Worldwise, Inc.

Trademark Trial and Appeal BoardSep 13, 2019

87719982 (T.T.A.B. Sep. 13, 2019)

Mailed: September 13, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ——— In re Worldwise, Inc. ——— Serial No. 87719982 ——— Nathan P. Koenig, Bay Area Technology Law Group PC, for Worldwise, Inc. Florentina Blandu, Trademark Examining Attorney, Law Office 117, Hellen-Bryan Johnson, Managing Attorney. ——— Before Mermelstein, Shaw, and English, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Alleging an intent to use its mark in commerce, Worldwise, Inc. applied to register the mark THERMAFUSE TECHNOLOGY (in standard characters) for “pet toys” in Interna- tional Class 28.1 Following publication in the Official Gazette and issuance of a notice of allowance, Applicant filed a statement of use accompanied by a specimen, and an amendment of its mark to THERMA-FUSE TECHNOLOGY. The Examining Attorney ap- proved the amendment, but refused registration on the ground that the “mark, as used on the specimen of record, merely identifies a process or system; it does not 1 Filed December 13, 2017. Applicant has disclaimed the exclusive right to use TECHNOLOGY apart from the mark as shown. This Opinion is not a Precedent of the TTAB Serial No. 87719982 - 2 - function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.” Ofc. Action (Dec. 6, 2018) (citing Trademark Act Sec- tions 1, 2, and 45; 15 U.S.C. §§ 1051–1052, 1127). When the refusal was made final, Applicant appealed. We affirm. I. Applicable Law The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registra- tion. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated. In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960). Not surprisingly, Section 1 of the Trademark Act contemplates registration of trademarks. See Trademark Act § 1(a)(1) (“The owner of a trademark . . . may request registration of its trademark. . . .” (emphasis added)); § 1(b)(1) (“A person who has a bona fide intention . . . to use a trademark in commerce may request registration of its trademark. . . .” (emphasis added)). Likewise, Section 2, which sets out various bars to registration, contemplates that what is sought to be registered must be a trademark in the first place. Trademark Act § 2 (“No trademark . . . shall be refused registration . . . unless it. . . .” (emphasis added)). A trademark “includes any word . . . used by a person . . . to identify and distin- guish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods.” Trademark Act § 45. But as the court noted in Standard Oil, not every word that might be used on or in connection with a good is a trademark. To Serial No. 87719982 - 3 - be a trademark, a word must “identify and distinguish” the relevant goods and “indi- cate the[ir] source.” Trademark Act § 45. During examination of an application under Section 1, the Examining Attorney must examine the specimens to determine whether an applicant is using the applied-for matter as a trademark. See In re Safa- riland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (examining attorney should look primarily to the specimen to determine whether a designation would be perceived as a source indicator). As relevant to this case, it has long been determined that a designation that is solely used to designate a process or method is neither a trademark for services, In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973), nor goods, In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166, 167 (CCPA 1975). While a designation may serve as a trademark notwith- standing that it also identifies a method or process, “[a] term that identifies only a process, style, method or system is not registrable as a [trade]mark.” In re HSB Sol- omon Assocs., LLC, 102 USPQ2d 1269, 1270 (TTAB 2012). II. Facts and Arguments With its statement of use, Applicant submitted the following specimen: Serial No. 87719982 - 4 - Stmt. of Use (Oct. 18, 2018) (arrow added). The specimen is identified as packaging for Applicant’s goods. The word ROPETEK appears in large, colorful letters, below which is the following paragraph containing the putative mark: Our patent-pending RopeTekTM manufacturing process uses THERMA-FUSE TECHNOLOGYTM to bond durable, non- toxic polymer to extra strong climbing rope for a toy that stands up to tough play. Id. (the text continues with what appears to be a repetition of the same wording in French). This (and the French text) is the only appearance of THERMA-FUSE TECHNOLOGY on the specimen of record. The application file contains no other evidence Serial No. 87719982 - 5 - of Applicant’s use of its proposed mark. Arguing for reversal of the refusal, Applicant explains the context of the mark on the specimen: “[r]ather than just applying the mark to the packaging, Applicant de- cided to provide background information as to the genesis of the mark in an attempt to educate consumers as to why pet toys bearing this mark are superior to those of its competitors.” App. Br., 4 TTABVUE 2. Applicant continues: Clearly, Applicant’s specimen evidences the prominent dis- play of THERMA-FUSE TECHNOLOGY on packaging for pet toys. It thus