Aquei Technologies LLC

Trademark Trial and Appeal Board

Jun 17, 2015

No. 86034765 (T.T.A.B. Jun. 17, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Aquei Technologies LLC
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Serial No. 86034765
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Anthony Tacconi of IPCL Group PLC,
for Aquei Technologies LLC.
Edward Nelson, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
_____

Before Bucher, Kuhlke and Adlin,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Aquei Technologies LLC (hereinafter “Applicant”) seeks registration on the
Supplemental Register of the term Sustainable Water (in standard character format)
for “sustainable on-site water recycling and wastewater treatment services” in
International Class 40.1

1 Application Serial No. 86034765 was filed on the Principal Register on August 12, 2013,
based upon Applicant’s claim of first use anywhere and use in commerce since at least as
early as June 1, 2010. Registration was originally refused under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that Sustainable Water is merely
descriptive of Applicant’s services. Subsequently, Applicant filed an amendment on June 4,
2014, to seek registration on the Supplemental Register.
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The Trademark Examining Attorney has refused registration of
Applicant’s applied-for mark under Section 23 of the Trademark Act,
15 U.S.C. § 1091, on the ground that the term Sustainable Water is incapable of
identifying Applicant’s services. After the Trademark Examining Attorney
made the refusal final, Applicant appealed to this Board. We affirm the
refusal to register.
When a proposed term is refused registration as generic, the Trademark
Examining Attorney has the burden of proving genericness by “clear evidence.” In re
Hotels.com, LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009); In re
Merrill Lynch Pierce Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987).
The critical issue is to determine whether the record shows that members of the
relevant public primarily use or understand the term sought to be registered to
refer to the category or class of services in question. H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re
Women’s Publ’g Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Making this
determination “involves a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be registered ... understood by the
relevant public primarily to refer to that genus of goods or services?” H. Marvin
Ginn, 228 USPQ at 530.
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Evidence of the public’s understanding of a term may be obtained from any
competent source, including testimony, surveys, dictionaries, trade journals,
newspapers and other publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir.
1985).
“An inquiry into the public’s understanding of a mark requires consideration of
the mark as a whole. Even if each of the constituent words in a combination mark is
generic, the combination is not generic unless the entire formulation does not add
any meaning to the otherwise generic mark.” In re 1800Mattress.com IP LLC,
586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005)).
We find that the genus of services at issue in this case is adequately defined by
Applicant’s recitation of services, specifically, “sustainable on-site water recycling
and wastewater treatment services.” The Trademark Examining Attorney has
placed into the record several screen prints from Applicant’s website showing that
indeed Applicant provides project implementation services for institutional facilities
involving water reclamation and water management.2 Thus, the term Sustainable
Water is generic if the relevant public understands it to refer to this type of water
recycling and wastewater treatment services. See 1800Mattress.com, 92 USPQ2d at
1684 (genus of services is “online retail store services in the field of mattresses,

2 Office Action of July 8, 2014, at 5-7 of 17; Office Action of September 26, 2014, at 6-8 of 17.
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beds, and bedding ... [a]ccordingly, the mark is generic if the relevant public
understands MATTRESS.COM to refer to such online services.”)
Turning to the second inquiry, Applicant takes issue with the showing made by
the Trademark Examining Attorney:
Applicant is not seeking trademark protection for the sale
of water, sustainable or otherwise, under the mark.
Rather, Applicant is providing a service that is indirectly
related to the words “SUSTAINABLE WATER.” This
relationship between the mark and the service make this
mark suggestive or, at the very least, descriptive.
Applicant contends that its applied-for term is a noun, and that it is not generic
because third-party uses show this term used as an adjective “in different contexts
and with additional word(s).” In short, Applicant argues that the Trademark
Examining Attorney failed to prove genericness by clear and convincing evidence.
We note initially that Applicant’s own recitation of services (“sustainable on-site
water recycling and wastewater treatment services”) relies upon the words
“sustainable” and “water,” seemingly used in their ordinary dictionary meanings:
sustainable adjective
1. capable of being sustained
2. a. designating, of, or characterized by a practice that sustains a given
condition, as economic growth or a human population, without destroying or
depleting natural resources, polluting the environment, etc.: sustainable
agriculture
b. governed or maintained by, or produced as a result of, such practices:
sustainable growth 3

