Wet Technologies, Inc.

Trademark Trial and Appeal Board

Jul 20, 2012

No. 77135323 (T.T.A.B. Jul. 20, 2012)

Mailed: July 20, 2012

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

In re Wet Technologies, Inc.
________

Serial No. 77135323
Filed March 20, 2007
_______

Glenn J. Wurzel, Law Offices of Glenn J. Wurzel, for
applicant.

S. Michael Gaafar, Law Office 116, Michael W. Baird,
Managing Attorney.
_______

Before Bucher, Mermelstein, and Shaw, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant Wet Technologies, Inc. seeks registration of
the mark

for:
Particle blast cleaning machines; machine tools
for water blasting, descaling, derusting, wet
lapping, wet peening, slurry processing, and
deburring; wet etching machines

in International Class 7, and

Rust removal

THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77135323

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in International Class 37.1
Applicant appeals from the examining attorney’s final
requirement to disclaim the exclusive right to use “WET
TECHNOLOGIES” apart from the mark as shown.
We affirm.
I. Relevant Facts and Law
Because this case involves some procedural anomalies,
we explain the relevant facts and circumstances in more
detail than usual.
A. Goods and Services on Appeal
At the time of appeal, the subject application
included the following services in International Class 40,
in addition to the Class 7 and 37 goods and services listed
above:
Water blasting services; particle blasting
services; metal finishing; wet peening; slurry
processing; wet etching of metals; wet lapping;
processing of metals, namely, mechanical
descaling.

Applicant’s notice of appeal — filed by mail — was
timely received on September 10, 2010, along with an
enclosed check for $200.00. The fee for an ex parte appeal

1 Based on first use and use in commerce as of June 1, 1999. The
Office’s database entry for this application indicates that a
disclaimer of “WETTECHNOLOGIES” was submitted, although that is
clearly incorrect; such a disclaimer was neither required by the
examining attorney nor submitted by applicant. The Office’s
records will be corrected accordingly.
Serial No. 77135323

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is $100.00 per International Class, Trademark Rule
2.6(a)(18), and this application had three classes, leaving
applicant’s payment $100.00 short of the required fee for
an appeal of all three classes. When the appeal was
instituted, the Board paralegal issued an order noting the
deficiency and directing applicant to
advise whether it is appealing the refusal of
registration in all three classes, and if so, to
file an additional $l00.00, or to specify the
classes in which it is appealing, failing which
the appeal will go forward in the lowest numbered
classes. Applicant is allowed until thirty days
from the date hereof for this purpose.

Board Order2 (Sept. 16, 2010).
There is no indication in the Board’s file, the file
of the application, or in the USPTO’s Revenue Accounting
and Management system3 that applicant ever responded to the
paralegal order or tendered the deficient fee.
Accordingly, the fee submitted with the notice of appeal —

2 The Board’s order cited Trademark Rule 2.85(e), which is
inapposite. A more appropriate citation would have been to
Trademark Rule 2.6(a)(18) (fee $100 per class), 2.141(b) (fee
must be paid for each class; if insufficient fee is submitted and
not remedied, the fee paid will be applied to the classes in
ascending order), and 2.142(a) (“An appeal is taken by filing a
notice of appeal . . . , and paying the appeal fee.”).
Notwithstanding the incorrect citation, the paralegal was
entirely correct in handling the matter. See Trademark Rule
2.141(b).
3 A report of all fees paid with respect to the subject
application indicates a $650 payment for the application (by
credit card) posted March 20, 2007; a $375 payment (by check) for
an additional class, posted June 25, 2008; and a $200 payment (by
check) for an ex parte appeal, posted September 14, 2010.
Serial No. 77135323

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$200.00, or enough for two classes of goods or services —
is applied to the two lowest classes in this application,
namely, International Classes 7 and 37.
Because the appeal fee has not been paid with respect
to applicant’s International Class 40 goods, the appeal is
DISMISSED with respect to Class 40, and we will not
consider applicant’s appeal as to those services. Further,
because the refusal of registration applied to applicant’s
class 40 services, the failure to perfect an appeal as to
that class is fatal to those services, see Trademark Rule
2.64(a) (only proper response to a final refusal is appeal
or compliance with requirement), and applicant’s Class 40
services will be abandoned in due course.4 Trademark Rule
2.65(a) (abandonment).
B. Applicant’s Goods and Services
To the extent relevant here, applicant sells machines
for cleaning, water blasting, descaling, derusting, wet
lapping, wet peening, slurry processing, deburring, wet
etching, and similar operations, and provides rust removal
services. According to the evidence of record, the

4 Applicant could have avoided this problem had it filed its
notice of appeal using ESTTA, the Board’s electronic filing
system, which automatically calculates the correct filing fee.
ESTTA is available at http://estta.uspto.gov. See generally
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 110.09, et
seq. (3d ed. rev. 2011), for information on using ESTTA.
Serial No. 77135323

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machines applicant sells and uses to perform its services
employ a mixture of water and an abrasive (or sometimes
just water), sprayed under pressure to ablate, clean, etch,
or peen a surface. The kind of abrasive used, the
pressure, and other variables can be adjusted to suit the
application. Applicant’s goods and services appear
appropriate for, among other things, the thorough cleaning
or (re)surfacing of parts with minimum damage in
applications requiring a high degree of precision, such as
in the aviation industry.
The following information is from promotional
material submitted by applicant:
Wet Blast Slurry machines clean parts quickly
without damaging sensitive machined surfaces with
either manual or automatic equipment. No
contamination is left on the surface to interfere
with welding or dye penetrant inspection.

* * *

What does it mean to “Wet Tec” your parts?

