Astilean

Trademark Trial and Appeal Board

Mar 19, 2009

No. 76686920 (T.T.A.B. Mar. 19, 2009)

Mailed: March 19, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Astilean
________

Serial No. 76686920
Filed February 19, 2008
_______

Myron Amer of Myron Amer, P.C. for applicant.

Andrea P. Butler, Trademark Examining Attorney, Law Office
102, Karen M. Strzyz, Managing Attorney.
_______

Before Grendel, Taylor, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Aurel A. Astilean seeks registration of the mark
SPEEDOMETER (standard characters) on the Supplemental
Register for “monitoring device worn on the person for
tracking fitness of the walking and running exercises, and
not concerned with the speed of the walking and running
exercise,” in International Class 9.1
The examining attorney issued a final refusal to
register under Trademark Act § 23, 15 U.S.C. § 1091, on the

1 Based on first use and use in commerce as of December 15, 2007.

THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76686920
2
ground that applicant’s mark is generic for applicant’s
goods, and therefore ineligible for registration on the
Supplemental Register.2
Applicant appealed. Both applicant and the examining
attorney filed briefs.
We affirm.
I. Applicable Law
A mark is a generic name if it refers to the class,
genus, or category of goods or services on or in connection
with which it is used. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir.
2001), citing In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987);
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The critical issue in genericness cases is
whether members of the relevant public primarily
use or understand the term sought to be protected
to refer to the genus of goods or services in
question. See, e.g., Department of Justice,
Federal Bureau of Investigation v. Calspan Corp.,
578 F.2d 295, 299, 198 USPQ 147, 149 (CCPA 1978);
Maremont Corp. v. Air Lift Co., 463 F.2d 1114,
1118, 174 USPQ 395, 398 (CCPA 1972); In re
Automatic Radio Mfg. Co., 404 F.2d 1391, 1394-95,
160 USPQ 233, 235-36 (CCPA 1969). Determining

2 The application was originally filed seeking registration on
the Principal Register. Following an initial refusal of
registration on the ground of mere descriptiveness, Trademark Act
§ 2(e)(1), applicant amended to seek registration on the
Supplemental Register, at which point registration was refused on
the basis that the mark is generic.
Serial No. 76686920
3
whether a mark is generic therefore involves a
two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered or retained on the
register understood by the relevant public
primarily to refer to that genus of goods or
services?

H. Marvin Ginn Corp., 228 USPQ at 530.
The reason generic terms cannot be trademarks is
“plain:”
To allow trademark protection for generic terms,
i.e., names which describe the genus of goods
being sold, even when these have become
identified with a first user, would grant the
owner of the mark a monopoly, since a competitor
could not describe his goods as what they are.

Merrill Lynch, 4 USPQ2d at 1142, quoting CES Publ’g Corp.
v. St. Regis Publ’n, Inc., 531 F.2d 11, 188 USPQ 612, 615
(2d Cir. 1975).
The examining attorney has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. Merrill Lynch, 4 USPQ2d at 1143. Evidence
of the relevant public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers, and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Serial No. 76686920
4
II. Discussion
A. What is the Genus of Goods?
Applicant’s goods are identified as a “monitoring
device worn on the person for tracking fitness of the
walking and running exercises, and not concerned with the
speed of the walking and running exercise.” The examining
attorney identifies the genus of goods “a speedometer.”3
Ex. Att. Br. at 5. We find this suggestion unhelpful,
however, because the issue on appeal is the meaning of the
term “speedometer” with respect to the identified goods.
Instead, we find that the genus of the goods is most
appropriately described as wearable fitness-tracking
devices. While not precisely coextensive with the
identified goods, this definition comports with the
identification while aptly defining the category of goods
to which applicant’s device belongs. See In re Reed
Elsevier Prop., Inc., 77 USPQ2d 1649, 1654 (TTAB 2005)("we
consider applicant's identification as largely defining the
genus of services involved in this case"), aff'd 482 F.3d
1376, 82 USPQ2d 1378 (Fed. Cir. 2007).

3 Applicant’s three-page brief and two-page reply ignores this
critical issue entirely.
Serial No. 76686920
5
B. Does Applicant’s Mark Primarily Refer to the
Genus?

