Roger SweningsonDownload PDFTrademark Trial and Appeal BoardFeb 8, 2018No. 86476723 (T.T.A.B. Feb. 8, 2018) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: February 8, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Roger Sweningson _____ Serial No. 86476723 _____ Tye Biasco of Patterson Thuente Pedersen, P.A. for Roger Sweningson. Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109 (Michael Kazazian, Managing Attorney). _____ Before Cataldo, Kuczma and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Roger Sweningson (“Applicant”) seeks a Supplemental Register registration for the term EARTH HOME BUILDER, in standard characters, for: Non-metal building materials, namely, sand, dirt, and soil filled plastic tubes in International Class 19; Building construction services, namely, construction of levees and buildings using sand, dirt, and soil filled tubes in International Class 37; and Serial No. 86476723 2 Building design services, namely, design of levees and buildings using sand, dirt, and soil-filled tubes in International Class 42.1 The Examining Attorney finally refused registration of the proposed mark: (1) under Section 23(c) of the Trademark Act on the ground that Applicant’s proposed mark is a generic term for the identified services in International Classes 37 and 42, and thus incapable of distinguishing them;2 (2) under Sections 1(a)(1), 1(d)(1) and 45 of the Act on the ground that Applicant’s specimens in International Class 19 do not show use of the mark for Applicant’s goods; and (3) under Sections 1, 2, 3 and 45 of the Act on the ground that the term EARTH HOME BUILDER, as used in Applicant’s specimens, does not function as a mark for the services in International Classes 37 and 42. After the refusals became final, Applicant appealed and filed a request for reconsideration which was denied. After the appeal resumed, Applicant and the Examining Attorney filed briefs. The Evidence In support of the genericness refusal, the Examining Attorney relies on the following dictionary definitions of the proposed mark’s constituent terms: 1 Application Serial No. 86476723, originally seeking registration on the Principal Register, was filed December 10, 2014 based on Applicant’s allegation of an intent to use the mark in commerce under Section 1(b) of the Trademark Act. Applicant later amended the application to allege first use dates of July 18, 2014 and to instead seek registration on the Supplemental Register. 2 The original Examining Attorney initially refused registration on the Principal Register finding the mark merely descriptive of all of the identified goods and services, and, following Applicant’s amendment to the Supplemental Register, refused registration on the ground that the mark is generic for all identified goods and services. After the application was reassigned, the current Examining Attorney withdrew the genericness refusal as to the goods in International Class 19 only. Serial No. 86476723 3 EARTH—“the loose soft material that makes up a large part of the land surface;”3 EARTH HOUSE—“(also known as an earth berm or an earth sheltered home) is an architectural style characterized by the use of natural terrain to help form the walls of a house;”4 and HOME-BUILDER—“someone who contracts for and supervises construction (as of a building);”5 Office Actions of March 25, 2015 and December 4, 2015. She also relies on Applicant’s response to an information request under Trademark Rule 2.61(b), including materials Applicant submitted concerning United Earth Builders (“UEB”), which Applicant refers to as a “building group.” A portion of UEB’s website is reproduced below: 3 http://www.vocabulary.com/dictionary/earth. 4 https://en.wikipedia.org/wiki/Earth_house. 5 http://www.vocabulary.com/dictionary/home-builder. Serial No. 86476723 4 Office Action response of December 4, 2015 (printout from “unitedearthbuilders.com”). The UEB website states that the group’s mission is “to bring … the construction method of earthbag to the mainstream in order to allow all people to build healthy, affordable, & disaster resistant housing.” The group trains “contractors & owner/builders in the operation of the Earth Home Builder construction auger, developed in 2014.” The construction auger is a “mechanized method of earthbag construction by repurposing a levee building machine that is designed and built by Progressive Innovations LLC.” Office Action response of November 3, 2015 (“UEB Mission and Programs” document). Applicant’s response to the information request indicates that Progressive Innovations is his company. The United Earth Builders website states that the “rental cost” for the Earth Home Builder machine is “$1500.00 per 7 day week.” Applicant also submitted his Patent No. 7,654,292 B2 (the “Patent”), for an “erosion control device,” in