Action Tank, Inc.Download PDFTrademark Trial and Appeal BoardJun 24, 202187827332 (T.T.A.B. Jun. 24, 2021) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: June 24, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Action Tank, Inc. _____ Serial No. 87827332 _____ David B. Sunshine and Brianne L. Polito of Cozen O’Connor P.C., for Action Tank, Inc. Tamara Hudson, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Kuczma, Dunn, and Johnson, Administrative Trademark Judges. Opinion by Dunn, Administrative Trademark Judge: Action Tank, Inc. (“Applicant”) seeks registration on the Principal Register of the proposed mark for: Charitable services, namely, organizing and conducting volunteer programs and community service projects; Developing and coordinating volunteer projects for charitable and community service projects; Charitable services, Serial No. 87827332 - 2 - namely, organizing veterans to undertake projects to benefit the needy and the community, in International Class 35.1 The application includes the statements “The mark consists of the wording ‘ACTION TANK’ in stylized blue font” and “The color blue is claimed as a feature of the mark.” The Examining Attorney refused registration of Applicant’s proposed mark under Section 2(e) (1) of the Trademark Act, 15 U.S.C. 1052(e) (1), as merely descriptive of the identified services. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Descriptiveness Section 2(e) (1) of the Trademark Act precludes registration of “a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive ... of them.” 15 U.S.C. § 1052(e) (1). “A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017). Descriptiveness must be assessed “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average 1 Application Serial No. 87827332 filed March 9, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and in commerce since at least as early as April 8, 2017. References to the application are to the downloadable .pdf version of documents available from the TSDR (Trademark Status and Document Retrieval) database. The TTABVUE citations refer to the Board’s electronic docket, with the first number referring to the docket entry and the second number, if applicable, referring to the page within the entry. Serial No. 87827332 - 3 - purchaser of the goods because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). We find that the average consumer of Applicant’s services is a donor to or beneficiary of, Applicant’s charitable activities. The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce of the U.S., 675 F3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Evidence that a term is merely descriptive to the relevant purchasing public may be obtained from any competent source. In re N.C. Lottery, 123 USPQ2d at 1710; In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Dictionaries, newspapers, or surveys may provide evidence of mere descriptiveness. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1300; In re Bayer, 82 USPQ2d at 1831. In addition, sources may include websites, publications, and use “in labels, packages, or in advertising material directed to the goods.” In re N.C. Lottery, 123 USPQ2d at 1710; In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). As a preliminary matter, we address the color and stylization of Applicant’s mark . We find that the color blue and block lettering are not exceptional or eye-catching choices of color or font. The record includes no evidence of any recognition of the color and stylization as a mark. As used with the term ACTION TANK, we find the color and stylization in Applicant’s mark does not create a commercial impression apart from the literal term. See In re Cordua Rests., Inc., 823 Serial No. 87827332 - 4 - F.3d 594, 118 USPQ2d 1632, 1639 (Fed. Cir. 2016) (“While Cordua now describes the stylized form of CHURRASCOS as ‘highly stylized,’ ‘using a unique and arbitrary font,’ … Cordua did not argue before the Board and does not argue now that this stylization creates a separate impression … The stylized nature of the mark cannot save it from ineligibility as generic”); In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486-88 (TTAB 2012) (“Further, although the tops of the letters ‘dip’ to give the upper portion of the mark [SADORU] a slightly concave shape, the depression is so minimal that it is not likely to make a significant impression on consumers.”). For the purpose of the determination before us, if the term ACTION TANK is merely descriptive of the services, then is as well. Turning to the literal term, the record shows that the noun ACTION TANK is defined in the dictionary:2 We find that Applicant’s services “organizing and conducting volunteer programs and community service projects,” “developing and coordinating volunteer projects for charitable and community service projects,” and “organizing veterans to undertake projects to benefit the needy and the community” fit this definition. That is, the 2 February 25, 2019 Office Action TSDR 5, citing Merriam Webster Dictionary. Serial No. 87827332 - 5 - relevant public will perceive ACTION TANK services which, for example, organize veterans