Wash World, Inc.

Trademark Trial and Appeal BoardMar 29, 2019

EX (T.T.A.B. Mar. 29, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Wash World, Inc. _____ Serial No. 87300876 _____ Joseph S. Heino and Erin E. Kaprelian of Davis & Kuelthau SC, for Wash World, Inc. John M. Gartner, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Zervas, Taylor and Wellington, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Wash World, Inc. (“Applicant”) seeks registration on the Principal Register of the phrase POWER WHEEL DETAILER (in standard characters) as a mark for “vehicle washing machines” in International Class 7.1 The Trademark Examining Attorney has refused registration of Applicant’s applied-for mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e), on 1 Application Serial No. 87300876 was filed on January 13, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87300876 - 2 - the ground that the phrase POWER WHEEL DETAILER merely describes a characteristic or function of the identified goods. Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal subsequently resumed. Both Applicant and the Examining Attorney filed briefs. For the reasons discussed, we affirm. I. Applicable Law The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted).2 See also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). 2 Applicant misapprehends the “test” set forth in In re Quick-Print Copy Shop, Inc., 616 F. 2d 523, 205 USPQ 505 (CCPA 1980), upon which it also relies, to determine if a mark is merely descriptive of the goods and services with which it is intended to be used. As the Court made clear, “[a] mark is merely descriptive if it immediately conveys to one seeing or hearing it knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used; whereas, a mark is suggestive if imagination, thought, or preception” [sic] is required to reach a conclusion on the nature of the goods or services. Quick-Print 205 USPQ at 507 (citing In re Abcor Development Corp., 588 F.2d 811, 813-14, 200 USPQ 215, 217- 18 (CCPA 1978) (internal footnotes omitted). The Court further explained that in the context of descriptiveness ‘“merely’ is considered to mean ‘only.”’ Quick-Print 205 USPQ at 507 n7. Contrary to Applicant’s interpretation, to be “merely” (“only”) descriptive does not mean that a term “serves no purpose other than to describe the goods or services.” Br. p. 3. 7; TTABVUE 4. Descriptiveness is determined in relation to the goods or services as identified; that a term has different meanings in different contexts is not controlling. In re Bright-Crest Ltd., 204 USPQ 591 (TTAB 1979). The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference the docket and electronic file databases for the involved application. All citations Serial No. 87300876 - 3 - The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, rather it is sufficient if the mark describes a single ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Evidence that a term is merely descriptive to the relevant purchasing public “may be obtained from any competent source, such as dictionaries, newspapers, or surveys,” In re Bayer Aktiengesellschaft, 488 F.2d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007), as well as “labels, packages, or in advertising material directed to the goods.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). It may also be obtained from websites and publications, and an applicant’s own specimen of use and any explanatory text included therein. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001). Where a mark consists of multiple words, the mere combination of descriptive words does not necessarily create a nondescriptive word or phrase. In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely to the TSDR database are to the downloadable .pdf version of the documents. Complete URLs may be found in the cited TSDR records. Serial No. 87300876 - 4 - descriptive components is registrable if the combination of terms creates a unitary mark with a unique, suggestive, or otherwise nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983). However, if each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at 1371. Finally, a mark comprising more than one element must be considered as a whole and should not be dissected; however, we may consider the significance of each element separately in the course of evaluating the mark as a whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756- 57 (Fed. Cir. 2012) (noting that “[t]he Board to be sure, can ascertain the meaning and weight of each of the components that makes up the mark.”). II. Arguments and Evidence The Examining Attorney maintains that the phrase POWER WHEEL DETAILER merely describes the identified goods because it immediately conveys to consumers a characteristic of the goods, namely, that “applicant’s vehicle washing machines are mechanical or electrical and are for use in the meticulous cleaning of wheels.”3 The Examining Attorney has supported this position with the following: 3 9 TTABVUE 5. Serial No. 87300876 - 5 - 1. Dictionary Definitions: “Power” is defined in part as “[o]perated with mechanical or electrical energy in place of bodily exertion; a power tool; power car windows”;4 “Wheel” is defined in part as “[a] solid disk or rigid circular ring connected by spokes to a hub, designed to turn around an axle passed through the center”;5 and “Detail” is defined in part as “[t]o clean (a car interior, for example) meticulously.”6 2. A screen capture from Applicant’s website: Applicant maintains that the Examining Attorney failed to make a ‘“prima facie showing” that its applied-for mark POWER WHEEL DETAILER is merely descriptive of the identified goods; that the phrase POWER WHEEL DETAILER is 4 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2017) (https://www.ahdictionary.com). April 21, 2017 Office Action; TSDR 5. 5 Id. at 12. 6 Id. at TSDR 9. Serial No. 87300876 - 6 - suggestive of its identified goods, because “it does not convey an immediate idea of the identified goods, and instead, requires a mental pause and thought,” and that any doubt regarding the descriptiveness of the phrase it seeks to register should be resolved in its favor. Applicant’s br. pp. 2 and 7.7 In taking this position, Applicant essentially questions the probative value of the Examining Attorney’s evidence, particularly noting that it consists of the definitions of the words “POWER,” “WHEEL” and “DETAILER” and a single reference from Applicant’s website, and asserting that “[u]sing and relying on this reference [from its website] … demonstrates that the Examining Attorney needed something more to rely on in order to support the ‘merely descriptive’ conclusion.” Applicant’s br. p. 3 (emphasis supplied).8 Applicant has supported its position with the following: 1. Internet materials discussing automobile detailing and washing;9 2. Dictionary definitions: “power” is defined in part as “great or marked ability to act; strength; might; force”;10 and “pressure or power washing” is defined in part as “the use of high-pressure water spray to remove loose paint, mold, grime, dust, mud, chewing gum and dirt from surfaces and objects such as buildings, vehicles and concrete surfaces.”11 7 7 TTABVUE 3 and 8. 