response to the information request. The Patent’s abstract appears to describe the “levee building machine” which is “repurposed” to create the EARTH HOME BUILDER machine, stating: “Methods and apparatus related to an erosion control device for constructing a barrier bag for use in areas where erosion is likely to occur.” Id. (Patent). The device has “a material hopper for accommodating filler material and a fill chute and filling components for packing the filler material into an erosion control bag.” Id. (Field of the Invention description). The erosion control bag is placed “where erosion is likely to occur,” and the device which creates Serial No. 86476723 5 it is portable, as it can be “operably mounted to a skid steer, front-end loader, tractor or similar vehicle for transportation and power.” Id. (Summary of the Invention). In addition to his Patent, Applicant also submitted a page from the Progressive Innovations website which confirms that the EARTH HOME BUILDER “is the same as the Instee Levee Builder™ except it has been outfitted with specialized earth home building technology”: Id. (printout from “progressiveinnovations.com”) (emphasis added). An article on the “inhabitat.com” website explains the use of the EARTH HOME BUILDER: Serial No. 86476723 6 Office Action of December 4, 2015 (printout from “inhabitat.com”). In addition to Applicant and UEB, several third-parties use EARTH HOME or variations of the term in connection with home building products and services, as shown in the following website printouts: Serial No. 86476723 7 6 6 While the “treehugger.com” article focuses on an “earth home” in China, the English- language online publication appears to have readers from the United States. Serial No. 86476723 8 Office Actions of December 4, 2015 and May 9, 2017 (printouts from “earthhomesnow.com,” “homeadditionplus.com,” “earthshelteredhome.com,” “greenbuildingelements.com” and “formworksbuilding.com” in December 4, 2015 Office Action; and “treehugger.com” in May 9, 2017 Office Action). The following article appears to use “earth sheltered home” and “earth home” interchangeably: Serial No. 86476723 9 Office Action of May 9, 2017 (printout from “niftyhomestead.com”). The “earthhomesnow.com” site specifically states that: “The term ‘earth home’ is somewhat generic and can be applied to many different kinds of environmentally sound housing,” and that earth homes are well-insulated because they are “covered with thick dirt, mud, rock or straw ….” It claims that “Earth-made houses can also be much cheaper to build than traditional houses with wooden, brick or cinder block structures.” In the “treehugger.com” article, the term “earth” is used in a manner consistent with its dictionary definition, referring to the “locally sourced earth” used to build an earth house, and the resulting cost savings. The Examining Attorney relies on another “inhabitat.com” article which uses the term “earth homes” similarly, stating that “‘Earth homes’ (sic) utilize surrounding terrain or other natural elements such as dirt, bamboo, wood ….” It also makes clear Serial No. 86476723 10 that “earth homes” may be constructed with “earth bags” filled with earth and other types of materials, as depicted below: Office Action of May 9, 2017 (printout from “inhabitat.com”). While the article capitalizes the term “EARTH HOME BUILDER” in reference to Applicant’s repurposed levee building machine, at the same time it uses the term “earth homes” to refer to homes constructed of earth, including earth-filled bags: Serial No. 86476723 11 Id. The remaining refusals to register are based on Applicant’s specimens, which are reproduced below: Serial No. 86476723 12 Amendment to Allege Use and Office Action response of February 15, 2017. Serial No. 86476723 13 Genericness Only marks which are “capable of distinguishing the applicant’s goods or services” are eligible for registration on the Supplemental Register. 15 U.S.C. § 1091(c). By contrast, “[g]eneric terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. They are by definition incapable of indicating a particular source of the goods or services.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2011) (citations omitted). The ultimate test for determining whether a term is generic is the term’s primary significance to the relevant public. See Section 14(3) of the Trademark Act. See also In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The Examining Attorney bears the burden of making a “strong” showing, with “clear evidence,” that the applicant’s proposed mark is generic. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (also recognizing “the presumption of non-genericness”); In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). See also In re K-T Zoe Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994). “[D]oubt on the issue of genericness is resolved in favor of the applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005). Registration is properly refused if the proposed mark is generic for any of the services identified in a particular class. In re Analog Devices Inc., 6 USPQ2d 1801, 1810 (TTAB 1988), aff’d, 10 USPQ2d 1879 (Fed. Cir. 1989). Serial No. 86476723 14 We must make a two-step inquiry to determine whether EARTH HOME BUILDER is generic: First, what is the genus (category or class) 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. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Here, there is no dispute that the genus is coextensive with Applicant’s identification of services. 8 TTABVUE 6-7; 10 TTABVUE 6-7. In re Cordua Rests., 118 USPQ2d at 1636; Magic Wand, 19 USPQ2d at 1551. As for the “relevant public,” the Examining Attorney contends, and Applicant does not dispute, that it consists of “any consumer who is seeking to hire someone to build or design a levee or a building, such as a home using sand, dirt and soil-filled tubes.” 10 TTABVUE 7. See Magic Wand, 19 USPQ2d at 1553. Evidence of this relevant public’s understanding of the term at issue may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). We must consider how the defined relevant public perceives the term EARTH HOME BUILDER in its entirety. In Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015), our primary reviewing court stated: [E]ven in circumstances where the Board finds it useful to consider the public’s understanding of the individual words Serial No. 86476723 15 in a compound term as a first step in its analysis, the Board must then consider available record evidence of the public’s understanding of whether joining those individual words into one lends additional meaning to the mark as a whole. 114 USPQ2d at 1832-33. Turning back to the record in this case, the dictionary definitions and other evidence, including Progressive Innovations’s own website, make clear that EARTH HOME BUILDER is merely and highly descriptive of Applicant’s services. It is also quite apt for the construction and design of buildings, including homes, “using sand, dirt and soil filled tubes.” Indeed, the “loose soft material” which comprises “earth” includes the “sand, dirt, and soil” which fills the plastic tubes Applicant (and apparently his company) use in the buildings they design and construct. Moreover, “earth houses”/“earth homes” are often constructed with sand, dirt or soil, sometimes using “sand, dirt, and soil filled tubes.” Applicant is a “builder” of these “earth homes,” as well as a “home-builder” who uses earth, such as sand, dirt or soil, to construct and design homes. But aptness “is not the correct test for genericness.” In re American Fertility Society, 51 USPQ2d at 1836. Rather, we must determine whether the evidence establishes that the relevant public refers to “building construction services, namely, construction of levees and buildings using sand, dirt, and soil filled tubes” or “building design services, namely, design of levees and buildings using sand, dirt, and soil-filled tubes” as those of an EARTH HOME BUILDER. In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1811 (evidence did not support finding that 1-888-M-A-T-R-E- S-S is generic, because “[t]here is no record evidence that the relevant public refers Serial No. 86476723 16 to the class of shop-at-home telephone mattress retailers as ‘1-888-M-A-T-R-E-S-S’”); In re American Fertility Society, 51 USPQ2d at 1837 (vacating finding that AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE is generic in part because “the PTO produced no evidence at all of the public’s understanding of the phrase as it relates to the Society’s services”). We must also keep in mind that doubt is resolved in Applicant’s favor. In re Tennis Industry Ass’n, 102 USPQ2d 1671 (TTAB 2012) (reversing genericness finding because there were “a mere three unambiguous examples of generic usage of TENNIS INDUSTRY ASSOCIATION”); In re Country Music Ass’n Inc., 100 USPQ2d 1824 (TTAB 2011) (reversing refusal to register COUNTRY MUSIC ASSOCIATION where third parties displayed term in initial capital letters or “in combination with other descriptive, geographic, or other terms”). Here we find, as in Dial-A-Mattress, American Fertility Society, Tennis Industry Ass’n and Country Music Ass’n, that the evidence falls short of erasing doubt. Perhaps most importantly, while it is clear that Applicant’s services involve building earth homes, the only uses of the entire proposed mark EARTH HOME BUILDER are references to Applicant’s machine, the repurposed Instee Levee Builder. Most uses of EARTH HOME BUILDER, including those by third parties, include the “™” symbol after the term, and all uses of record display the term in initial capital