to undertake a project to benefit the needy as emanating from an organization devoted to actively advancing change in policy, such as an action tank. We are not convinced by Applicant’s effort to parse out the “action tank” definition to make it inapplicable to its ACTION TANK services. Applicant states that it “does not provide services devoted to the advancement of change in business or governmental policies.” A “policy” is not strictly the purview of business or government but is defined as “prudence or wisdom in the management of affairs” as well as “a definite course or method of action selected from among alternatives and in light of given conditions to guide and determine present and future decisions.”3 The reference to “business or government” in the “action tank” definition is shown in parentheses, and so it serves only as an example of “policy.” Plainly, the word “policy” includes social policy or the policy of a group which is not a business or government. We find that the definition of “action tank” encompasses an organization which advances a policy of reducing hunger by delivering meals or advances a policy of increasing employment by offering a job bank. As a result, when the public encounters Applicant’s mark ACTION TANK in connection with services organizing veterans to benefit the needy (such as by delivering meals or offering a job bank), 3 Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam- webster.com/dictionary/policy. Accessed 16 Jun. 2021. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. 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). Serial No. 87827332 - 6 - they will perceive ACTION TANK as merely describing Respondent’s group orientation, or policy, toward acts which create change. Based on the similarity in structure and definition of the two phrases, “action tank” and “think tank,” we agree with Applicant’s point that the term “action tank” will be perceived as a variation of the term “think tank,” defined as an “institute, corporation, or group organized to study a particular subject (such as a policy issue or a scientific problem) and provide information, ideas, and advice.”4 However, if there were a time when the term “action tank” would be found to be, as Applicant characterizes it, “a creative variation” of the term think tank, that time has passed.5 The record, including the media reports and examples of third party use excerpted below, convinces us that the term “action tank” is readily recognized as describing action-oriented groups offering services creating different types of change (emphasis added): Tech training program targeted for greater Springfield … CORI is a Hartland, Vermont-based nonprofit action tank working to rebuild rural America using progressive public, private, and philanthropic partnerships and data-driven strategies to help small towns achieve sustainable economic success. Vermont Business Magazine June 28, 2019, obtained from Lexis/Nexis database ;6 4 April 15, 2019 Response TSDR 15, citing Merriam Webster Dictionary. The Board notes that this definition corroborates other definitions of record, defining a think tank as “a body of experts providing advice and ideas on specific political or economic problems.” February 25, 2019 Office Action TSDR 9. Similar definitions at August 26, 2019 Response TSDR 16 (excerpted results of Google search). 5 9 TTABVUE 10. Of course, this may not have been the case in 2017 when Applicant began using ACTION TANK with its services. The multiple options available for speedy - if not instant - communication via the Internet can result in the rapid public adoption of new terms. 6 October 4, 2019 Office Action TSDR 27, 29. Serial No. 87827332 - 7 - Workers picket Freedom Foundation annual dinner in Bellevue … According to the Freedom Foundation’s website they are a nonprofit think and action tank based out of Washington and Oregon which was founded in 1991. Bellevue Reporter October 8, 2018, obtained from Lexis/Nexis database7 Automation Alley preps for next Industrial Revolution … New America is a think and action tank, an organization serving as a catalyst to bring together local and national experts to share ideas. Detroit Free Press April 29, 2018, obtained from Lexis/Nexis database8 McCain Institute Launches New Initiative: Mavericks Needed … Inspired by the leadership of Senator John McCain and his family’s legacy of public service, the McCain Institute is a nonpartisan, action-tank dedicated to advancing character-driven leadership and civic engagement in the U.S. and abroad. Yellow Sheet Report October 23, 2018, obtained from Lexis/Nexis database9 “Panorama is an action tank working to solve global problems through audacious thinking and bold action” https://panoramaglobal.org/about-us/10 Pride Action Tank a project of the AIDS Foundation of Chicago Pride Action Tank is a new, results-driven group that addresses challenges facing individuals and groups within LGBTQ+ communities through a collaborative process of inquiry, advocacy and action. The work of Pride Action Tank focuses on six overlapping issue areas: housing, health, safety, financial security, youth and aging. https://prideactiontank.org/about-us/11 UCSF launches "action tank" to advance promising global health strategies UCSF Global Health Sciences is launching an "action tank," with start-up funds from the Bill & Melinda Gates Foundation, to promote and implement the most promising strategies against global health crises. … 7 October 4, 2019 Office Action TSDR 30. 