not serve as a basis for the
Board to refuse to consider his brief in whole or in part, or to “disregard all case
precedents” cited therein.
Claim of Acquired Distinctiveness under Trademark Act Section 2(f).
In its brief, Applicant asserts as follows:
Alternatively, or in addition, Appellant notes that affidavits or
declaration of distinctiveness, and a lie detector test under section 2(f)
of the Trademark Act, were provided as evidence to examiners during
examinations of registration no. 87197276 expanding beyond five years,
and throughout the Continental United States of America, as this
Appellants mark, and only known distinctively, as originating, and
belonging to this Appellant despite views of generic origin, holding
distinctiveness as unknown anywhere else in this wording combination,
and meaning, making the mark have incongruity that is a strong
indication a mark is suggestive at the most rather th[a]n merely
descriptive.4

The Examining Attorney, in his brief, objects to this statement to the extent it may
be construed as an untimely request in the alternative to amend the involved

4 12 TTABVUE 3-4.
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application to seek registration under Trademark Act Section 2(f), 15 U.S.C. § 1052(f)
on the basis of acquired distinctiveness.
It is well settled that in order to be timely, a claim of acquired distinctiveness must
be raised during prosecution of the involved application or in a request for remand
during appeal. See, e.g., In re Future Ads LLC, 103 USPQ2d 1571, 1573 (TTAB 2012)
(claim of acquired distinctiveness raised for first time in reply brief should have been
made in a separate request for remand). See also TBMP § 1209.04 and authorities
cited therein. In this case, Applicant does not appear to have claimed that OFFSPEC
SOLUTIONS has acquired distinctiveness as a mark during examination of its
application or on reconsideration, and only raised the issue for the first time in its
appeal brief.5 Thus, we agree with the Examining Attorney that to the extent
Applicant asserts a claim of acquired distinctiveness in its brief, such a claim is
untimely.6
Mere Descriptiveness under Trademark Act Section 2(e)(1).
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods [or
services] of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A
term is “merely descriptive” within the meaning of Section 2(e)(1) if it “immediately

5 In addition, neither the three referenced third-party affidavits nor Applicant’s polygraph
report discusses acquired distinctiveness or provides information upon which we could base
or infer a claim of acquired distinctiveness.
6 We hasten to note that our determination herein does not preclude Applicant from
attempting to show that OFFSPEC SOLUTIONS has acquired distinctiveness as a mark for
these services, or that OFFSPEC SOLUTIONS is capable of registration on the Supplemental
Register, in a subsequent application.
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conveys knowledge of a quality, feature, function, or characteristic of the goods or
services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “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, 498 (TTAB
1978); see also, In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
A term need only describe a single feature or attribute of the identified goods or
services to be descriptive. In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812.
Moreover, a mark need not be merely descriptive of all recited goods or services in an
application. A descriptiveness refusal is proper, “if the mark is descriptive of any of
the goods [or services] for which registration is sought.” In re Chamber of Commerce
of the U.S., 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Whether a mark is merely descriptive is determined in relation to the services for
which registration is sought, not in the abstract or on the basis of guesswork.
Descriptiveness of a term must be evaluated “in relation to the particular goods [or
services] for which registration is sought, the context in which it is being used, 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 or intended use.” In re Chamber
Serial No. 87197276
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of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d
at 1831). “The question is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question is whether someone who
knows what the goods and services are will understand the mark to convey
information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002)).
With these principles in mind, we start our analysis by defining the components
of OFFSPEC SOLUTIONS. The components of Applicant’s proposed mark are
defined as follows:
• The word “off spec” is defined as “failure to meet the prescribed
specifications or standards;”7 or “does not meet the specified or standard
requirements.”8

• The term “solution” is defined, inter alia, as “an action or process of
solving a problem.”9

When applied to Applicant’s trucking services, each component of Applicant’s
OFFSPEC SOLUTIONS mark retains its merely descriptive significance, and the
mark in its entirety means and directly engenders the commercial impression of
trucking services that solve the problem of hauling refrigerated items, dry goods or
other cargo that do not meet specified or standard requirements or, alternatively,
solving such problems in non-standard ways. This factual finding is corroborated not