• The Wet Tec Slurry Process is a mixture of media
(abrasive) and water driven by a special pump,
through an air accelerated nozzle or airless
means across the surface of a part to enact a
desired finish.

• The Wet Tec High Pressure Process – In many
industrial applications, water only, elevated in
temperature and pumped at high volume or pressure
(from 20 to 8,000 psi) through nozzles can be
effective for cleaning, oil removal, de-flashing
and de-scaling.

Serial No. 77135323

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• All of our manual and automatic systems provide
closed loop filtered water to rinse parts clean.

* * *

[The] Advantage that the wet cleaning system has
over other types is that you can increase the
compressed air pressure at the manual nozzle for
aggressive cleaning, then lower it to smooth or
lap part surfaces while using the same media.

* * *

Other evidence of record sheds further light on wet
blasting:
Wet Grit Blast Cleaning Solution meets aviation
MRO needs.
September 10, 2009 — Enabling replacement of dry
grit with wet grit blasting to reduce or
eliminate parent material removal, Wet Tech
Process helps meet and exceed SPOP for wet grit
blasting of major rotating parts. Aqueous wet
and water blast cleaning equipment and machinery
suit advanced applications for OEM parts
cleaning. . . . .

Thomas Net News, http://news.thomasnet.com/fullstory/565687
(March 5, 2010). The same source quotes a news release
from applicant:
The Wet Technologies high volume slurry process
mixes and delivers a high concentration mixture
of water and media to a nozzle or multiple
nozzles where regulated compressed air is
introduced to adjust the process aggressiveness.
The parts are then rinsed with pressurized water
from the included closed loop particle filtration
system. . . .

C. Prosecution History
Upon his initial examination of this application, the
Serial No. 77135323

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examining attorney issued a combined examiner’s amendment
and priority action (we are not concerned with the latter5).
Pursuant to the examiner’s amendment, applicant authorized
the amendment of the application to include the following
disclaimer:
No claim is made to the exclusive right to use
“WET” and “TECHNOLOGIES” apart from the mark as
shown.

Ex. Amend. (July 3, 2007). The examiner’s amendment stated
that it had been entered with the consent of applicant’s
counsel of record, and applicant voiced no objection to it.
After other issues were resolved, the examining
attorney issued a priority action with a requirement to
disclaim “WET TECHNOLOGIES” apart from the mark as shown:
The following newly raised issue was discussed in
communication with Glenn J. Wurzel on March 20,
2009. The examining attorney apologizes for any
issues caused by the timing of this requirement.

Disclaimer
The applicant disclaimed the individual words
“wet” and “technologies”; however, these words
appear together in the mark as the unitary phrase
“wet technologies.”

Unregistrable wording must be disclaimed in its
entirety; words that form a grammatically or
otherwise unitary expression must be disclaimed
as a composite. See, e.g., In re Med.
Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992)

5 During the course of examination, there were several office
actions issued; all requirements other than the disclaimer issue
before us have been satisfied.
Serial No. 77135323

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(finding MEDICAL DISPOSABLES a unitary expression
that must be disclaimed as a composite); Am.
Speech-Language-Hearing Ass’n v. Nat’l Hearing
Aid Soc’y, 224 USPQ 798, 804 n.3 (TTAB 1984)
(finding CERTIFIED HEARING AID AUDIOLOGIST “a
unitary expression that should be disclaimed in
its entirety”); In re Wanstrath, 7 USPQ2d 1412,
1413 (Comm’r Pats. 1987) (finding “GLASS
TECHNOLOGY” a unitary expression such that
petitioner’s request to substitute separate
disclaimers of “GLASS” and “TECHNOLOGY” was
denied).

Separately disclaiming the exclusive right to use
individual components or phrases is generally
appropriate when the components are sufficiently
separated by registrable matter, which is not the
case in this instance. TMEP § 1213.08(b).

Therefore, the applicant must amend the
disclaimer to appear in the following format:

No claim is made to the exclusive right to
use “WET TECHNOLOGIES” apart from the mark
as shown.

See TMEP § 1213.08(a)(i).

Ofc. Action (March 24, 2009).
By response to the priority action, applicant declined
to provide the required disclaimer, arguing that a
disclaimer was unnecessary.6 The examining attorney then

6 In his brief, the examining attorney indicates that he
interpreted applicant’s refusal to disclaim “WET TECHNOLOGIES”
“as a withdrawal of the disclaimer statement submitted in July,
2007,” i.e., applicant’s disclaimer of “WET” and “TECHNOLOGIES.”
We see no clear statement in the record that this was applicant’s
intent, nor was the examining attorney’s interpretation stated in
either of the two Office actions which followed applicant’s
initial refusal to disclaim “WET TECHNOLOGIES.”

Serial No. 77135323

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issued another non-final Office action,7 repeating the same
requirement. See Ofc. Action (Sept. 23, 2009). Applicant
filed a response disagreeing, but without any additional
argument or evidence, Resp. (Feb. 16, 2002), whereupon the
examining attorney made final his requirement for a
disclaimer of “WET TECHNOLOGIES.” Ofc. Action (March 15,
2010).
Finally, on September 10, 2010, applicant filed its
notice of appeal with the Board, and on the same day filed
a request for reconsideration, along with over 250 pages of