8 Id. at 32-33. 9 Id. at 36-37. 10 February 25, 2019 Office Action TSDR 10. 11 Id. at 22. Serial No. 87827332 - 8 - https:/lwww.ucsf.edu/news/2007/12/5644/ucsf-launches-action-tank- advance-promising-global-health-strategies12 Action Tank A Creative Think Tank Leading Progressive Change About Action Tank is a think tank with the mission of using creative place making approaches, working with artists to build awareness and engage residents to research, and organize for equitable policy in the Cincinnati area. https://fundraising fracturedatlas org/action--tank13 Health Action Tank is an independent non-profit research organization focused on digital transformation in healthcare. http://healthactiontank.org/about/14 Brighter Green is a public policy action tank that works to raise awareness of and encourage policy action on issues that span the environment, animals, and sustainability. https://brightergreen.org/15 A+ Colorado (formerly A+ Denver) is an independent, nonprofit organization committed to ensuring every Colorado student can access an excellent education. A+ is an “action tank.” We use the power of data and research to advocate for district and systems-level policies that will accelerate learning for all students. https://apluscolorado.org/about-us/16 FOOD SOL: AN ACTION TANK FOR FOOD ENTREPRENEURSHIP OF ALL KINDS® Food is everybody's business. We believe that eaters and food entrepreneurs together can change the world. Our action tank is a place for them to gather, think through their ideas, and pinpoint smart action steps to move their food visions forward. https://www.Babson.edu/academics/centers-and-institutes/the-lewis- institute/action-tanks/food-sol/17 12 Id. at 24. 13 Id. at 30. 14 October 4, 2019 Office Action TSDR 7. 15 Id. at 12. 16 Id. at 13-14. 17 Id. at 15. Serial No. 87827332 - 9 - FasterCures is an action tank that works to speed and improve the medical research system. 10,000 diseases. 500 treatments. We have work to do. https://www.fastercures.org/18 'Action Tanks' needed to bridge public policy and service, says City Year co- founder … City Year was founded out of the idea of an ‘action tank,’ Khazei explained, a way to combine public policy with public service. … Khazei and Brown then decided to start an action tank to ‘demonstrate the theory by developing a model that could test the theory, and put it into action.’” https://shorensteincenter.org/speaker-series-with-alan-khazei/19 EDUCATION, SCIENCE, AND CULTURE BUSINESS NETWORK … ESCBN is an “Action Tank” that will: Launch a campaign called #ESCMatters to mobilize individuals, communities, and leading institutions to support and advance ESC Pilot Initiatives that leverage business expertise, tools, resources, and employee engagement to make communities centers of excellence in advancing ESC https://www.isdus.org/education-science-and-culture-business-network20 Biz Quiz: “Action Tank” explores sustainability You’ve heard of think tanks. Now meet an “action tank.” … Finance and economic leaders Alex Friedman and Larry Hathaway — both valley residents — created Jackson Hole Economics as a resource for nonpartisan commentary on economics, politics and the environment and “actionable ideas” for achieving sustainable growth and improving the human condition. … Q: The expression “action tank” - it differentiates you from think tank, but exactly how? A: While “think tank" can take many forms, they are usually thought of as venues where careful and often meticulous analysis is undertaken. While we also intend to offer analytical written content, our emphasis is on offering solutions to solve problems or to steer economic and political systems on to more inclusive and sustainable paths. https://www.jhnewsandguide.com/news/business/biz_quiz/biz-quiz-action- tank-explores-sustainability21/ 18 Id. at 19-20. 19 Id. at 22-23. 20 Id. at 24. 21 October 29, 2020 TSDR 4-5, 8. Serial No. 87827332 - 10 - About AAN The American Action Network is a 501(c)(4) ‘action tank’ that will create, encourage and promote center-right policies based on the principles of freedom, limited government, American exceptionalism, and strong national security. https://americanactionnetwork.org/about-aan/22 SSJ Think and Action Tank on Racial Capitalism … In addition to organizing a delegation to the southern border, SSJ has worked with The Majority on a “Think and Action Tank on Racial Capitalism,” a two- day convening attended by 25 people representing various activist organizations. SSJ members Robin Kelley, Leith Mullings, Premilla Nadasen and Barbara Ransby participated in organizing and implementing the Think and Action Tank. http://scholarsforsocialjustice.com/ssj-think-and-action-tank-on-racial- capitalism/23 Surgo Foundation … We are a privately funded action tank obsessed with asking “Why?” … We build tools and share our expertise with partners, and our approach leads to answers that transform how social impact programs are designed and delivered. http://surgofoundation.org/24 NPGO … Still operating from a closet at City year, at first we called it an action tank, then renamed it New Profit to express our intent to bring the best ideas and practices from the nonprofit sector and the for-profit sector together in a new way to drive change. https://www.newprofit.org/go/20-years-of-community/25 Applicant contends that this record evidence of third party use of the term action tank” is insufficient to support the finding that the mark is merely descriptive as 22 Id. at 12. 