7 January 25, 2017 office action at 6, definition from thelawdictionary.org, featuring Black’s
Law Dictionary Free Online Legal Dictionary 2nd Ed.
8 11 TTABVUE 10, definition from businessdictionary.com.
9 January 25, 2017 office action at 9, definition from merriam-webster.com/dictionary.
Serial No. 87197276
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only by the fact that Applicant itself has disclaimed the term SOLUTIONS10 and uses
the term in a descriptive manner on its website,11 but also by the Examining
Attorney’s submission of twelve third-party registrations which disclaim the term
SOLUTIONS for services similar in function and/or purpose to Applicant’s identified
services, i.e., trucking and transportation of goods by trucks.12 These include (all
marks in standard characters unless otherwise noted):
NSB MARINE SOLUTIONS and design (“MARINE SOLUTIONS” disclaimed)
(Registration No. 4957977) for services including “transportation of goods for
others by air, rail, ship or truck;”

CONCHO HOT SHOT SOLUTIONS LLC and design (“SOLUTIONS LLC”
disclaimed) (Registration No. 4446822) for “freight transportation by truck or
trailor [sic];” and

C-SAT SOLUTIONS (“SOLUTIONS” disclaimed) (Registration No. 5042046) and
C-SAT SOLUTIONS and design (“SOLUTIONS” disclaimed), both for “supply
chain logistics and reverse logistics services, namely, storage, transportation and
delivery of goods for others by air, rail, ship or truck.”

Third-party registrations featuring the same or similar goods or services are
probative evidence on the issue of descriptiveness where the relevant term is
disclaimed. Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d
1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB

10 By disclaiming the term SOLUTIONS, Applicant has conceded that this term is merely
descriptive when used in connection with its identified services. In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012, 2014 (TTAB 1988) (“By its disclaimer of the word LITE, applicant
has conceded that the term is merely descriptive as used in connection with applicant's goods;
In re Ampco Foods Inc., 227 USPQ 331, 333 (TTAB 1985) (“Finally, applicant has conceded
the descriptive nature of the term ‘FRIES' by disclaiming it apart from the mark as a whole”).
11 Applicant’s February 6, 2017 response to office action at 18-9.
12 11 TTABVUE 20-54.
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2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006), aff’d per curiam, 223
Fed. Appx. 984 (Fed. Cir. 2007).
The Examining Attorney further introduced evidence from commercial internet
websites discussing the term “off spec” or “solution” in relation to trucking, transport
and shipping services. These are reproduced in relevant part below:
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13

13 January 25, 2017 office action at 8.
Serial No. 87197276
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14
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15

14 Id. at 7. The Examining Attorney submitted a further page from this website at 11
TTABVUE 5-6 that discussed off-spec product disposal, but does not discuss transportation
of such goods.
15 11 TTABVUE 16.
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16

16 February 28, 2017 office action at 7.
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17

17 Id. at 8.
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18

18 Id. at 9.
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19

19 Id. at 13.
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20

20 Id. 10.
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21
Applicant has introduced into the record screenshots from its internet website,
including the following:

21 Id. at 12. This is not Applicant’s website, but rather the website of a putative lessee.
Applicant asserts “this Applicants lessee…is here advertised as hauling waste, or
Byproduct.” 4 TTABVUE 4.
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22
Serial No. 87197276
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23

22 Applicant’s February 6, 2017 response to office action at 18.
23 Id. at 19.
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Applicant argues that “off spec” is “a manufacturing termed product that
malfunctioned in process generically labeled applying to any products of any origin
as Offspec product, unrelated to Offspec Solutions a term used as cognitive problem
solving.”24 Applicant goes on to argue that:
Offspec Solutions is in no way descriptive to the trucking industry
because it is situational and cognitive, in meaning and not of the type of
goods shipped as it is not even scientifically possible to ship “Offspec
products” only re purpose it “Onspec” or waste product but it’s never
hauled as simply “Offspec product” this is why it is not Transportation
industry terminology.25