While the examining attorney’s assumption clearly gave
applicant the benefit of the doubt, it may have been better in
this situation to allow applicant to speak for itself on whether
it wished to withdraw its original disclaimer. While we accept
the examining attorney’s assumption that applicant intended to
withdraw its disclaimer of the individual words, it is unclear
whether that was in fact applicant’s intention, or that it now
disputes the descriptiveness of the individual words it had
previously disclaimed.
7 It is unclear to us why the examining attorney’s September 23,
2009, action was non-final. The same requirement had been
previously made, and no new issues were raised. See generally
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 714.03 (8th ed. 2011).
Although the examining attorney made a slightly different
argument in support of the requirement and attached new evidence
to this action, that is not generally a reason to issue a non-
final action when the same refusal or requirement has been
previously made.
While the examining attorney’s failure to issue a final action
on September 23, 2009, resulted in some delay, applicant was not
without a remedy: Although rarely invoked, “[a] second refusal
on the same grounds may be considered as final by the applicant
for purpose of appeal.” Trademark Rule 2.141(a). Had applicant
been concerned with the delay in issuing a final action, it could
have treated the September 23 action as final and filed an appeal
within six months, rather than filing a response advancing no new
argument or evidence.
Serial No. 77135323

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new evidence, all but one page of which consisted of
printouts from the USPTO’s TESS database of applications
and registrations. Although applicant’s notice of appeal
expressly indicated that applicant had filed a request for
reconsideration, the Board did not remand the file to the
examining attorney for further consideration, as should
have been done, see TBMP § 1204. Moreover — although the
examining attorney specifically mentioned applicant’s
request for reconsideration in his brief, Ex. Att. Br. at 6
— neither applicant nor the examining attorney requested
that the Board remand the file for further examination in
light of applicant’s new evidence, and briefs were filed
instead.
Although applicant’s request for reconsideration was
timely filed and should have been formally considered by
the examining attorney prior to the submission of any
briefs on appeal, a remand for that purpose would
accomplish nothing but delay at this point. It is clear
from the examining attorney’s brief that he has in fact
considered applicant’s new evidence, although he denies
that it merits a change in position. Ex. Att. Br. at 6-7.
Further, we consider applicant’s evidence to be of record
and will include it in determining the merits of the
appeal. Although the procedure was irregular, applicant
Serial No. 77135323

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has gotten all of what it would have been entitled to had
the file been remanded for consideration of the request for
reconsideration prior to briefing, namely, entry of the new
evidence and arguments into the record, consideration by
the examining attorney, and consideration of the new
evidence by the Board on appeal. We accordingly proceed as
if the request for reconsideration had been properly
considered and formally denied prior to briefing.
Finally, we note that — in addition to the evidence
applicant submitted during examination (including with its
request for reconsideration) — applicant listed in both its
opening brief and in its reply brief what it claims are a
number of registrations which have issued, App. Br. at 10-
11; Reply Br. at 6-7, and referred to an addendum to its
opening brief which lists more such marks and registration
numbers. See App. Br. Addendum B. These lists raise
several issues.
First, a list is not an appropriate way to make third-
party registrations of record; copies of the registration
records from the USPTO’s database should be submitted (as
applicant did with its request for reconsideration). In re
Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996)
(citing In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB
1994)). Second, even if acceptable copies of the
Serial No. 77135323

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registrations had been filed with applicant’s briefs,
evidence submitted with a brief is untimely. The record
should be complete at the time of appeal; if applicant or
the examining attorney wish to introduce additional
evidence after an appeal is filed, the proper procedure is
to request a remand for that purpose. Trademark Rule
2.142(d). While the examining attorney can waive any
objection to evidence improperly submitted with applicant’s
opening brief8 — either explicitly, or implicitly by
discussing or relying on the improper evidence without
preserving an objection — the examining attorney did not do
so in this case, and so we will not consider the
registrations listed in either of applicant’s briefs,
except to the extent that evidence of them was properly
submitted prior to appeal (e.g., with applicant’s request
for reconsideration).9

8 The examining attorney has no opportunity to object to evidence
submitted with applicant’s reply brief, so we will not consider
potential objections to such evidence waived for failure to raise
them. New evidence in or attached to a reply brief is manifestly
untimely and will not be considered. In re Zanova Inc., 59
USPQ2d 1300, 1302 (TTAB 2001).
9 Even if the examining attorney had waived his objection to
applicant’s lists, the waiver only allows consideration of what
was actually submitted, i.e., the list itself. The listing does
not serve to introduce the full records of the listed
registrations. In re Houston, 101 USPQ2d 1534, 1537 n.7 (TTAB
2012). As is often the case, applicant’s lists are of little or
no use, since they provide only the registration number, the word
mark, and what appears to be a one- or two-word summary of the

Serial No. 77135323

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D. Relevant Law
“The Director may require the applicant to disclaim
an unregistrable component of a mark otherwise
registrable.” Trademark Act § 6(a); 15 U.S.C. § 1056(a).
Merely descriptive or generic terms are unregistrable under
Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), and
therefore are subject to a disclaimer requirement if the
mark is otherwise registrable. Failure to comply with a
disclaimer requirement is a ground for refusal of
registration. See In re Omaha Nat’l Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987); In re Box Solutions Corp.,
79 USPQ2d 1953, 1954 (TTAB 2006).
The examining attorney alleges that “WET TECHNOLOGIES”
is merely descriptive of applicant’s goods and services. A
term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10

goods or services. (Applicant’s Addendum B doesn’t even include
this summary of goods or services.) The information that
applicant has made of record does not include vital data, such as
the entire mark in question (including any stylization or design
elements), the actual identification of goods or services,
whether the registration is still in force, and whether it was
registered pursuant to a disclaimer, a § 2(f) claim, or on the
Supplemental Register. Without such information, we can draw no
conclusions from applicant’s lists.
Serial No. 77135323

