Roger Sweningson

Trademark Trial and Appeal Board

Feb 8, 2018

No. 86476723 (T.T.A.B. Feb. 8, 2018)

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

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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

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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

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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
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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:
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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:

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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.
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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:
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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
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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:

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Id.
The remaining refusals to register are based on Applicant’s specimens, which are
reproduced below:

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Amendment to Allege Use and Office Action response of February 15, 2017.

Serial No. 86476723

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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

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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
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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

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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

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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.
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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

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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:
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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.
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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.
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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
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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.