8 Id. at 4. 9 October 20, 2017 Response to Office Action; TSDR 11-37. 10 Dictionary.com. May 18, 2018 Request for reconsideration; TSDR 6. 11 Wikipedia (www.wikipedia.org/wiki/pressure_washing). May 18, 2018 Request for reconsideration; TSDR 7. Serial No. 87300876 - 7 - We also take judicial notice of the word “detailer,” defined in RANDOM HOUSE KERNERMAN WEBSTER’S DICTIONARY (2010), in part, as “a person who cares for (polishes, paints, cleans, etc.) cars. www.thefreedictionary.com/Detailer. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Contrary to Applicant’s contention, the evidence of record clearly demonstrates that the phrase “POWER WHEEL DETAILER,” as a whole, immediately describes a characteristic of the identified vehicle washing machines, namely, that they are mechanically- or electrically-powered and used to meticulously wash vehicle wheels. The combination of terms is not incongruous, and no additional information is needed for the merely descriptive significance thereof to be readily apparent to prospective purchasers of vehicle washing machines. See, e.g., Duopross Meditech v. Inviro Medical, supra, (SNAP SIMPLY SAFER merely descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes”); In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (THE BREATHABLE MATTRESS held merely descriptive of “beds, mattresses, box springs and pillows,” based on dictionary definitions of “breathable” and “mattress,” and excerpts of web pages that refer to “breathable mattresses” and “breathable bedding”); In re Putman Publ'g Co., 39 Serial No. 87300876 - 8 - USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”). Indeed, the promotional material from Applicant’s website corroborates our conclusion and reads in part: Profile’s DSP-Digital Surface Profile identifies the size and location of the tires and applies specialized detergent for precise and thorough cleaning. Power Wheel Detailer’s side arms adjust to the width of any size vehicle, providing customized high pressure side cleaning. Profile cleans the front and rear with overlapping high pressure coverage from stainless steel turbo nozzles for a value added service your customers will appreciate. The advertisement highlights the phrase POWER WHEEL DETAILER and immediately imparts to consumers that Applicant’s vehicle washing machines are operated with mechanical or electrical energy and clean vehicle wheels. Applicant’s arguments to the contrary do not persuade us otherwise. First, to the extent that Applicant is arguing that each term is defined in the English language, and that the term POWER may impart an additional meaning with respect to Applicant’s services, we agree. On this record, however, it is clear that the meaning (set forth above) for each term has particular descriptive significance when used in relation to Applicant’s goods and that the combination of the terms impart no unique meaning, unlike in the cases cited by Applicant where the Board found a constituent term sufficiently vague in relation to the identified goods or services to avoid a merely Serial No. 87300876 - 9 - descriptive finding.12 Moreover, while we recognize that the word “POWER,” as Applicant points out, may have meanings other than “operated with mechanical or electric energy” relative to its identified goods, i.e., that its vehicle washing machines use a greater amount of might or force or greater water pressure, these meanings also are descriptive of a characteristic or feature of Applicant’s goods. A term that has multiple meanings, all of which are merely descriptive of the goods or services, remains merely descriptive within the meaning of Section 2(e)(1). See In re Carlson, 91 USPQ2d 1198, 1201 (TTAB 2009). Simply put, all of these meanings merely describe a characteristic or feature of Applicant’s goods. Applicant’s contention that its applied-for mark is suggestive because its goods are unknown to a person seeing only the mark is unavailing. The question is not whether someone presented only with the mark could guess what the goods are, but “whether someone who knows what the goods and services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). We are also unpersuaded by Applicant’s contention that the Examining Attorney’s reliance on a screenshot from Applicant’s website demonstrates its mark is suggestive and, by extension, that the record is somehow otherwise deficient. As noted, evidence 12 These cases include, for example, Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, n.3 (TTAB 1989) (“technology” is a vague term which does not immediately describe computer products) and In re Men’s International Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986) (“masters” is a general term which does not immediately describe tennis tournament services). Serial No. 87300876 - 10 - of the public’s understanding of a term or phrase may be obtained from any competent source, including Applicant’s website and any advertising material directed to the goods. N.C. Lottery, at 123 USPQ2d at 1710 (citing Abcor Dev. Corp, USPQ2d at 208; Nett Designs 57 USPQ2d at 1565). Finally, we note Applicant’s reliance on the principle that when there is doubt on the issue of whether a mark is merely descriptive, that doubt should be resolved in favor of the applicant. In the present case, however, the record leaves us no doubt to be resolved. III. Conclusion After careful consideration of all of the evidence and arguments presented, including evidence and arguments not specifically discussed herein, we conclude that when applied to Applicant’s goods, the phrase POWER WHEEL DETAILER, as a whole, immediately conveys, without the need for multi-stage reasoning, a characteristic or feature of the identified goods, namely that Applicant’s “vehicle washing machines” are operated with mechanical or electric energy, or use a greater amount of force or greater water pressure, to meticulously wash vehicle wheels. Decision: The refusal to register the phrase POWER WHEEL DETAILER as merely descriptive under Section 2(e)(1) is affirmed.