letters. Moreover, while some might consider “builder” to be akin to terms such as “company” or “incorporated” having no trademark significance, and the evidence makes clear that an “earth home” is a type of home which Applicant might construct Serial No. 86476723 17 or design, we do not view this case as controlled by or analogous to In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010) (finding ELECTRIC CANDLE COMPANY generic for light bulbs and related products). There, in sharp contrast to this case, ample evidence established that third parties used “electric candle” generically for the applicant’s identified goods. Here, by contrast, while there are several third party uses of “earth home” of record, at most one uses the term in connection with building design or construction services.7 In this case, as in other cases in which there was insufficient evidence of genericness, the record is “mixed” and “ambiguous.” See e.g. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1763 (TTAB 2013), aff’d 565 Fed. Appx. 900 (Fed. Cir. 2014). See also, In re Merrill Lynch, Pierce, Fenner and Smith, , 4 USPQ2d at 1143 (Office did not show “by clear evidence, that the financial community views and uses the term CASH MANAGEMENT ACCOUNT as a generic, common descriptive term for the brokerage services to which Merrill Lynch first applied the term”); In re Country Music Ass’n, 100 USPQ2d at 1829 (“we are not convinced that the examining attorney’s evidence of use of the phrase ‘Country Music Association’ suffices as clear evidence that the relevant purchasers perceive the phrase as naming the genus of the services at issue”). There is no evidence that any of Applicant’s competitors use the term EARTH HOME BUILDER. See In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1113-14 (TTAB 2010) (“where the record 7 While uses of “earth sheltered homes” are relevant to our analysis, they are not sufficient, alone or in combination with the other evidence of record, to establish the genericness of EARTH HOME BUILDER for Applicant’s identified services. Serial No. 86476723 18 demonstrates both trademark and generic uses, evidence of the lack of competitor use, at a minimum, may create doubt sufficient to tip the balance in favor of registration”). And several references to “earth homes” come from sources which are relatively “obscure.” In re Country Music Ass’n, 100 USPQ2d at 1830. In short, the record leaves doubt as to whether EARTH HOME BUILDER is generic for the identified services.8 We are required to resolve our doubt in Applicant’s favor. Accordingly, the refusal to register Applicant’s mark in Classes 37 and 42 on the ground of genericness is reversed. Class 19 Specimens The Examining Attorney argues that Applicant’s website specimen “shows the mark in connection with a ‘skid-steer operated machine’ and not with applicant’s building material goods, namely, ‘sand, dirt and soil-filled plastic tubes.’” 10 TTABVUE 13. She argues that the substitute invoice specimen is merely a document used to conduct Applicant’s “internal business” and “business dealings.” Furthermore, as with the website specimen, the invoice specimen refers to a “hydraulic unit,” not the plastic filled tubes containing sand, dirt and soil for which Applicant seeks registration. Id. at 13-14. Applicant argues that its goods “are very long, large tubes that are sold in very large bulk quantity (on the order of thousands of feet) for which it would be impractical to place the trademark.” 8 TTABVUE 8. 8 We hasten to add that the result may very well be different in an inter partes or other proceeding with a different record. Serial No. 86476723 19 We agree with the Examining Attorney that the specimens are unacceptable. The website specimen does not show use of the proposed mark for the goods for which Applicant seeks registration in Class 19: “non-metal building materials, namely, sand, dirt, and soil filled plastic tubes.” Instead, at most the website specimen, if acceptable, would show use of the proposed mark for “an extraordinary skid-steer operated (universal mount) Earth Home building machine” (emphasis added). While the specimen indicates that the machine “fills earthbag tubes of many sizes,” it is at most the machine, not the earthbag tubes themselves, for which the proposed mark is being used, if it is being used at all, because the term is only used in connection with the machine. Indeed, the EARTH HOME BUILDER is specifically described as a “machine” and a “unit” which is “the same as the Instee Levee Builder™,” another machine. The machine “fills earthbag tubes,” but there is no indication anywhere on the specimens that Applicant sells the tubes or identifies the tubes themselves as EARTH HOME BUILDER. While the specimen includes depictions of what appear to be earthbag tubes, there