3 We note that the excerpt placed into the record by the Trademark Examining Attorney
from the COLLINS ENGLISH DICTIONARY cites to the “British English” entry rather than the
“American English” entry. Hence, we have chosen to notice other dictionary entries. See
WEBSTER’S NEW WORLD COLLEGE DICTIONARY, http://www.yourdictionary.com/sustainable.
This Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
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sustainable adjective
1. capable of being sustained.
2. capable of being continued with minimal long-term effect on the environment:
sustainable agriculture. 4

water noun
1. A clear, colorless, odorless, and tasteless liquid, H2O, essential for most plant and
animal life and the most widely used of all solvents. …
2. a. Any of various forms of water: waste water.
…
4. a. A supply of water: had to turn off the water while repairing the broken drain.
b. A water supply system. 5
…

Also consistent with these dictionary entries, Applicant’s website shows that it is
in the business of “water reclamation and reuse,” the result of which would be to
make the “water” supply of large water users, like college campuses and
manufacturing centers, “sustainable”:

Sustainable Water is a leading force in water reclamation and reuse. 6

One of the articles placed into the record by the Trademark Examining Attorney
refers to the “Science of sustainable water”:

505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
4 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 5th ed.
5 Id.
6 http://sustainablewater.com/
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The School of Continuing Education, in partnership with the Earth Institute and the Columbia Water Center, is offering a
Certification of Professional Achievement in Sustainable Water Management. This new certification equips professionals with
the skills to conduct integrated water management and water systems analysis.
According to the United Nations Development Programme, nearly 900 million people lack access to safe water and over 2.7
billion lack access to basic sanitation. As the world’s population continues to grow in excess of 7 billion people, the demand for
access to water has risen. At the same time, the impacts of climate change are making it more difficult to ensure the supply of
safe water to the populations that need it most. Severe weather events ravage some parts of the world with floods, while
devastating others with droughts. Skilled sustainability professionals are needed in order to create effective solutions to the
world’s water problems. Students of this program leave equipped with skills to guide communities and companies in issues of
water management.
The Certification of Professional Achievement in Sustainable Water Management program will cover concepts of hydrology,
water policy and regulation, economics, finance and conflict resolution. It is designed to provide sophisticated and
multidisciplinary training in water issues—the nexus of natural science, social science and public policy. The program teaches
skills applicable to a wide-range of professions including urban planning, manufacturing, sanitation, and NGO professionals
domestic and abroad.
Students will gain a fundamental understanding of the science of the hydrological cycle. They will learn best practices in water
systems management, identifying who uses water, quantifying how much water is used, and optimizing how that water is used.
Students will learn how to develop reliable water supplies given diverse sources and variability in climate and water quality.
Water issues are not only a matter of managing systems. They are also economic and political in nature. Students of this program
will learn the intricacies of water financing, how it is priced and how large-scale water projects are funded. Other topics that will
be covered include policy mechanisms to determine water allocation and water rights, as well as access and privatization.
The Curriculum
Students complete three required courses focused on the science, policy, and management of water systems: The Science of
Sustainable Water, Water Governance, and Water Systems Analysis. Students will complete one elective course, with elective
offerings including water in agriculture, water quality and health, water and energy security, and urban infrastructure.
The curriculum of the Certification of Professional Achievement in Sustainable Water Management program has been designed
by experts from the Columbia Water Center.
Courses are offered in the evening to accommodate the schedules of students working full-time. The certification can be
completed through part-time enrollment. Students enrolled on a part-time basis can complete the certification requirements in as
few as four semesters.
The Certification of Professional Achievement in Sustainable Water Management program can be taken as a compliment to the
Masters of Science in Sustainability Management, or it can be taken separately as a stand-alone certification.
Students are required to maintain an overall minimum GPA of 3.0 (B). Every course creditable toward the certification must be
taken for a letter grade.
To Apply
Prospective students interested in learning about the program are encouraged to contact Allison Ladue, assistant director. To
apply to Sustainable Water Management program, follow the program application instructions. 7

