The Steel Network, Inc.

Trademark Trial and Appeal Board

Sep 26, 2012

No. 77827263 (T.T.A.B. Sep. 26, 2012)

Mailed: September 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re The Steel Network, Inc.
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Serial No. 77827263
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Larry L. Coats of Coats & Bennett PLLC for The Steel
Network, Inc.

Paul E. Fahrenkopf, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
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Before Kuhlke, Ritchie and Kuczma, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On September 15, 2009, The Steel Network, Inc.
(applicant) filed an application to register MID-WALL in
standard characters for goods ultimately identified as
“light steel framing components for a wall structure,
namely reinforced brackets and reinforcing plates for
securing the wall brackets to a floor structure” in
International Class 6.
Registration was originally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77827263
2
the basis that MID-WALL is merely descriptive of
applicant’s goods. Applicant subsequently filed an
amendment to seek registration on the Supplemental
Register. In response, the examining attorney refused
registration on the Supplemental Register under Section 23
of the Trademark Act, 15 U.S.C. § 1091, on the ground that
MID-WALL is incapable of identifying applicant’s goods.
In view of applicant’s amendment, the sole issue in
the appeal is whether MID-WALL is generic for applicant’s
goods and, thus, unregistrable on the Supplemental
Register.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence." In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987); see also In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987). The
critical issue is to determine whether the record shows
that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of goods or services in question. H.
Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
Serial No. 77827263
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1992). Making this determination “involves a two-step
inquiry: First, what is the genus 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?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
We find that the genus of goods at issue in this case
is adequately defined by applicant’s identification of
goods, specifically, “light steel framing components for a
wall structure, namely reinforced brackets and reinforcing
plates for securing the wall brackets to a floor
structure.” This genus includes framing components
designed to be used for the mid-wall section of a “wall
structure.” See Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper
genericness inquiry focuses on the description of the
[goods or] services set forth in the [application or]
certificate of registration”).
Serial No. 77827263
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Turning to the second inquiry, we first find that
because there are no limitations in applicant’s
identification of goods the relevant consumer would include
professionals and non-professionals purchasing such goods.
It is the examining attorney’s position that
applicant’s goods, as identified, include the “narrower
category of light steel framing components used in the
middle of a wall [and thus] MID-WALL would be understood by
the relevant public as referring to that category of
goods.” Ex. Att. Br. p. 2. Further, the examining
attorney asserts that:
The only evidence of record submitted by
applicant relating to its goods indicates that
the goods are for placement and use in one place,
that is, MID-WALL. There is no evidence or
argument that applicant’s goods are used anywhere
else. It would seem odd that such goods marketed
under the term MID-WALL would be purchased for
placement at the top or end of a wall ... [and]
the relevant public surely would understand the
term primarily to refer to goods to be used in
the middle of a wall.

Ex. Att. Br. p. 3.
Thus, the examining attorney concludes that “MID-WALL
is generic for applicant’s [goods] because it is the
location where the goods are placed in constructing a wall
(and applicant does not claim otherwise).” Id.
Applicant never indicated that its goods are not for
use with the “mid-wall.” In addition, the only “evidence”
Serial No. 77827263
5
submitted by applicant is its specimen of record, shown
below:

In support of his position that MID-WALL is generic,
the examining attorney submitted printouts of webpages from
third-party websites using the term “MID-WALL SUPPORT” in
connection with a variety of “supports that are placed in
approximately the middle of a wall, the same function as
applicant’s goods.” Ex. Att. Br. p. 4. The pertinent text
from two examples is reproduced below (emphasis added):
[description of invention in patent application]
FIG. 1 discloses a further known extrusion. The
extrusion of FIG. 1 is used in frame assemblies
for fabric wall coverings for the purpose of
providing a mid-wall support inside a frame
assembly (www.patentgenius.com); and

Frame up your interior 2X4 walls so that the back
side of the framing remains at least ½” off the
wall. ... If any mid-wall support is needed
then use a PT block to attach to the wall and
then attach your framing to the block.
(http://boards.diynetwork.com).