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(Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the products for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). In other words, the issue is whether someone
who knows what the products are will understand the mark to
convey information about them. In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark
Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re Am. 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); In re Shutts, 217 USPQ 363, 364-65
(TTAB 1983); In re Universal Water Sys., Inc., 209 USPQ
165, 166 (TTAB 1980).
II. Discussion
On appeal, applicant makes two arguments as to why a
disclaimer is unnecessary: (1) the mark is a unitary, non-
Serial No. 77135323

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descriptive term, which functions as a trademark; and
(2) the USPTO is estopped from requiring a disclaimer. We
begin with the second argument.
A. Estoppel
Applicant’s estoppel argument is as follows:
The USPTO required separate disclaimers of the
term “wet” and the term “Technologies” . . . and
are [sic] estopped from asserting two years later
that appellant must disclaim the term “wet
technologies” in it’s [sic] entirety. If the
disclaimer at issue now would have been raised
two years ago, when appellant's trademark
application was filed, the subsequent two years
involved in the various Office Actions (which had
nothing to do with the current disclaimer issue)
would not have occurred and this matter would
have been resolved in a much timelier fashion.

App. Br. at 11-12.
Applicant cites no authority for this argument, and we
are not aware of any. To the contrary, it is the statutory
obligation of the USPTO to examine applications for
registration in accordance with the applicable laws and
regulations, and to issue only those registrations which
are found to be warranted under law. See generally
Trademark Act § 12; Trademark Rule 2.61. We are aware of
no authority which holds that the USPTO is barred from
raising a new refusal or requirement after a first (or
subsequent) Office action, or — with one exception not
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relevant here10 — after a certain amount of time. Simply
put, the failure to raise a requirement or ground for
refusal in a first Office action is not a promise or legal
commitment by the USPTO that the mark will be registered or
that no such refusal or requirement will ever be made.
Indeed, at any time prior to registration (and possibly
even after) the USPTO has both the authority and the duty
to correct its own errors to avoid issuing a registration
contrary to law. Last Best Beef v. Dudas, 506 F.3d 333,
340-41 (2007) (“it would be ‘an abuse of discretion to
prevent an agency from acting to cure . . . legal
defects.’” (quoting Citizens Against the Pellissippi Pkwy.
Extension v. Mineta, 375 F.3d 412, 416 (6th Cir. 2004))).
It is true that examining attorneys are expected to
raise all potential issues in a first Office action — at
least to the extent possible. TMEP § 704.01 (“Every effort
should be made to avoid piecemeal prosecution, because it
prolongs the time needed to dispose of an application.”).

10 Pursuant to the Madrid Protocol and domestic implementing
legislation, when examining an application under the Madrid
Protocol, see Trademark Act § 66(a), 15 U.S.C. § 1141f(a), the
USPTO must raise any ex parte ground for refusal of registration
no later than eighteen months from receipt of the application
from the International Bureau. See Trademark Act § 68(c); 15
U.S.C. § 1141h(c). (An opposition may be filed later than
eighteen months, but only if the International Bureau has been
notified of that possibility prior to the passage of eighteen
months. Id.) However, this provision does not apply to
applications for registration under Trademark Act §§ 1 or 44.
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However,
[i]f in the first Office action an examining
attorney inadvertently failed to refuse
registration on a clearly applicable ground or to
make a necessary requirement, the examining
attorney must take appropriate action to correct
the inadvertent error in a subsequent action.
Examining attorneys should exercise great care to
avoid these situations, and should take this step
only when the failure to do so would result in
clear error.

TMEP § 706.
Although this policy dictates that a new refusal or
requirement should only be raised in cases of “clear
error,” we will not consider whether the examining
attorney’s failure to raise the requirement at issue would
have been clear error, because the determination of “clear
error” is committed to the discretion of the examining
attorney and his supervisors. The Trademark Trial and
Appeal Board has the authority to review the outstanding
refusals or requirements under the applicable statute and
rules, but it does not exercise supervisory authority over
examining attorneys. An examining attorney’s clear error
determination is reviewable only by way of a petition to
the Director. By contrast, “[t]he Board’s determination on
appeal is limited to the correctness of the underlying
substantive [requirement or] refusal to register.” In re
Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1107-08 (TTAB 2010)
Serial No. 77135323

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(citing In re Sambado & Son Inc., 45 USPQ2d 1312, 1314-15
(TTAB 1997)).
The delay in this case is regrettable. (We note the
examining attorney’s appropriate apology in his March 24,
2009, Office action and join in the sentiment.) But delay
does not give applicant the right to a registration or
provide a defense to a refusal or requirement if the mark
is not otherwise entitled to registration.
B. Should “WET TECHNOLOGIES” be Disclaimed?
1. Unitary Expressions and Disclaimers
Applicant argues that its mark is “unitary,” and that
a disclaimer is therefore unnecessary. The examining
attorney disagrees. We begin with a discussion of the
concept of unitary expressions in trademarks.
A mark or portion of a mark is considered
“unitary” when it creates a commercial impression
separate and apart from any unregistrable
component. That is, the elements are so merged
together that they cannot be divided to be
regarded as separable elements. In re EBS Data
Processing, 212 USPQ 964, 966 (TTAB 1981). If
the matter that comprises the mark or relevant
portion of the mark is unitary, no disclaimer of
an element, whether descriptive, generic, or
otherwise, is required.

TMEP § 1213.05.
While an applicant may be required to disclaim any
unregistrable (in this case descriptive) part of a mark, it
has long been recognized that individual parts of a
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trademark do not always create individual impressions. Two
or more words or design elements can combine to form a
single impression that is different from the individual
elements. The unitary doctrine simply recognizes that the
elements comprising a unitary expression should be
considered together, as a single unit. It is improper to
require the disclaimer of part of a unitary expression,
because such an expression must be considered as a whole.
However, the mere fact of being “unitary” will not shield
an expression from a disclaimer requirement (or a refusal
to register) if the entire unitary expression is
unregistrable:
[T]wo descriptive words may, when combined, form
a nondescriptive phrase. However, the mere act
of combining does not in itself render the
resulting composite a registrable trademark.
Rather, it must be shown that in combination the
descriptiveness of the individual words has been
diminished, that the combination creates a term
so incongruous or unusual as to possess no
definitive meaning or significance other than
that of an identifying mark for the goods.