23 Id. at 16. 24 Id. at 19, 21. 25 Id. at 23-24. Serial No. 87827332 - 11 - applied to its charitable services, because the third party uses are part of an organization’s name, or the services performed by the described action tank differ from Applicant’s services.26 With two exceptions,27 we disagree with this view of the evidence. Where “action tank” forms part of the organization’s name, enough information has been included in the third party usages set forth above to make clear that the use in the name is not incongruous, but describes that the organization is advancing changes in policy by active means, meeting the definition of an “action tank.” The different forms of action taken by the various action tanks do not render the term “action tank” non- descriptive. The term describes the common approach of not just thinking of policy change, but implementing policy change. The third party usages set forth above demonstrate that in each case the organization does not merely formulate policy, or a new approach to an issue, but takes action to make the change effective. Applicant also argues that ACTION TANK has a second meaning in connoting that its services are performed by veterans, and so is registrable as a double entendre.28 We recognize the definition of record showing that a “tank” is “a heavy 26 9 TTABVUE 11-14. 27 We agree that neither the third party use defining “action tank” without describing specific services (February 25, 2019 Office Action TSDR 26-28), nor the third party use describing an ACTION TANK event similar to the television show SHARK TANK (February 25, 2019 Office Action TSDR 31-34), support the refusal, and neither has been listed above with the evidence we gave probative weight. 28 9 TTABVUE 9-11. Serial No. 87827332 - 12 - armored fighting vehicle carrying guns and moving on a continuous articulated metal track.”29 A double entendre is registrable only if the second, non-descriptive meaning would be readily apparent to the consumer from the mark itself. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968); In re S. Malhotra & Co. AG, 128 USPQ2d 1100 (TTAB 2018). However, the fact that the term TANK has two meanings does not mean that the term ACTION TANK as a whole has two meanings. There is no evidence that consumers are likely to understand Applicant's ACTION TANK mark to mean that Applicant’s services result from the actions of veterans. See In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1158 (TTAB 2003) (ETHNIC ACCENTS found merely descriptive of home decor programs, “[a]lthough we cannot dispute the fact that some members of ethnic groups may, in fact, speak with discernible foreign accents, in the context of applicant's services, it is unlikely that viewers or potential viewers of applicant's programs will discern a double entendre in the word ‘accents.’”). Finally, Applicant argues that the lack of third party registrations for the mark ACTION TANK “is probative evidence of the meaning of a word, in the same way that a dictionary definition can be used.”30 It is not clear what is meant by this, but we 29 December 20, 2018 Response TSDR 10. Applicant submitted a second, and similar, definition at April 15, 2020 Response TSDR 22. 30 9 TTABVUE 15. Serial No. 87827332 - 13 - disagree that the lack of third party registrations has any bearing on the registrability of ACTION TANK as applied to Applicant’s services.31 In sum, we find that the proposed mark conveys an immediate idea of the purpose of Applicant’s services in advancing changes in policy through active means, and so the proposed mark is merely descriptive of Applicant’s “Charitable services, namely, organizing and conducting volunteer programs and community service projects; Developing and coordinating volunteer projects for charitable and community service projects; Charitable services, namely, organizing veterans to undertake projects to benefit the needy and the community.” Decision: We affirm the refusal to register the proposed mark on the ground that it is merely descriptive of Applicant’s services under Trademark Act Section 2(e) (1). 31 The case cited by Applicant addressed how multiple third party registrations affected the scope of protection to be given the term ZINGERS in a likelihood of confusion case, and is inapposite here. Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978). Copy with citationCopy as parenthetical citation