performs the function of an association between the mark and the goods such that consumers are able to choose Applicant’s goods and distinguish them from those of its competitors. The fact that Applicant’s packaging includes descriptive information as to the genesis of the mark should not in any way detract from its use as a trademark to identify the source of its pet toys. A refusal to register based upon this descriptive information is not logical. Spe- cifically, if Applicant chose to redact the genesis infor- mation that now appears on its packaging but simply ap- plied the mark THERMA-FUSE TECHNOLOGY thereto, the pre- sent issue would never have arisen. The fact that Applicant chose to provide background information to the consumer should not result in a refusal to register when such refusal would not otherwise have been made. Id. at 3. In response, the Examining Attorney contends that the refusal “should be upheld” because as used on the specimen, THERMA-FUSE TECHNOLOGY identifies a process, and “[a] process or system is only a way of doing something, and is not generally a tangible product.” Ex. Att. Br., 6 TTABVUE 4. “[T]he specimen of record clearly identifies a process, i.e., the manner in which the goods are made, not the source of the goods.” Id. at 5. The Examining Attorney argues that the inclusion of the disclaimed term Serial No. 87719982 - 6 - TECHNOLOGY in Applicant’s mark supports her refusal, and requests judicial notice of two dictionary definitions of that term, the more relevant one defining technology as “the use of scientific knowledge or processes in business, industry, manufacturing, etc.” Cambridge Academic Content Dictionary, https://dictionary.cambridge.org/ dictionary/english/technology (May 22, 2019). Applicant did not object to the Examining Attorney’s request, which we grant. See In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (judicial notice of dictionary entries). III. Analysis Because a process is neither a good nor a service, it follows that a designation which serves solely to identify a process does not function as a trademark, and cannot be registered as one. HSB Solomon Assocs., 102 USPQ2d at 1270. As it is used on Applicant’s packaging, THERMA-FUSE TECHNOLOGY does not identify applicant’s pet toys. Rather, it identifies a method or process of “bond[ing] durable, non-toxic polymer to extra strong climbing rope” as part of the “RopeTek manufacturing process.” As this non-trademark use is the sole use of THERMA-FUSE TECHNOLOGY on Applicant’s specimen, it is the only way potential purchasers will encounter the proposed mark. There is nothing else on the specimen which shows the designation being used to identify the goods, rather than their means of manufacture. The prominent use of ROPETEK on Applicant’s product in the manner of a trade- mark reinforces this impression. While a product may be identified by more than one trademark, purchasers viewing Applicant’s packaging would consider ROPETEK to be the trademark, rather than THERMA-FUSE TECHNOLOGY, which is identified and would Serial No. 87719982 - 7 - be perceived solely as a process or method used in the manufacture of the goods. We also agree with the Examining Attorney that the inclusion of the term TECHNOLOGY in the proposed mark reinforces the impression that THERMA-FUSE TECHNOLOGY refers to a method or process. Her evidence indicates that technology refers to “the use of scientific knowledge or processes in . . . manufacturing.” While not dispositive, this evidence is nonetheless consistent with a conclusion that purchasers would perceive THERMA-FUSE TECHNOLOGY as identifying a method or process, rather that Applicant’s goods. Applicant argues that the refusal is “not logical” because had Applicant deleted the wording identifying THERMA-FUSE TECHNOLOGY as a process, “the . . . issue never would have arisen.” App. Br., 4 TTABVUE 3. There is nothing illogical about such a result. In most, if not all, areas of trademark law, the primary question is consumer perception. As relevant here, we determine likely consumer perception of a mark from the specimens and any other evidence of Applicant’s use. In doing so, it is crucial to consider how an applied-for mark is used. A word is not a trademark simply because it appears on packaging for the goods if purchasers seeing that word would not per- ceive it to be a trademark. That is the case here. Applicant’s own explanation of THERMA-FUSE TECHNOLOGY identifies it as a process, not as an indication of the source of pet toys. Had Applicant deleted the wording surrounding its applied-for mark this may indeed have been a different case. Nonetheless, we must decide this appeal based on the facts before us. On that basis, we cannot conclude that Applicant’s use of its designation is use as a trademark for the identified goods. Serial No. 87719982 - 8 - IV. Conclusion Having considered all of the evidence and argument of record, we find that THERMA-FUSE TECHNOLOGY, as used on the specimens of record, fails to function as a trademark for “pet toys.” Decision: The refusal to register under Trademark Act §§ 1, 2, and 45 is affirmed.