Remington Products Companyv.Anibal de Oliveira Fortuna

Trademark Trial and Appeal Board

Aug 23, 2012

No. 91200803 (T.T.A.B. Aug. 23, 2012)

MBA Mailed: August 23, 2012

Opposition No. 91200803
Remington Products Company

v.

Anibal de Oliveira Fortuna

Before Grendel, Bergsman and Shaw, Administrative Trademark
Judges

By the Board:
Pro se applicant seeks registration of the mark AIRGEL,
in standard characters, for “Special air pressure cuffs with
thermally comformable gel padded external walls, for medical
use.”1 In its notice of opposition, opposer alleges that
the parties are competitors, and that since 1975, opposer
and its predecessor-in-interest have produced “orthopedic
products for sale throughout the United States,” including
“ankle support braces comprising air and gel chambers.”
Notice of Opposition ¶¶ 2, 11. Opposer further claims that
it and its customers have referred to opposer’s products, in
advertisements, as “AIR/GEL products.” Id. ¶ 3. Opposer
alleges that in their advertisements, opposer’s competitors

1 Application Serial No. 77837542, filed September 29, 2009,
based on an alleged intent to use the mark in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91200803
2
have referred to orthopedic products “with one or more
combinations of the words ‘air’ and ‘gel (e.g., ‘Air/Gel,’
‘Air-Gel,’ ‘Air Gel,’ and ‘Gel Air’).” Id. ¶ 4. As grounds
for opposition, opposer alleges that applicant’s involved
mark is generic and/or merely descriptive. Id. ¶¶ 7-10.
In his answer, applicant essentially denies the salient
allegations in the notice of opposition. However, applicant
also asserts, among other things, that:
• his involved mark names “a specific
product characterized by having a
special pneumatic cuff, made softer
and with an improved anatonmical
shape, by employing a combination of
a thermo gel cushion in its upper
layer, and air, as a filling element
to pressurize the gel padded walls of
the cuff. This combination would
allow for a better final anatomical
cuff conformation, providing an
improved sealing within the body
structures, achieved with less trauma
in comparison with the traditional
air filled only pneumatic cuff;”
Answer ¶ 6; and

• “[t]he idea behind this proposed
trademark “AIRGEL”, was to create a
name based on an acronym made with
the combination of the words, ‘air’
(meaning the atmospheric air used to
pressurize the cuff) and ‘gel’
(meaning a semi rigid colloidal
dispersion of a solid with a liquid
….” Answer ¶¶ 7-8 (emphasis in
original).

This case now comes up for consideration of opposer’s
fully briefed motion for summary judgment on both of its
claims, filed May 17, 2012.
Opposition No. 91200803
3
The Parties’ Contentions
Opposer relies primarily on argument, but it also
introduces printouts of third-party web sites as they
appeared in 2011,2 Google search results from 2011 and
undated and unauthenticated portions of what appears to be a
third party’s product catalogue. The web site printouts
show that in 2011, third parties offered products identified
as “Air-Gel Ankle Brace,” “Actimove® TaloCast® AirGel Ankle
Brace” and “Air Gel Ankle Brace.” Opposer argues, based on
this “evidence,” and applicant’s assertions in his Answer,
that applicant’s mark “is no more than a combination of the
common, descriptive terms, ‘air’ and ‘gel,’ used widely in
the orthopedic product industry in various combinations, to
describe therapeutic immobilization products comprising air
and gel chambers.” Opposer further argues that applicant’s
mark “is a statement of the characteristics/features of the
product.” Finally, opposer argues that “‘AIRGEL’ as a whole
is no less generic than its constituents.”
In response, applicant also relies primarily on
argument, although he includes as exhibits summaries of
third party applications and registrations, including

