P.I. Engineering

Trademark Trial and Appeal Board

Nov 18, 2004

No. 76404455 (T.T.A.B. Nov. 18, 2004)

Mailed:
Nov. 18, 2004
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re P.I. Engineering
________
Serial No. 76404455
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John G. Posa of Gifford, Krass, Groh, Sprinkle, Anderson &
Citkowski, P.C. for P.I. Engineering.
James A. Rauen, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Walters, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark RAILDRIVER (in typed form) for goods identified
in the application as “electronic train controllers” in
Class 9.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register the mark on the ground
1 Serial No. 76404455, filed on May 7, 2002. The application is
based on applicant’s asserted bona fide intent to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76404455
2
that it is merely descriptive of the identified goods. See
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). The
appeal has been fully briefed, but no oral hearing was
requested. We affirm the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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,
217-18 (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); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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
Ser. No. 76404455
3
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he 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 or services are will
understand the mark to convey information about them.” 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).
Applicant has submitted a printout from its website
which illustrates what the identified goods are and how
they operate. As applicant states in its brief:
The product is a unit with levers, switches and
buttons, that interfaces to a computer running
a train simulator such as the Microsoft train
simulator which has been available for some
time. Rather than use the computer’s generic
interface consisting of the keyboard, mouse and
so forth, Appellant’s rail driver product
provides levers, switches and buttons that make
the enthusiast feel like they are driving the
simulated train on the screen of the computer
using a throttle and reverser, and brake lever
specialized for such purposes.
Ser. No. 76404455
4
(Brief at 3.) Applicant’s website also includes the
following language describing the product:
RailDriver Train Cab Controllers put levers,
switches, and buttons in your hands to make you
feel like you’re driving a train, not a
computer. Programmable keys put commands on
the RailDriver, so you can put the keyboard
away. Drive your train with a throttle and
reverser, not a keyboard. Apply your brakes
with levers, not a mouse.
The Trademark Examining Attorney has submitted
evidence which shows that train operators are also called
“rail drivers.” See, e.g., the following excerpts from
articles retrieved from the NEXIS electronic database:
The union representing bus and rail drivers,
the United Transportation Union, would not
comment. Tension between the UTU and AFSCME
emerged during the nearly monthlong strike in
2000, when some AFSCME members crossed the
drivers’ picket lines.
(Los Angeles Times, August 7, 2002);
Goldy Norton, spokesman for the United
Transportation Union, the union of MTA bus and
rail drivers, said the union remains opposed to
transit zones…
(Daily News (Los Angeles, CA), December 4,
2001);
… indefinitely postponed the April 3 opening of
the Hiawatha light-rail line. … If there is a
strike, training for rail drivers would stop.
(Star Tribune (Minneapolis, MN), February 18,
2004);
The scenario was the same the last time MTA had
a strike … in September/October 2000, when bus
Ser. No. 76404455
5
and rail drivers hit the picket lines. Back
then, MTA’s only trains were the Red Line
subway, the Long Beach Blue Line and the Metro
Green Line.
(San Gabriel Valley Tribune, January 22, 2004);
The Gold Line was dealt an unenviable blow in
October, when MTA mechanics went on strike, and
bus and rail drivers followed suit. The work
stoppage lasted until late November, with Gold
Line trains resuming service after a 37-day
disruption.
(Pasadena Star-News, December 27, 2003);
MTA buses and trains, including the Gold Line,
stopped running on Oct. 14 when MTA mechanics
walked off the job and bus and rail drivers
joined them.
(Pasadena Star-News, October 21, 2003);
We find that this NEXIS evidence establishes that
train operators are and can be called “rail drivers.”
Contrary to applicant’s argument, it is not dispositive
that the NEXIS stories all appear to use “rail drivers” to
refer to public employees who operate trains as part of a
public transportation system. If “rail driver” accurately
describes or names the drivers of public transportation
system trains, there is no reason it would not also be
understood to describe or name drivers of any other type of
train as well.
Next, we find that applicant’s mark RAILDRIVER is
legally equivalent to “rail driver.” The meaning or
commercial impression of the term is not altered or
Ser. No. 76404455
6
otherwise affected by its compression from two words into
one word. See In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987)(SCREENWIPE legally equivalent
to “screen wipe”); In re Planalytics Inc., supra (GASBUYER
legally equivalent to “gas buyer”).
We find that RAILDRIVER is merely descriptive of
applicant’s product because it directly informs purchasers
of a key feature and purpose of the product, i.e., that the
product allows the user to simulate the experience of being
a rail driver. As applicant’s website states, the
controllers “make you feel like you’re driving a train, not
a computer.” The purpose of applicant’s product, which is
used in conjunction with train simulator software, is to
allow the user to play or assume a particular role or
persona, i.e., that of a rail driver (as opposed to a
pilot, or a race car driver). RAILDRIVER directly
describes that role or persona, and thus merely describes a
key feature and purpose of the product.
It is not dispositive that the “rail driver” role that
applicant’s product enables the user to assume is a
simulation, i.e., that the product merely allows the user
to pretend to be a rail driver. The purpose of the goods
is to create just such a simulation, and RAILDRIVER
immediately informs purchasers of that fact. Cf. In re
Ser. No. 76404455
7
Guylay, supra, where the court affirmed the Board’s
decision holding APPLE PIE to be merely descriptive of
potpourri with a simulated apple pie scent; it was not
dispositive that the potpourri’s scent was only simulated
and not derived from actual apple pie. Likewise, in In re
J & D Brauner, Inc., 173 USPQ 441 (TTAB 1972), the mark THE
BUTCHER BLOCK was held to be merely descriptive of
“furniture for household use, namely, tables, serving
carts, kitchen counters and cabinet tops comprised of
protective decorative material, and desks,” notwithstanding
that the goods were not and would not be mistaken for
actual butcher blocks, but were instead merely covered with
a laminated decorative board designed to simulate the
appearance of a butcher’s block.
For the reasons discussed above, we find that
RAILDRIVER is merely descriptive of the “electronic train
controllers” identified in applicant’s application, and
that registration of applicant’s mark therefore is barred
under Trademark Act Section 2(e)(1). Competitors marketing
products similar to applicant’s, the purpose of which is to
enable the user to pretend to be a “rail driver,” must be
free to use RAILDRIVER in connection with such goods.
Decision: The refusal to register is affirmed.