is simply no connection between the earthbag tubes and the mark EARTH HOME BUILDER. Rather, the only marks even arguably depicted with or near the earthbag tubes are Applicant’s PI LLC (stylized) mark and a third party’s YOUTUBE mark: Serial No. 86476723 20 9 Similarly, the invoice specimen does not show use of the mark for Applicant’s “building materials, namely, sand, dirt, and soil filled plastic tubes.” Instead, it at most reveals that the term “Earth Home Builder” is an “item code” for a “hydraulic unit fills earth home tubing.” That is, the price of $7,500 reflected on the invoice is clearly for the “hydraulic unit” which “fills earth home tubing,” not the “sand, dirt, and soil filled plastic tubes” themselves. In short, neither specimen shows the mark placed on “building materials, namely, sand, dirt, and soil filled plastic tubes.” Nor do the specimens reveal use of EARTH HOME BUILDER on containers for those goods, displays associated therewith or on tags or labels affixed thereto. 15 U.S.C. § 1127. While the specimens include a phone 9 While Applicant claims that the Progressive Innovations website is his, there is no evidence regarding the relationship between Applicant and Progressive Innovations. Serial No. 86476723 21 number, there is no indication that sales of the plastic tubes themselves can be consummated through the phone number or website, much less their price, payment methods, shipping information, etc. See generally In re Anpath Group Inc., 95 USPQ2d 1377 (TTAB 2010); In re Quantum Foods Inc., 94 USPQ2d 1375 (TTAB 2010). As for the invoice, that is an insufficient specimen as a matter of law. In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (CCPA 1972); In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979). Accordingly, the refusal to register on the ground that the specimens do not show use of the mark for the identified goods in Class 19 is affirmed. Whether EARTH HOME BUILDER Functions As a Mark for the Services in Classes 37 and 42 The Examining Attorney argues that EARTH HOME BUILDER does not function as a mark for Applicant’s Class 37 and 42 services because as used in Applicant’s specimens it identifies only the machine, not building design or construction services. 10 TTABVUE 14-15. Applicant counters, without supporting evidence or any explanation whatsoever, that “the specimen does act as a service mark because the invoice included both the construction and design services related to the tubing sold.” 8 TTABVUE 8. Based on our review of the specimens and the record as a whole, we agree with the Examining Attorney that Applicant’s proposed mark fails to function as such. The original and substitute specimens both fail to associate the proposed mark with any of the recited services, thus making it unlikely relevant consumers would perceive the term EARTH HOME BUILDER as a source indicator for the identified services. Serial No. 86476723 22 See e.g., In re Keep A Breast Found., 123 USPQ2d 1869, 1880 (TTAB 2017). Applicant’s mere argument to the contrary notwithstanding, neither specimen uses EARTH HOME BUILDER in connection with any type of building services. It is not even clear from the specimens whether Applicant provides or provided any type of building services to anyone. The invoice specimen indicates that something, described as “hydraulic unit fills earth home tubing” was “shipped” on “6/25/2015.” It is not clear from the specimens that anyone, much less Applicant, provided any services using the “hydraulic unit,” or that Applicant itself renders or promotes building services of any kind, or that it charges for building services of any kind. Mere attorney argument that Applicant provided services is insufficient to satisfy the specimen requirement. This refusal is therefore also affirmed. CONCLUSION Because we have some doubt on this record as to whether the relevant public understands the term EARTH HOME BUILDER to refer to the genus of Applicant’s services, the genericness refusal is reversed. Nevertheless, registration of Applicant’s proposed mark is refused in all three classes, in Class 19 because the specimens do not show use of the proposed mark for Applicant’s identified goods, and in Classes 37 and 42 because the proposed mark does not function as such in connection with Applicant’s identified services. Decision: The refusal to register the proposed mark in Classes 37 and 42 on the ground of genericness is reversed. The refusal to register in Class 19 on the ground Serial No. 86476723 23 that Applicant’s specimens do not show use of the mark for the identified goods is affirmed. The refusal to register in Classes 37 and 42 on the ground that the term EARTH HOME BUILDER does not function as a mark for Applicant’s identified services is also affirmed. Copy with citationCopy as parenthetical citation