7 http://ce.columbia.edu/certificates/sustainable-water-management-certificate
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Moreover, third-parties in Applicant’s field also use the term “Sustainable
Water” in their trade names, domain names and/or in describing their own services
in this same general field:
8

8 http://www.sustainablewatersolutions.com/aliaxis-group/.
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9

9 http://www.purewaterfortheworld.org/
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10
11

10 http://sustainablewatertech.com/
11 http://sustainablewaterinfrastructure.org/
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This latter webpage was placed online by the Sustainable Water Infrastructure
Coalition – an alliance whose members include “private and public water and
wastewater service providers,” and it refers to federal legislation known as the
“Sustainable Water Infrastructure Investment Act.”
In spite of this extensive showing, Applicant contends that the term
“Sustainable Water” must be deemed, at worst, to be merely descriptive – not
generic – because it is an adjective used in connection with other nouns. Applicant
seems to point to a distinction employed by some that generic names are nouns and
descriptive terms are adjectives. “However, this ‘part of speech’ test does not
accurately describe the case law results.” In re Central Sprinkler Co., 49 USPQ2d
1194, 1199 (TTAB 1998), referencing 2 J.T. McCarthy, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION, Section 12:10 (4th ed. 2015). In other words, Applicant
cannot overcome this refusal simply because it is not selling water itself.
Conversely, in examining the examples above, it is not the end of the inquiry when
one discovers that the term “Sustainable Water” is often followed by other nouns
like “Management,” “Solutions,” “Infrastructure,” “filters,” etc.
To the contrary, the Board has often held that a term that names the “central
focus” or “key aspect” of a service is generic for the service itself, and the Board’s
principal reviewing court has approved this approach. See In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (“hotels” identified the “central
focus” of online lodging information and reservation services and therefore
HOTELS.COM found generic). See also In re Meridian Rack & Pinion, 114 USPQ2d
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1462, 1464-65 (TTAB 2015) (buyautoparts.com is generic for “on-line retail store
services featuring auto parts.”). In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157
(TTAB 2009) (where “tires” was the generic name of the goods sold in retail stores,
being a “key aspect” of such services, TIRES TIRES TIRES was found generic for retail
tire stores); In re Candy Bouquet International, Inc., 73 USPQ2d 1883, 1891 (TTAB
2004) (“candy bouquet” is generic name for a certain type of gift package; therefore,
Candy Bouquet is generic for retail, mail, and computer order services in the field of
gift packages of candy); In re A La Vieille Russie, Inc., 60 USPQ2d 1895, 1900
(TTAB 2001) (a term that is generic for a particular class of goods is also deemed
generic for the services of selling those goods; RUSSIANART is generic for the
services of selling such art); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB
1999) (LOG CABIN HOMES is generic for a type of building and is also generic for
architectural design services directed to that type of building and for retail outlets
featuring kits for construction of that type of building); In re Web Communications,
49 USPQ2d 1478 (TTAB 1998) (WEB COMMUNICATIONS is generic for publication
and communication via the web, and also for consulting services directed to
assisting customers in setting up their own websites for such publication and
communication); and In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB
1984) (LAW & BUSINESS is generic for services of arranging and conducting seminars
in the field of business law).
The evidence reveals that the term “Sustainable Water” directly names the most
important or central aspect or purpose of Applicant’s services, which are treating,
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recycling and reusing water. “Sustainable Water” is nothing more than the sum of
its two generic parts and “the entire formulation does not add any meaning to the
otherwise generic mark.” 1800Mattress.com, 92 USPQ2d at 1684. The generic