In re Med. Disposables Co., 25 USPQ2d 1801, 1804 (TTAB
1992) (citing Calspan Tech. Prods., Inc., 197 USPQ 647
(TTAB 1977) (affirming refusal of the unitary term
FINGERSCAN as descriptive)).
For example, while a requirement to disclaim “TIRE” in
the mark TIRE-X (for tire cleaner) was held improper
Serial No. 77135323

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because “TIRE-X” is a unitary expression comprising both
descriptive and distinctive matter, “X” Labs., Inc. v.
Odorite Sanitation Serv. of Balt., Inc., 106 USPQ 327, 329
(Comm’r 1955), disclaimer of “STEEL/GLAS” in the mark
UNIROYAL STEEL/GLAS (for tires) was affirmed, In re
Uniroyal, Inc., 215 USPQ 716, 719 (TTAB 1982), as was the
requirement to disclaim FIRST TIER
apart from FIRSTIER and design (for
banking services), in light of evidence that “first tier”
describes a class of banks, In re Omaha Nat’l Corp., 2
USPQ2d at 1860. In the latter two examples, “STEEL/GLAS”
and “FIRSTIER” were both unitary expressions, but
nonetheless held unregistrable because they were, as a
whole, descriptive.
As summarized in the TMEP:
A compound word mark is comprised of two or more
distinct words (or words and syllables) that are
represented as one word (e.g., BOOKCHOICE,
PROSHOT, MAXIMACHINE, and PULSAIR).

If a compound word mark consists of an
unregistrable component and a registrable
component combined into a single word, no
disclaimer of the unregistrable component of the
compound word will be required.

If a composite mark consists of a compound word
combined with arbitrary matter, and the compound
word is unregistrable, a disclaimer of the
compound word may be required. . . . .

TMEP § 1213.05(a) (Compound Word Marks).
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As applicant characterizes it, the mark in this case
“consists of the wording ‘wettechnologies’ in stylized
lettering, along with a blue circular design element and a
wavy line. . . .” App. Br. at 3. The terms WET and
TECHNOLOGIES are physically situated next to each other
with no intervening space, forming the single term
“WETTECHNOLOGIES.” This term is clearly unitary, because
it is presented as a single compound word, i.e., two words
physically joined together.
Nonetheless, although “WETTECHNOLOGIES” in applicant’s
mark is run together, and therefore unitary, it is clear
that prospective purchasers seeing applicant’s mark would
readily understand it to be comprised of the two separate
words, WET and TECHNOLOGIES. As applicant points out,
“wet” is presented in heavy, white lettering on a blue
background within a circle, while “technologies” appears as
blue lettering outside the circle, displayed in a lighter
font. Id. The separate words comprising the compound are
clearly visible as such. Moreover, neither applicant nor
the examining attorney contend that the meaning of the
combined words, i.e., “WETTECHNOLOGIES” or “WET
TECHNOLOGIES,” has any significance different from the
meaning of the individual words in the context of the
identified goods and services in the way, for instance, the
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combined words “blue moon” have a meaning different from
either “blue” or “moon.”
To the extent applicant argues that the literal
portion of its mark (WETTECHNOLOGIES) is so inextricably
integrated with the design elements in the mark as to
comprise a visually or conceptually inseparable whole, we
disagree. Applicant’s mark includes two figurative
elements, a solid blue circle, and a wavy line (half in the
circle and half outside it, underlining the letters
WETTECH).
In considering marks comprised of words and designs,
recognizable words are almost always considered to be
conceptually separable from design elements, and they will
rarely be found to be “unitary” with design elements, even
when the designs replace parts of the words. Unlike
designs, words can be seen and remembered as such, and even
more importantly, it is the words — not the design elements
— that the relevant public typically uses to discuss,
search for, or request the branded goods.
For example, the Board found the following mark not
descriptive as a whole

for components of storage systems, but added that
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[w]hen words which are merely descriptive, and
hence unregistrable, are presented in a
distinctive design, the design may render the
mark as a whole registrable, provided that the
words are disclaimed. . . . In our opinion, the
tube-like rendition of the letter “C” in the
words “construct” and “closet” make a striking
commercial impression, separate and apart from
the word portion of applicant's mark. Because of
our finding that the words “CONSTRUCT-A-CLOSET”
are merely descriptive of applicant’s goods,
however, applicant is not entitled to
registration of its mark as a whole absent a
disclaimer of the words “CONSTRUCT-A-CLOSET”.

