AppliedEcological Services, Inc.

Trademark Trial and Appeal Board

Jul 13, 2006

No. 76568177 (T.T.A.B. Jul. 13, 2006)

Mailed: 7/13/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Applied Ecological Services, Inc.
________

Serial No. 76568177
_______

Erik W. Ibele of Neider & Boucher for applicant.

James T. Griffin, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Applied Ecological
Services, Inc. to register the mark STORMWATER TREATMENT
TRAIN for “design for others of stormwater management
systems.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §

1 Application Serial No. 76568177, filed January 5, 2004,
originally alleging first use anywhere and first use in commerce
on March 21, 1996. Pursuant to an amendment filed on November
24, 2004, applicant withdrew the Section 1(a) basis and
substituted therefor an allegation, under Section 1(b), that
applicant has a bona fide intention to use the mark in commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76568177
2
1052(e)(1), on the ground that applicant’s mark, when used
in connection with applicant’s services, is merely
descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant does not dispute that the words “stormwater
treatment” are descriptive. (Brief, p. 1). Applicant
contends, however, that the term “train” is not
descriptive, but rather is a metaphor for a series of
events or processes. Applicant points out that the
excerpted articles introduced by the examining attorney
show that the authors place the phrases containing the word
“train” in quotation marks, or define or explain the words
the first time they are cited. If the term “train” were
merely descriptive, applicant argues, then it would not be
necessary to explain the metaphor. According to applicant,
the necessity to explicate a mark by analogy is precisely
the difference between a descriptive and a suggestive mark.
The use of the term “train” in applicant’s mark is as a
metaphor to suggest a series or techniques for treating
stormwater, “as in cars of a train” (the metaphor used by
the examining attorney). Applicant refers to two third-
party registrations for marks containing the word “TRAIN”
accompanied by descriptive terms.
Ser No. 76568177
3
The examining attorney maintains that the term “TRAIN”
in applicant’s mark is far more than just a metaphor, and
that the mark as a whole is merely descriptive of a certain
type of stormwater management system. In support of the
refusal, the examining attorney submitted excerpts of
various websites wherein the term “stormwater treatment
train” is used to refer to a particular type of stormwater
treatment system. Thus, according to the examining
attorney, applicant’s mark merely describes applicant’s
services of designing stormwater treatment trains.
A term is merely descriptive of goods or services,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Ser No. 76568177
4
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the purchaser of the goods or
services because of the manner of its use or intended use.
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). It is settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
The examining attorney introduced several excerpts
retrieved from third-party websites showing uses of
“stormwater treatment train” or variations thereof in a
merely descriptive manner:
Ser No. 76568177
5
Each...system is custom engineered for
the site and utilizes a unique
“treatment train” approach for
pollutant removal.
(www.aquashieldinc.com)

BMPs [“Best Management Practices”] in
series incorporate several stormwater
treatment mechanisms in a sequence to
enhance the treatment of runoff. Also
called a “stormwater treatment train,”
they consist of a series of BMPs and
natural features, each designated to
treat a different aspect of runoff,
maximizing pollutant removal and
stormwater infiltration...This example
is a prototype design of a residential
development that uses a treatment train
system for stormwater management...The
first step in the treatment train
process at the Marshall site is the
effective management of stormwater on
individual home sites...A stormwater
treatment train can be designed to
serve a multitude of ecological
functions, becoming an amenity rather
than a necessary utility...Treatment
train design should be based on local
ecology and local community directives.
(www.metrocouncil.org)

Stormwater management is a critical
concern in any watershed. To address
this, South Village will include an
innovative ecologically designed
stormwater management and detention
system, known as a Stormwater Treatment
Train (STT)...South Village’s STT is
comprised of a series of linked
landscape elements that manage and
treat stormwater close to where the
precipitation hits the ground and
continuing treatment as it runs through
the property.
(www.southvillage.com)

Ser No. 76568177
6
Past studies have identified urban
runoff as a major contributor to the
degradation of many urban streams and
rivers. The objective of this research
was to characterize typical toxicant
concentrations in stormwater, and
investigate the effectiveness of
treatment processes to control the
toxicants. A prototype device (the
multi-chambered treatment train, or
MCTT) was tested during the final phase
of this project.
(www.osti.gov)

A Multi-Chambered Stormwater Treatment
Train
(www.pubs.asce.org)

The examining attorney also introduced the following
excerpt from an article:
The stormwater treatment train at
Prairie Crossing (Grayslake, Illinois)
was designed to reduce runoff and
increase quality of water in that
leaving the residential development.
(“On Conservation Developments and
Their Cumulative Benefits,” a paper
presented at a national symposium
“Assessing the Cumulative Impacts of
Watershed Development on Aquatic
Ecosystems and Water Quality,” March
1996)

Based on the evidence of record, we conclude that the
phrase STORMWATER TREATMENT TRAIN is merely descriptive
when used in connection with the design of stormwater
management systems. The evidence shows that the matter
sought to be registered is used in the field to refer to a
particular method or system to manage stormwater. The term
Ser No. 76568177
7
“train” is used to specifically refer to a series of
elements, natural or otherwise, used for the treatment of
stormwater. As used in connection with applicant’s
services, STORMWATER TREATMENT TRAIN merely describes
services featuring the design of stormwater management
systems utilizing trains, that is, stormwater treatment
trains.
The two third-party registrations of TRAIN marks
relied upon by applicant are not persuasive of a different
result.2 It is significant that the registrations involve
goods far removed from the type of services involved
herein. In any event, while uniform treatment under the

2 Applicant originally referred to the registrations during the
prosecution phase and, in response, the examining attorney did
not object to the mere reference to the registrations. It was
not until his appeal brief that the examining attorney objected
to the registrations on the basis that copies of them were not
submitted. See TBMP § 1208.02 (2d ed. rev. 2004). Thus,
according to the examining attorney, the registrations were not
properly made of record and should not be considered. However,
the examining attorney then went on to discuss the registrations,
maintaining that they do not compel reversal of the refusal. The
examining attorney is deemed to have waived his right to object
to the improper submission of the third-party registrations by
not timely objecting to them when applicant first referred to
them. Accordingly, the objection is overruled, and the
registrations have been considered. TBMP § 1207.03 (2d ed. rev.
2004) [“If the applicant, during the prosecution of the
application, provided a listing of third-party registrations,
without also submitting actual copies of the registrations, and
the examining attorney did not object or otherwise advise
applicant that a listing is insufficient to make such
registrations of record at a point when the applicant could cure
the insufficiency, the examining attorney will be deemed to have
waived any objection as to improper form.”].
Ser No. 76568177
8
statute is an administrative goal, our task in this appeal
is to determine, based on the record before us, whether
applicant’s particular matter sought to be registered is
merely descriptive. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”]; and In re Best Software Inc., 58 USPQ2d 1314
(TTAB 2001).
We conclude that the applied-for mark STORMWATER
TREATMENT TRAIN, as used in connection with the design for
others of stormwater management systems, is merely
descriptive thereof.
Decision: The refusal to register is affirmed.