Essentially, Applicant argues that the term “off spec” is a manufacturing term
identifying products that are not made to specification and does not apply to the
trucking or transportation industry. Regardless of the applicability of the term to the
manufacturing industry, or other industries, the evidence of record indicates that
third parties, as shown above, provide transportation by truck of off spec goods for
repurpose or disposal. Thus, while the term “off spec” may have its origins in
industries other than transportation, the evidence of record shows that trucking and
transportation companies use the term to describe certain types of materials, such as
food products, pharmaceuticals and consumer products, that may require special
handling, permits and documentation.26 Indeed, contrary to Applicant’s assertion,
third parties advertise that they haul and ship off spec products.27

24 12 TTABVUE 3.
25 Id. at 10.
26 See, e.g., January 25, 2017 office action at 7.
27 See, e.g., 11 TTABVUE 16.
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Applicant also argues that it is not using the term “off spec” or OFFSPEC
SOLUTIONS in a descriptive manner, but rather in a “situational and cognitive”
sense, or as stated on its website, “If you have a problem no one else can seem to help
with, or can’t find a trucking solution that fits your problem, or you have a project
give us a call here at offspec Solutions, we’d like to use our cognitive thought, and
common sense to come up with a solution with you the customer…”28 However, while
Applicant may intend OFFSPEC SOLUTIONS to convey creative or “outside the box”
solutions to hauling problems, others in the trucking industry use the term to
describe hauling solutions for off spec products or product waste. In short, Applicant’s
intent to use OFFSPEC SOLUTIONS in a suggestive or incongruous manner does
not overcome the evidence of record indicating that the term has a merely descriptive
meaning as applied to trucking and hauling services.
With regard to incongruity, Applicant further argues:
That this mark has incongruity that is a strong indication that a mark
is suggestive rather than merely descriptive. The determination of
[whether] a mark is merely descriptive must be made in relation to the
goods or services for which registration is sought in some kind of direct
competition of competitors in the same industry, as herein suggested
common phrase by examiner exists only in the manufacturing industry,
is not the same as this Appellant’s. This Appellant contends that not
even the manufacturing industry were the generic term off-spec
products came from want the term to exist, as it is an ugly reminder of
profit loss, and their own mistakes, and they do not want the public to
believe they make mistakes. As this is something that would not sell
well on the open market there is no wanted relationship to goods or
services that any manufacture would wish to have, or be known to the
public, and is not a service offered by Offspec Solutions, or obviously not
even close to intended meaning.29

28 Applicant’s February 6, 2017 response to office action at 19.
29 Id. at 4.
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Applicant correctly notes that our mere descriptiveness determination must be
based upon an evaluation of OFFSPEC SOLUTIONS in relation to Applicant’s
trucking services. See, e.g., In re Chamber of Commerce of the U.S., 102 USPQ2d at
1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). Applicant further is correct that
a mark presenting an incongruity may be registrable as not merely descriptive. See,
e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir.
2004); In re Tennis in the Round Inc., 199 USPQ at 498; In re Shutts, 217 USPQ 363,
364–5 (TTAB 1983); In re Vienna Sausage Mfg. Co., 156 USPQ 155, 156 (TTAB 1967);
In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966). However, Applicant has
not explained the nature of the asserted incongruity of OFFSPEC SOLUTIONS as
applied to trucking services, but again appears to argue that because “off spec” is a
manufacturing term describing unwanted products representing lost profits and
diminished reputation, it is suggestive rather than descriptive of Applicant’s services.
However, and as discussed above, off spec products from the food, pharmaceutical
and consumer goods industries exist as a result of mistake, mishandling and
expiration, and trucking companies advertise that they provide solutions for the
repurposing or disposal thereof. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
1516 (TTAB 2016) (“The two component words of the mark combine in a manner and
order that would be easily interpreted by persons familiar with the English language
and the goods. They would be immediately understood ….”); In re Petroglyph Games
Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“[B]ecause the combination of the terms
Serial No. 87197276
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does not result in a composite that alters the meaning of either of the elements,
refusal on the ground of descriptiveness is appropriate”).
Applicant also strenuously argues that shipping and handling of certain products
that may be deemed “off spec” is subject to strict regulation and documentation and
that non-compliance by a shipper may be a criminal offense.
No shipment may under federal law (section 375.505 of the FMCSA
regulations hand book) may ever move an inch off a manufactures dock
without a bill of lading. As in this case referring to any shipped, or
departing product simply as offspec product is unacceptable, and a
crime. If there is an accident the authorities would not know what was
shipped or how to handle, spilled oil, nuclear waste etc. Therefor it is
against federal law to ship offspec products, as simply referred as offspec
products without specifically being specified some kind of on spec waste,
or material for re purpose with an identifiable MSDS, or material safety
data sheet rating that must be onspec to that data no acceptations. It is
not practice in the transportation industry regulated by the FMCSA to
use this kind of manufacturing terminology in the business of
transportation for the reason of safety, and disclosure of what exactly
the product is being shipped.30