In re Clutter Control Inc., 231 USPQ 588, 589-90 (TTAB
1986) (citations omitted). Likewise, the TMEP provides the
following hypothetical mark, noting that a disclaimer of
WOOL would be required (for goods such as yarn, we assume):

TMEP § 1213.05(g)(1).
In the case of applicant’s mark, the figurative and
literal elements are even less integrated than those in the
examples above. Although both the figurative and literal
elements discussed are all part of the applied-for mark,
the literal elements are easily recognized and separable,
both visually and conceptually. Therefore, if
WETTECHNOLOGIES is merely descriptive of applicant’s goods
and services, a disclaimer of “WET TECHNOLOGIES” — in its
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entirety, and properly spelled11 — may be required.
2. Descriptiveness of WETTECHNOLOGIES
Applicant seeks to register a mark comprising the term
WETTECHNOLOGIES and a design. The examining attorney has
required applicant to disclaim the exclusive right to use
WET TECHNOLOGIES, apart from the mark as shown, based on
the allegation that WET TECHNOLOGIES is merely descriptive
of applicant’s goods and services, and therefore
unregistrable.
We note again that applicant disclaimed (by examiner’s
amendment) the words “WET” and “TECHNOLOGIES” on July 3,
2007, at the time the mark was first considered by the
examining attorney. No reason for the disclaimer was
specified in the examiner’s amendment (none is required),
although it seems likely that the reason for the disclaimer
was applicant’s agreement that the terms are merely
descriptive — at least individually. Applicant has not
formally withdrawn that disclaimer. Nonetheless, in light
of applicant’s refusal to supply a disclaimer of “WET
TECHNOLOGIES,” and the examining attorney’s interpretation

11 If a disclaimer is required of words which are misspelled in
the mark, the applicant must disclaim the words as properly
spelled. See In re Carlson, 91 USPQ2d 1198, 1203-04 (TTAB 2009)
(URBANHOUZING in mark descriptive of real estate services; proper
disclaimer would be of the term “URBAN HOUSING”).
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of applicant’s actions, see supra note 6, we will not treat
applicant’s earlier disclaimer as a concession of the
descriptiveness of “WET” or “TECHNOLOGIES.” It is readily
apparent, however, that these terms are descriptive in the
context of applicant’s goods and services.
The examining attorney submitted a dictionary
definition of “wet,” as meaning, among other things, “1 a:
consisting of, containing, covered with, or soaked with
liquid (as water).” MERRIAM WEBSTER ONLINE DICTIONARY, http://www
.merriam-webster.com/dictionary/wet (March 15, 2010).
Applicant’s International Class 7 machines and machine
tools are identified in the application as used for “water
blasting, . . . wet lapping, wet peening, slurry
processing, and . . . wet etching. . . .” Identification
of goods. Applicant’s own promotional material and that of
others likewise explains that such machines are used for
surface finishing or refinishing, cleaning, deburring,
etc., employing a process by which water, or a slurry of
water and an abrasive, are directed at a surface under
pressure to accomplish the desired result. There is no
question that such a process is “wet,” in that the process
uses water, and both applicant and others describe it and
similar processes as such. See Thomas Net News,
http://news.thomasnet.com/fullstory/565687 (March 5, 2010)
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26

(“Enabling replacement of dry grit with wet grit blasting
to reduce or eliminate parent material removal. . . .”);
wettechnologies.com, FAQS http://www.wettechnologies.com/
faqs (March 5, 2010) (“WHAT IS WET BLASTING, SLURRY
BLASTING? In the Wet Technologies process, abrasive or non
abrasive media is mixed with water by a specially designed,
high volume pump. The mixture is then sent to a nozzle. .
. .”); Wet Blasting, http://www.nortonsandblasting.com
/nsbwetblast.html (March 15, 2010) (How wet blasting, also
known as slurry blasting, wet etching, liquid abrasive
blasting, and wet honing works: You’ve mixed water with
abrasive before. Think of pumice hand soap. . . .”).
The examining attorney also made of record a
definition of “technology” as meaning:
1. application of tools and methods: the
study, development, and application of
devices, machines, and techniques for
manufacturing and productive processes
• recent developments in seismographic
technology
. . .
2. machines and systems: machines, equipment,
and systems considered as a unit
• the latest laser technology

MSN ENCARTA DICTIONARY, http://encarta.msn.com/encnet/features
/dictionary/DictionaryResults.aspx?refid=l86178738 (March
15, 2010). See also MERRIAM WEBSTER ONLINE DICTIONARY, http://www
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.merriam-webster.com/dictionary/technology (March 15, 2010)
(“2: a manner of accomplishing a task especially using
technical processes, methods or knowledge.”).
The examining attorney has included excerpts from
applicant’s website and those of others as evidence of the
relevant use of “technologies.” For instance, applicant
uses “technologies” on its website in reference to the
“limited technologies” of competing goods and services:
LIQUID ABRASIVE - WET BLASTING
Most traditional wet blast systems rely on
limited technologies such as suction, low volume
diaphragm, and low concentration pump designs.
At Wet Technologies Inc. we offer liquid abrasive
systems geared toward the customer application.
Our standard equipment utilizes our own design
urethane vortex submerged pump for heavy duty
use, extended wear life, wide range
concentration, and continuous cycle applications.

The “Wet Tech” Process and Experience, http://www.
wettechnologies.com/process-description (March 15, 2010).
Another firm involved in the surface treatment business
states that its “associates . . . will develop and market
superior corrosion-control and surface treatment
technologies that deliver innovative, high-performance and
finishing solutions to industry worldwide.” Prism Surface
Coatings Pty. Ltd, http://prismsurface.com/gritblasting
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.aspx (March 15, 2010).12
Finally, the record includes an excerpt from an
article regarding a method “for applications ranging from
decontaminating steel in nuclear plants to cutting meats
and removing paint from airplanes” by using a “high-speed
stream of nitrogen.”13 The article discusses the
previously-available techniques for such tasks:
Current technologies
Nitrogen jet technology arrives on the foundation
of major developments in the cutting and surface
cleaning technologies used within the industrial
and food processing industries over roughly the
past 20 years. Since the 1980s, cutting
technology has steadily progressed away from
conventional mechanical sawing and cutting to the
rapid growth technologies of high-pressure water
jet and laser cutting. Surface cleaning
technologies have also progressed far beyond the
conventional air-propelled sandblasting.
High-pressure water jet. In high-pressure water
jet cutting, materials are cut or machined by a
jet of water forced from a cutting nozzle at a
speed three times that of sound (more than 2,100