2 Third-party websites displaying a URL and the date the
document was printed are admissible in the same manner as printed
publications pursuant to Trademark Rule 2.122(e). See, Safer
Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)
(“The Board will henceforth deem a document obtained from the
Internet displaying a date and its source as presumptively true
and genuine.”).
Opposition No. 91200803
4
application and registration numbers. Applicant argues that
opposer’s motion is based on “conjectures and speculations,”
including concerning the nature of applicant’s goods.
Specifically, applicant claims that his mark “has never been
intended to source, describe or name any orthopedic product,
even less a ‘therapeutic immobilization product’!” (emphasis
in original). Rather, applicant’s mark “was devised to name
a special cuff to be used in Applicant’s patented
ventilation device, having absolutely nothing to do with any
orthopedic product.” Applicant also points out that AIRGEL
is “a single indivisible word,” and argues that it is
“without any other meaning but to title” applicant’s goods.
Applicant claims that his product is “characterized by
having a special pneumatic cuff, made softer and with an
improved anatomical shape, by employing a combination of a
thermo gel cushion in its upper layer, and air, as a filling
element to pressurize the gel padded walls of the cuff.
This combination would allow for a better final anatomical
cuff conformation ….” Applicant also points out that most
of the third-party uses upon which opposer relies are of
variations of AIRGEL, rather than the mark in the involved
application. Applicant specifically claims that “all
pneumatic cuffs uses [sic] air or a gas by definition! Or
eventually in some, a kind of ‘gel’ to pad, as this is too
vague.” Finally, applicant argues that because AIRGEL and
Opposition No. 91200803
5
other compound terms such as SLEEPKING, AIRSLEEP and
SLEEPEASY have been previously approved for registration for
various goods, applicant’s mark cannot be merely
descriptive, that his mark is not generic and that the
parties are not competitors because applicant “does not deal
with any orthopedic or immobilization products.”
Decision
Summary judgment is only appropriate where there are no
genuine disputes as to any material facts, thus allowing the
case to be resolved as a matter of law. Fed. R. Civ. P.
56(a). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine dispute of
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
Opposition No. 91200803
6
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board may not resolve genuine disputes as to material
facts; it may only ascertain whether genuine disputes as to
material facts exist. See Lloyd’s Food Products, 25 USPQ2d
at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Mere Descriptiveness
Merely descriptive marks may not be registered. 15
U.S.C. § 1052(e)(1).
A term is merely descriptive of goods
or services, within the meaning of
Section 2(e)(1) of the Trademark Act of
1946, 15 U.S.C. § 1052(e)(1), if it
forthwith conveys an immediate idea of
an ingredient, quality, characteristic,
feature, function, purpose or use of the
goods or services. 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 to be
merely descriptive; rather, it is
sufficient that the term describes one
significant attribute, function or
property of the goods or services. In
re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982); In re MBAssociates, 180 USPQ 338,
339 (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 the
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; that a term may have other meanings
Opposition No. 91200803
7
in different contexts is not
controlling. In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979). In other
words, the question is not whether
someone presented with only the mark
could guess what the goods are. Rather,
the question is whether someone who
knows what the goods are will
immediately understand the mark as
directly conveying information about
them (i.e., whether someone familiar
with applicant’s educational materials
for preparing for standardized tests
will understand [the involved mark]
COACH to convey information about the
educational materials). In re Tower
Tech Inc., 64 USPQ2d 1314, 1317 (TTAB
2002); In re Patent & Trademark Services
Inc., 49 USPQ2d 1537, 1539 (TTAB 1998_);
In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). “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, 497 (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).

Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600,
1616 (TTAB 2010) aff’d in relevant part 668 F.3d 1356, 101
USPQ2d 1713 (Fed. Cir. 2012).
Here, applicant’s identification of goods, and the
admissions in his answer, establish that AIRGEL immediately
describes significant attributes of applicant’s product. In
fact, applicant’s identification of goods reveals that they
Opposition No. 91200803
8
are “air pressure cuffs” with, or possessing, “gel padded
external walls” (emphasis supplied). In other words, the
term “air” conveys to those familiar with applicant’s goods
that applicant’s cuffs are pressurized with “air,” and
neither mature thought nor multi-stage reasoning would be
required to understand this connotation. Similarly, the
term “gel” conveys to those familiar with applicant’s goods
that the product’s external walls are padded with “gel,” and
neither mature thought nor multi-stage reasoning is
necessary to understand this connotation.
Applicant’s admissions also establish that AIRGEL is
merely descriptive of the identified goods. Indeed,
applicant concedes that because his cuffs’ thermo “gel”
cushions are pressurized by “air,” they are “made softer and
with an improved anatomical shape.” Answer ¶ 6. In other
words, “air” and “gel” describe an “attribute, function or
property” of the goods.
Furthermore, applicant specifically admits that his
mark is a combination of words having their commonly
understood meaning, in that air refers to “the atmospheric
air used to pressurize the cuff” and gel refers to “a semi
rigid colloidal dispersion or a solid with a liquid.” Under
these circumstances, merging the two words together, without
a space, is not enough to make the combined term AIRGEL
suggestive; rather, it is merely descriptive. In re
Opposition No. 91200803
9
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir.
2005); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1410 (Fed. Cir. 2005) (STEELBUILDING.COM merely descriptive
of “computerized on-line retail services in the field of
pre-engineered metal buildings and roofing systems”); In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987) (SCREENWIPE generic for “pre-moistened, anti-static
cloth for cleaning computer and television screens”); In re
Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER
merely descriptive because “the two words separately have a
readily understood meaning in the industry, and when
combined as the term SMARTTOWER and used on or in connection
with applicant’s goods (‘commercial and industrial cooling
towers and accessories therefor, sold as a unit’), the term
merely describes cooling towers that are highly automated”);
In re Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
(SMARTPROBE merely descriptive of “one time use, disposable
cryosurgical probes,” including because the mark will
describe “an important characteristic of those probes”).3

3 Applicant failed to properly submit evidence of, and we have
therefore not considered applicant’s arguments regarding, any
third party marks, applications or registrations. Even if
applicant had properly introduced such evidence, however,
decisions with respect to other marks would not be persuasive
because each case must be decided on its own merits.

Opposition No. 91200803
10
Finally, the third-party internet evidence demonstrates
that third parties used AIRGEL and variations thereof to
describe similar products.
For all of these reasons, we find that there is no
genuine dispute regarding any material fact, and that AIRGEL
is merely descriptive of the goods identified in the
involved application. Accordingly, opposer’s motion for
summary judgment is GRANTED on the question of mere
descriptiveness, and there is no need to consider whether
applicant’s mark is also generic.
Standing
In order to prevail in this proceeding, opposer must
establish not only a valid ground for opposition, in this
case that applicant’s mark is merely descriptive, but also
that it has standing to oppose the involved application.
Here, while opposer alleges that it produces orthopedic
products referred to as “‘AIR/GEL’ products,” and that the
parties “are competitors,” and these allegations would
establish opposer’s standing if proven, opposer has not yet
introduced any evidence supporting these allegations. In
fact, the only evidence upon which opposer relies relates to
third parties. Accordingly, opposer is allowed until THIRTY
DAYS from the mailing date of this order to submit evidence
establishing that there is no genuine dispute as to any
material fact related to opposer’s standing, and that it is
Opposition No. 91200803
11
entitled to summary judgment on the issue of standing as a
matter of law. Applicant is allowed until SIXTY DAYS from
the mailing date of this order to file a response to any
evidence and argument opposer submits, if applicant desires
to do so. In the event opposer’s showing establishes its
entitlement to summary judgment on the issue of standing,
the opposition will be sustained. In the event opposer’s
showing is insufficient, this case shall proceed to trial on
the issue of standing only. Sinclair Oil Corp. v. Kendrick,
85 USPQ2d 1032, 1037 (TTAB 2007) (setting forth this
procedure under analogous circumstances); Paramount Pictures
Corp. v. White, 31 USPQ2d 1768, 1776 (TTAB 1994)(same).
Conclusion
Opposer’s motion for summary judgment is granted on the
issue of mere descriptiveness. Further consideration of the
motion is deferred pending receipt of any submissions
allowed hereby. Proceedings herein remain otherwise
SUSPENDED, and trial dates will be reset, if necessary, at
the appropriate time.
***