The evidence of record excerpted above supports Applicant’s contention that
hauling of certain off spec products requires compliance with special regulations and
documentation. However, even if we accept that shippers may not ship products
simply labelled as “off spec,” but must describe them with greater specificity on bills
of lading, the evidence of record shows that shipping and trucking companies refer to
such products collectively as off spec products on their website advertisements for
services related to hauling such goods. In other words, notwithstanding that shippers
may be required to specify the type of off spec product being shipped – be it food waste,

30 Id. at 5.
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pharmaceuticals, consumer goods or even nuclear waste – these shippers refer to
these types of products as off spec products in their advertisements.
Based on the definitions and internet evidence of record, it is clear that when
Applicant’s mark OFFSPEC SOLUTIONS is viewed in its entirety in connection with
Applicant’s trucking services, consumers would perceive the mark as merely
describing a feature of Applicant’s trucking services that solve the problem of hauling
refrigerated items, dry goods or other cargo that do not meet specified or standard
requirements or, alternatively, solving such problems in non-standard ways. In other
words, Applicant’s mark lacks the type of suggestiveness or incongruous meaning
that might avoid mere descriptiveness. See generally In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (“unusual association or arrangement in the
applicant’s mark [SUGAR & SPICE] results in a unique and catchy expression which
does not, without some analysis and rearrangement of its components suggest the
contents of applicant’s goods”). We are not concerned that OFFSPEC SOLUTIONS
may have two descriptive meanings in relation to the recited services, namely, that
they provide trucking to solve problems of hauling non-standard cargo or that the
services solve such problems in non-standard ways. A term that has multiple
meanings, all of which are merely descriptive of the services, remains merely
descriptive within the meaning of Section 2(e)(1). See In re Carlson, 91 USPQ2d 1198,
1201 (TTAB 2009). Simply put, both meanings merely describe a feature of
Applicant’s services.
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Furthermore, there is no need to demonstrate that others have used the mark at
issue or that they need to use it, although such proof might be highly relevant to an
analysis under Section 2(e)(1). In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
1515 (TTAB 2016). The fact that Applicant and its putative lessee may be the first or
only users of a term does not render that term distinctive if it otherwise meets the
standard set forth in In re Gyulay, In re Chamber of Commerce, and DuoProSS. See
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004)
(trademark law does not countenance someone obtaining “a complete monopoly on
use of a descriptive term simply by grabbing it first”) (citation omitted); see also
Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (even
novel ways of referring to a product may nonetheless be merely descriptive); In re
Phoseon Tech. Inc., 103 USPQ2d 1822, 1826 (TTAB 2012). “Under the current
standard, there is no requirement that the Examining Attorney prove that others
have used the mark at issue or that they need to use it, although such proof would be
highly relevant to an analysis under Section 2(e)(1).” In re Fat Boys Water Sports, 118
USPQ2d at 1514.
Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed.31 We find that OFFSPEC SOLUTIONS is merely

31 We have not considered Applicant’s arguments directed toward the Examining Attorney
and U.S. Patent and Trademark Office except to the extent that they are relevant to the
question of the registrability of Applicant’s mark.
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descriptive of the trucking services identified in Applicant’s application under Section
2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s mark OFFSPEC SOLUTIONS is
affirmed.