12 The Prism website does not mention “wet” blasting, and appears
instead to be concerned with “dry” blasting. We nonetheless find
this evidence relevant as the two processes are related and
appear to compete, at least to some extent. See The Wet Tech
Process, www.wettechnologies.com/faqs (March 15, 2010) (noting
the differences between “dry” and “wet” blasting, and the
advantages of the latter).
13 While it does not appear that this process competes with
applicant’s wet blasting method in the fields of nuclear
decontamination or butchery, wet blasting is clearly suitable for
airplane paint removal and related tasks. See www.
wettechnologies.com/process-description (noting the suitability
of applicant’s wet blasting machinery for “paint and scale
removal” and in “applications such as . . . aircraft engine and
airframe overhaul”).
Serial No. 77135323

29

mph). To output Mach 3 water, the water pressure
is raised to 60,000 pounds per square inch (psi)
by means of special pumps in a system that
incorporates extremely complex materials
technology and design. At these pressures a
slight leak can cause permanent erosion damage to
components.
For cutting harder materials, the system adds an
abrasive material such as sand or garnet to the
high-pressure water stream. As the technology
for adding abrasive materials to the water jet
has matured to produce a more aggressive cut
path, the range of potential applications has
been greatly expanded, especially for cutting
stone and hard metals.
Media blasting. In the last 20 years,
conventional sandblasting has evolved into
numerous types of media blasting applied to a
wide range of surface-treatment tasks, including
cleaning, coating removal, and eroding. When a
ship, airplane, or spacecraft is repainted, its
previous coat of paint will likely need to be
removed. Although solvents have played a major
role in such large projects, increasingly strict
environmental regulation of solvent use provides
strong impetus to seek alternative surface-
treatment technologies.

Goliath, The Ultimate Clean Knife, http://goliath.ecnext
.com/coms2/gi_0199-2560801/The-Ultimate-Clean-Knife.html
(March 15, 2010).
This evidence makes clear that the term “TECHNOLOGIES”
is descriptive of both applicant’s wet blasting machines,
as well as applicant’s rust removal services accomplished
by wet blasting. Both applicant and others clearly refer
to wet blasting and related techniques as “technologies,”
and we find that the term is merely descriptive of
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applicant’s identified goods and services.
The only remaining question is whether the combination
of “WET” and “TECHNOLOGIES” as used in applicant’s mark is
descriptive, or whether the descriptive significance of the
constituent terms has been lost in the process of
combination. Applicant argues that
[t]he average consumer would view appellant's
Mark as a single inseparable impression, rather
than two divisible words, because of the
proximity, letter formatting and circular design
elements.[14] The unusual arrangement in
appellant's Mark results in a unique and catchy
expression which is capable of distinguishing
appellant's goods.

Furthermore, appellant's Mark forms a
unitary whole through a rhyming pattern, use of
alliteration and other sound that creates a
distinctive impression.

App. Br. at 7 (citations omitted).
While we agree with applicant that WETTECHNOLOGIES is
unitary — because the two words are physically connected —
we cannot find on this record that their combination
conveys any different meaning with respect to the goods as
would the separate words “WET” and “TECHNOLOGIES.”
Although applicant argues that the combined term would not
be perceived as “two divisible words,” we note again that

14 As discussed above, we do not find the wording WETTECHNOLOGIES
and the design elements in applicant’s mark to form a unitary
whole.
Serial No. 77135323

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the two words are displayed differently. As applicant
points out, “WET” is in a heavy font displayed in white
against the blue background made by a circular design,
while “TECHNOLOGIES” is in a lighter font, displayed in
blue, and is outside the circle. See App. Br. at 3.
Visually, the two words are easily recognizable as such.
It has often been held that compound terms like applicant’s
mark will easily be recognized as a combination of
constituent terms and it is proper to hold such terms
descriptive, In re Orleans Wines, Ltd., 196 USPQ 516, 517
(TTAB 1977) (BREADSPREAD), or even generic, In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir.
1987) (SCREENWIPE), when warranted by the evidence.
Applicant also refers to what it calls the “unusual
arrangement” of the words in its mark, “result[ing] in a
unique and catchy expression.” But applicant does not
explain what is unique or catchy about its mark, and we do
not see anything odd or unusual about the combination of
“WET” and “TECHNOLOGIES” or their arrangement. As arranged
in applicant’s mark, “WET” precedes “TECHNOLOGIES,”
indicating that the technologies in question are “wet.”
Unlike the opposite arrangement, i.e., “TECHNOLOGIESWET,”
which is somewhat cryptic, the meaning of the words as
arranged in applicant’s mark is perfectly clear.
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Applicant also maintains that its mark has a “rhyming
pattern,” “us[es] alliteration,” or “other sound” in
creating a distinct impression. While we must take account
of differing pronunciations of trademarks, see e.g., Barton
Mfg. Co. v. Hercules Powder Co., 88 F.2d 708, 33 USPQ 105,
107 (CCPA 1937), we do not see any possible way to vocalize
WETTECHNOLOGIES so that it rhymes or alliterates; the words
neither end in the same sound (rhyme), nor do they begin
with the same sound (alliterate). While “WET” ends with
the same sound (“t”) that “TECHNOLOGIES” begins with, this
does not seem particularly unusual or unique, and applicant
does not explain why consumers of its goods and services
would consider this repeated “t” sound to create a
different and distinct impression of the individually
descriptive words.15 In short, there is nothing about the
appearance or sound of WETTECHNOLOGIES that changes its
descriptive meaning.
Finally, applicant argues that the USPTO has granted