components produce a generic composite and signify nothing more than services
focused ultimately on the production of “sustainable water” as that term is
ordinarily and commonly used by the public and others in the industry. Hence, the
term sought to be registered is understood by the relevant public primarily to refer
to that genus of services, the term is generic, and should be freely available for use
by competitors. See also In re Northland Aluminum Products, Inc., 777 F.2d 1566,
227 USPQ 961, (Fed. Cir. 1985) (BUNDT for coffee cake held generic); In re Sun Oil
Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970) (CUSTOMBLENDED for gasoline held
generic because category of gasoline was blended personally for the motorist); In re
Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969) (PASTEURIZED
for face cream held generic); In re Preformed Line Products Co., 323 F.2d 1007, 139
USPQ 271 (CCPA 1963) (PREFORMED for preformed electrical equipment held
generic); Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855,
132 USPQ 627 (CCPA 1962) (SUDSY for aqua ammonia containing a synthetic
detergent held generic); Servo Corp. of America v. Servo-Tek Products Co., 289 F.2d
955, 129 USPQ 352 (CCPA 1961) (SERVO for servomechanisms held generic); J.
Kohnstam, Ltd. v. Louis Mark & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960)
(MATCHBOX for toy vehicles held generic because that category of toy cars was sold
in matchbox-sized boxes); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628
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(TTAB 1998) (MASSFLO is a generic noun when used as the name of a measurement
taken by mass flowmeters and as a generic adjective when used with the mass
flowmeters that measure mass flow of liquids); In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991) (MULTI-VIS for multiple viscosity motor oil held
generic); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB
1991) (PERMA PRESS for soil and stain removers held generic); In re National Patent
Development Corp., 231 USPQ 823 (TTAB 1986) (ULTRA PURE for biological
interferons for medical use held generic); Fluid Energy Processing & Equipment Co.
v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) (FLUID ENERGY for
hydraulic/pneumatic equipment held generic); Copperweld Corp. v. Arcair Co., 200
USPQ 470 (TTAB 1978) (COPPERCLAD for copper-coated carbon electrodes held
generic); In re Demos, 172 USPQ 408 (TTAB 1971) (CHAMPAGNE for salad dressing
held unregistrable); and Ethicon, Inc. v. Deknatel, Inc., 183 USPQ 503 (TTAB 1963)
(COTTONY for sutures held generic).
Even if we were to presume that some third-parties in this field may have
adopted similar versions of this same terminology subsequent to Applicant’s first
use thereof, such usage does not justify registration provided that the evidence
shows that the term is indeed generic. See In re ActiveVideo Networks, Inc., 111
USPQ2d 1581, 1604 (TTAB 2014) (CLOUDTV is generic for a video-on-demand
service providing television to consumers with electronic devices having screens,
which devices are connected to the Internet); In re Greenliant Sys. Ltd., 97 USPQ2d
1078, 1083 (TTAB 2010) (Term NANDrive is generic for applicant's electronic
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integrated circuits); and In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018,
1020 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND
CONFERENCE is generic for applicant's trade shows).
Finally, we recognize that our review “requires an examination of the record as a
whole, taking into account both the evidence that justifies and detracts” from our
ultimate opinion. Falkner v. Inglis, 448 F.3d 1357, 79 USPQ2d 1001, 1005 (Fed. Cir.
2006). However, in the face of the overwhelming case of genericness put forward by
the Trademark Examining Attorney, and Applicant’s failure to present convincing
contradictory evidence (as opposed to mere argument), we find that Applicant has
failed to call into question our ultimate finding. Cf. Princeton Vanguard, LLC v.
Frito-Lay North America, Inc., ____ F.3d ____, 114 USPQ2d 1827, 1834 (Fed. Cir.
2015) (Board erred in assessing whether the term PRETZEL CRISPS is generic for
pretzel crackers).
Decision: The refusal to register Applicant’s proposed mark, Sustainable Water,
on the basis that it is generic for Applicant’s services under Section 23 of the
Lanham Act is hereby affirmed.