In traversing the refusal, applicant argues that the
term MID modifies the word WALL and that it “may refer to a
‘middle wall disposed between outer walls’ or to the
Serial No. 77827263
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‘middle portion of a single wall’ ... [or] a partial wall.”
App. Br. p. 5. Applicant contends that the evidence
proffered by the examining attorney does not support the
refusal because it refers to other terms, e.g., MID-WALL
SUPPORT or MID WALL SUPPORT RAILS, used in connection with
other goods, e.g., support rails or extrusions for frame
assemblies. Applicant argues that there are no examples of
competitors using the term MID-WALL and the evidence does
not show how the relevant public would view the term MID-
WALL.
It is not necessary to show that relevant public uses
the term to refer to the genus; it is sufficient that
consumers would understand the term to be generic. In re
1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682,
1685 (Fed. Cir. 2009). Moreover, adjectival use does not
remove a term from being generic when it is used in
connection with applicant’s framing components for a wall
structure. When a word or term is the name of a key
ingredient, characteristic or feature of the goods it can
be generic for those goods and thus incapable of
distinguishing source. In re Sun Oil Co., 426 F.2d 401,
165 USPQ 718 (CCPA 1970) (CUSTOM BLENDED generic for
gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161
USPQ 606 (CCPA 1969) (PASTEURIZED generic for face cream);
Serial No. 77827263
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In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB
1991) (PERMA PRESS generic for soil and stain removers).
Because MID-WALL directly names the most important or
central aspect or purpose of applicant’s goods, that is,
that the reinforced brackets and reinforcing plates are to
be used in supporting the MID-WALL “this term is generic
and should be freely available for use by competitors.”
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628 (TTAB
1998). As the examining attorney states, the instant
application presents facts and issues which are similar to
those presented in In re Central Sprinkler Co., 49 USPQ2d
1194 (TTAB 1998) (ATTIC generic for sprinklers installed
primarily in attics). There, as here, “the matter sought
to be registered was the name of part of a building
structure (ATTIC and MID-WALL). In both cases, the
evidence shows that applicant actually used the matter
sought to be registered as part of a larger phrase (ATTIC
SPRINKLER and MID-WALL SUPPORT) but chose not to include
that other clearly generic wording (SPRINKLER and SUPPORT)
as part of the matter sought to be registered.” Ex. Att.
Br. p. 5. In Central Sprinkler, the applicant’s specimen
displayed the wording ATTIC SPRINKLER and the Board found
that “[t]he fact that applicant has chosen not to include
the term ‘sprinkler’ in the mark sought to be registered
Serial No. 77827263
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should not lead to the registrability of ATTIC standing
alone. The simple fact is that ATTIC, when applied to
sprinklers for use in an attic, ‘immediately and
unequivocally describes the purpose, function and nature of
the goods.’” Central Sprinkler, 49 USPQ2d at 1198
(citation omitted). Here, applicant uses the term MID-WALL
SUPPORT and consumers would understand those words to
indicate that the goods are for mid-wall support and “the
fact that applicant has chosen to not include the term
SUPPORT in the mark sought to be registered should not lead
to the registrability of MID-WALL standing alone.” Ex.
Att. Br. p. 6.
The absence of examples of competitor use in the
record does not obviate the refusal. The fact that an
applicant may be the first and only user of a term in
connection with its specific goods does not justify
registration if the only significance conveyed by the term
is that of the category of goods. In re Greenliant Systems
Ltd., 97 USPQ2d 1078, 1084 (TTAB 2010). See also In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12
(Fed. Cir. 1987) (“[T]he PTO has satisfied its evidentiary
burden [with] evidence including dictionary definitions
that the separate words joined to form a compound have a
Serial No. 77827263
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meaning identical to the meaning common usage would ascribe
to those words as a compound”).
Further, the absence of public use of this term with
applicant’s precise goods is not fatal to the examining
attorney’s case. Cf. Gould, 5 USPQ2d 1110 (fact that
generic designation not found in dictionary not controlling
on the question of registrability). See also In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983) (The fact that applicant may be the first and
only user of this generic designation is not dispositive on
the issue of genericness). As noted by the examining
attorney, the USPTO must show that the relevant public
would understand the applied-for mark as a whole to have
generic significance, not that they use it in that manner.
In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d
1682, 1685 (Fed. Cir. 2009). Moreover, the evidence of
generic use of this term “for components for a wall
structure when used in the middle of a wall” (Ex. Att. Br.
p. 5) serves to underscore how the relevant purchasers
would perceive MID-WALL in connection with applicant’s
specific goods. The specimen of record also serves as
evidence to understand how the public would perceive the
matter sought to be registered. Gould, 5 USPQ2d at 1019
(“Gould’s own submissions provided the most damaging
Serial No. 77827263
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evidence [that the word is generic]”); Central Sprinkler,
49 USPQ2d at 1197. As the examining attorney states,
applicant’s use “is more in the nature of indicating the
type and/or location of the wall support, not as a
potential source identifier [and] [t]his conclusion is
inescapable in view of such use and the obvious meaning
thereof.” Ex. Att. Br. p. 5.
Applicant’s proposed mark simply names the category of
goods included within its genus, specifically, brackets and
plates for use as mid-wall supports, as shown by its
specimen of use. Based on this record, the examining
attorney clearly established that MID-WALL is generic for
the identified goods, or more precisely under the language
of Section 23 is not “capable of distinguishing the
applicant’s goods or services.” 15 U.S.C. § 1091(c).
Decision: The refusal to register MID-WALL on the
Supplemental Register based on genericness under Section 23
is affirmed.