15 In this regard, we note that the mark considered by the Federal
Circuit in In re Omaha Nat’l Corp., was FIRSTIER, the telescoped
form of FIRST TIER, which also features a “t” sound at the end of
the first word and the beginning of the second. The court of
appeals affirmed the requirement for a disclaimer. Omaha Nat’l,
2 USPQ2d at 1861. Such marks are not unusual, and are held
descriptive when appropriate. See In re Wells Fargo & Co., 231
USPQ 95, 96-97 (TTAB 1986) (EXPRESSERVICE held descriptive); In
re U.S. Steel Corp., 225 USPQ 750, 751-52 (TTAB 1985) (SUPEROPE
held descriptive).
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33

registration of similar marks in the past. As noted above,
applicant submitted a number of records from the USPTO’s
database with its request for reconsideration, arguing that
the examining attorney’s analysis “is inapplicable,” and
that in the attached records, “the applicants were not
required to disclaim the entire mark, as is being requested
of applicant.”16 Req. for Recon. (Sept. 8, 2010).
Applicant’s evidence is problematic. By our count,
applicant submitted 165 records from the USPTO TESS
database of applications and registrations. Forty-five of
the records were those of cancelled or expired
registrations and three were of pending applications;
neither category is probative. In re DC Comics Inc., 211
USPQ 834, 835 (TTAB 1981) (dead registrations); In re
Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009)
(applications). Twenty-seven were records of registrations
that have marks bearing no similarity whatever to
applicant’s, and we are at a loss to understand why they
were submitted. While the remaining marks included the
word TECHNOLOGIES or WET, fifty-nine were registered with
disclaimers, fifteen on the Supplemental Register, and ten
under the provisions of Trademark Act § 2(f). Six records

16 Applicant misconstrues the requirement at issue. Applicant was
required to disclaim only WETTECHNOLOGIES, not the entire mark.
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34

might possibly be seen as weak support for applicant’s
position (because they were registered without a
disclaimer), but none were for the words WET and
TECHNOLOGIES, and none involved goods related to those at
issue here.
There is little we can make of this evidence. Each
application must be judged on its own merit based on the
evidence of record, and we are not bound by the decisions
of examining attorneys in considering different
applications for different marks and different goods or
services. The Board must make its own findings of fact,
and that duty may not be delegated by adopting the
conclusions reached by an examining attorney. In re
Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re
BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). But to
the extent we can draw any general conclusions from
applicant’s evidence, it is that the USPTO has more often
than not often treated both words WET and TECHNOLOGIES as
descriptive, and that disclaimer of those terms may be
required. While there may be some exceptions to the
general principle, applicant has not indicated what they
might be or why they should apply to the mark at issue. In
sum, this evidence sheds but dim light on the question at
hand, and if anything, it is more supportive of the
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examining attorney’s position than of applicant’s.
We conclude that the relevant public would readily
understand the words WETTECHNOLOGIES in applicant’s mark to
mean that applicant’s blasting and wet etching machines,
and applicant’s rust removal services employ a “wet”
method. The descriptiveness of a term is not considered in
the abstract. Rather, it must be determined in the context
of the identified goods, and from the perspective of the
relevant purchasers of such goods and services. As we
noted above, the issue is whether someone who knows what
the products are will understand the mark to convey
information about them. E.g., Tower Tech, 64 USPQ2d at
1316-17; Patent & Trademark Servs., 49 USPQ2d at 1539.
In this case, potential purchasers of applicant’s
goods and services are not the general public, but
customers with specialized needs for cleaning, etching,
rust removal, and other surface treatments. It is also
clear from applicant’s web pages of record that the
machines at issue are not inexpensive impulse purchases,
and are likely purchased only after some investigation.
While the significance of WETTECHNOLOGIES may not be
apparent to the general public, we have no doubt that
potential customers for applicant’s goods would readily
understand the mark to describe the means by which
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applicant’s blasting machines operate and the way in which
applicant’s rust removal services are performed.
Although applicant argues that its mark “is not
descriptive, because [it] does not immediately inform
consumers of the exact nature of the goods and services
being offered by” applicant, Reply Br. at 3, there is no
requirement that a mark reveal the “exact nature” of the
goods in order to be held descriptive. It is enough that a
term “describes the ingredients qualities, characteristics,
features or parts of the goods, or if it immediately
conveys information regarding a function, purpose, use or
property of the goods.” In re H.U.D.D.L.E., 216 USPQ 358,
358-59 (TTAB 1982) (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978)). Applicant’s mark
easily meets this test.
III. Conclusion
We have carefully considered all of the evidence and
argument properly presented, including any matters we have
not specifically discussed. The appeal is DISMISSED with
respect to applicant’s International Class 40 services, and
those services will be deemed abandoned.
We conclude that the term WETTECHNOLOGIES is merely
descriptive of applicant’s identified goods and services in
International Classes 7 and 37, and that “WET TECHNOLOGIES”
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37

must be disclaimed pursuant to Trademark Act § 6(a).

Decision: The refusal to register in the absence of a
disclaimer of WET TECHNOLOGIES is AFFIRMED.
However, this decision will be set aside (with respect
to applicant’s International Classes 7 and 37 goods and
services) if, within thirty days of the mailing date of
this order, applicant submits to the Board a proper
disclaimer of “WET TECHNOLOGIES.” See Trademark Rule
2.142(g); TBMP § 1218 (3d ed. rev. 2012). The disclaimer
should be worded as follows: “No claim is made to the
exclusive right to use WET TECHNOLOGIES apart from the mark
as shown.” TMEP § 1213.08(a)(i).