AgRobotics, LLC

Trademark Trial and Appeal Board

May 29, 2009

No. 77138973 (T.T.A.B. May. 29, 2009)

Mailed: May 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re AgRobotics, LLC
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Serial No. 77138973
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J. Charles Dougherty of Wright, Lindsey & Jennings for
AgRobotics, LLC.

John D. Dalier, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Hairston, Walters and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

AgRobotics, LLC has filed an application to register on
the Principal Register the standard character mark AUTOPROBE
for “self-powered, mobile soil sampling machines,” in
International Class 12, and “agricultural services, namely,
soil sampling, testing, and analysis,” in International
Class 42.1

1 Serial No. 77138973, filed March 23, 2007, based on an allegation of a
bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77138973
2
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its services.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
The examining attorney submitted the following
definitions, in pertinent part, of the words “auto” and
probe”:
Auto: prefix “2. Automatic: autopilot.”

Probe: noun “1. An exploratory action,
expedition, or device, especially one designed to
investigate and obtain information on a remote or
unknown region: electronic probes into the crust
of the earth” and “3. The act of exploring or
searching with or as if with a device or an
instrument.” verb “1. To explore with or as if
with a probe: probe a wound to find its extent;
probing the anthill with a stick,” and “2. To
delve into; investigate” and “to conduct an
exploratory investigation; search.”

The American Heritage® Dictionary of the English
Language (3rd ed. 1992).

The examining attorney contends that “applicant’s goods are
automatic probing devices or, at the very least, possess an
automatic self propelled probing function as one of several
features of the goods”; that, according to applicant, the
goods are capable of extracting soil from the probe itself
and properly storing each soil sample; that extracting and
storing soil samples “are presumably automatic and self
Serial No. 77138973
3
propelled functions of the probe portion of the applicant’s
devices”; and that, presumably “the services will feature
the use of self propelled probing devices to obtain research
data.” (Brief, pp. **.) Applicant does not dispute these
assumptions made by the examining attorney about the
operation of the machine. The examining attorney concludes
“[g]iven that the applicant’s goods are self propelled
probing devices and that the services feature the use of
self propelled probing devices, the wording ‘AUTO’ and
‘PROBE,’ when taken together as a whole and viewed in
relation to the goods and services, provide an apt
description of the goods and services within the meaning of
Section 2(e)(1).” (Id.)
Applicant contends that its combination of the terms
“AUTO” and “PROBE” creates a nondescriptive mark. Applicant
argues that “auto” has other meanings in the context of its
goods, such as automobile and, in this context, it is
suggestive of devices powered like automobiles. Applicant
also states that the composite is not descriptive because
the AUTO portion does not directly modify PROBE; the device
performs several functions other than just inserting a probe
into the ground as it also must extract soil from the ground
and store each sample in a manner that can identify from
where the sample was taken; and it is not the probe that is
encompassed by “auto,” it is the entire machine.
Serial No. 77138973
4
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. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007); In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find that a mark is
merely descriptive, that the mark describe each feature of
the goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
We agree with the examining attorney’s analysis of the
mark in the context of the identified goods and services.
While “auto” may commonly be understood to mean “automobile”
as well as “automatic,” in the context of these robotic soil
sampling machines, it is likely that the purchasers of these
Serial No. 77138973
5
machines will immediately understand the AUTO portion of the
mark as referring to the “automatic,” i.e., “self-powered,”
quality of these machines.2 The fact that the machine
“automatically” obtains the soil sample, extracts the sample
from the probe and stores it, is a significant, if not the
defining, aspect of the machine. Moreover, the PROBE
portion of the mark exactly identifies the device on the
machine that extracts the soil, as well as identifying the
action of the device in “probing” the soil to remove a
sample. While AUTO may suggest or describe the automatic
nature of the entire machine, it also describes the
automatic nature of the probe device and the act of probing
the soil. Therefore, we find that the combination of the
two merely descriptive terms AUTO and PROBE results in a
compound mark, AUTOPROBE, which is equally merely
descriptive of the identified machines. Because the
identified goods are the principal means for rendering the
identified services, we find that the mark is equally merely
descriptive of these services.
Both applicant and the examining attorney cite numerous
cases in support of their respective positions. However,
each case must be decided on its own facts.

2 That a term may have other meanings in different contexts is not
controlling. In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999);
and In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).

Serial No. 77138973
6
When we consider the record and all of applicant's
arguments relating to the issue of descriptiveness,
including those arguments not specifically addressed herein,
we conclude that when applied to applicant’s goods and
services, the term AUTOPROBE immediately describes, without
the need for conjecture or speculation, a significant
feature or function of applicant’s goods and services, as
discussed herein. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers of and
prospective customers for applicant’s goods and services to
readily perceive the merely descriptive significance of the
term AUTOPROBE as it pertains to those goods and services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.