The examining attorney has introduced evidence bearing
on the meaning of SPEEDOMETER with respect to the genus of
goods, including the following items:
Dictionary Definitions
speedometer
...
1. An instrument for indicating speed. 2a. An
instrument for indicating distance traveled as well as
the rate of speed. b. An odometer

THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed.
2000)(online at Bartleby.com July 28, 2008).
speedometer
...
1: an instrument for indicating speed: TACHOMETER
2: an instrument for indicating distance traversed as
well as speed of travel, also: ODOMETER

MERRIAM-WEBSTER’S ONLINE DICTIONARY (www.merriam-webster.com June
1, 2008).
Online Advertisements
Tech4O Running Speedometer Fitness Monitor
When you know your target, it’s easier to hit it.
That’s why our running speedometer measures speed,
distance and heart rate....

http://shopping.yahoo.com (June 1, 2008).
Total Fit Speedometer/Pedometer
....
Keep sight of your training goals with the Bell
TotalFit 2-in-1 Speedometer/Pedometer, which measures
both performance and calories burned when walking,
running, or riding your bike. ....

Serial No. 76686920
6
www.amazon.com/bell-Total-Fit-Speedometer-Pedometer (May
27, 2008).
Sharper Image Fitness Watch ... Speedometer pedometer.
This specially designed watch features an advanced
pedometer that not only counts your walking steps, but
also calculates the distance, speed, exercise time and
calories burned as you walk. .... Includes
timekeeping, chronograph, countdown timer and
pedometer functions....

http://storefront.linksynergy.com (June 13, 2008).
Online Articles/Product Reviews
Beyond the Pedometer
Other cool fitness gadgets to help measure your
progress
....
Walking Speedometer. As if knowing how far you’re
going wasn’t enough, now you can track your speed and
even your position on the globe. Some walking
speedometers include Global Positioning System (GPS)
technology. ....

www.rd.com/living-healthy/beyond-the-pedometer (July 24,
2008).
Top 10 Walking Speedometers and Odometers
From Wendy Bumgardner
....
Several walking speedometers-odometers claim they can
tell you how far and how fast you are walking. My top
pick works perfect right out of the box. ....

http://walking.about.com (May 27, 2008).
Garmin Forerunner 201 GPS Speedometer
By Wendy Bumgardner
....
Every walker and runner should have one. A single
wrist unit uses GPS satellites to trace your outdoor
workout. Displays speed, distance, pace, time, laps
in large display. Charts your route as you walk or
Serial No. 76686920
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run, and can point you back to start. Pace alerts and
a virtual partner can pace your workout. ....

http://walking.about.com (July 22, 2008).
Fitsense Speedometer Systems
By Laura Moncur
....
This is a speedometer, heart rate monitor and a link
to upload your workout data to the computer. ....

www.starling-fitness.com (June 1, 2008).
Applicant contends that the term SPEEDOMETER is
perceived by the public only in relation to motor vehicles:
As known by common experience, a vehicle has
wheels and a dashboard display of a scale
displaying speed in MPH (miles per hour), wherein
the operating mode is that the rotational speed
of a selected wheel is measured by contact and
such measurement is correlated to the MPH
displayed speed.

Applicant’s goods accepted by the Trademark
Attorney recites inter alia: “monitoring device
worn on the person ...” (underlining added).

Being “worn on the person” brings into play
legs in a running mode, not a rotating wheel, and
not a MPH scale reading, and not other
differences going far beyond the dictionary
definitions of the Trademark Attorney.

Reply Br. at 1-2.
Not only is there no evidentiary support for
applicant’s argument, but the examining attorney’s evidence
proves the contrary: These materials demonstrate that the
term SPEEDOMETER is commonly applied to a “monitoring
device worn on the person...,” and is readily understood by
Serial No. 76686920
8
the public to designate such a device capable of variously
displaying time, speed, distance traveled, heart rate,
calories burned, and/or location. There is no basis to
conclude that SPEEDOMETER only has meaning with reference
to motor vehicles.
We note that applicant’s amended identification states
that its goods are “not concerned with the speed of the
walking and running exercise.” While the meaning of “not
concerned with” is not entirely clear,4 for purposes of this
appeal we consider the identification to exclude fitness
monitors which measure speed, a construction which is most
deferential to applicant’s position.
Nonetheless, the evidence of record makes clear that
the term SPEEDOMETER refers to more than a device for
simply measuring speed. The examining attorney’s

4 The record specimens provide no information about applicant’s
goods. Although the examining attorney issued a requirement for
information about applicant’s goods pursuant to Trademark Rule
2.61, the requirement was deemed satisfied when applicant
submitted a certificate of registration for a different mark
registered for services, not goods. Simply put, the information
supplied by applicant pursuant to the examining attorney’s
requirement did absolutely nothing to further inform the
examining attorney (or the Board) of the actual nature of
applicant’s goods. This application is based upon use of the
mark in commerce, and the examining attorney would have been
entirely justified in insisting on specific information about
applicant’s actual goods (including advertising materials and
user manuals). Such information would clearly have been relevant
– and most likely helpful – in examining the application. See
generally, TMEP §§ 814 (Requesting Additional Information),
1209.02 (Procedure for Descriptiveness and/or Genericness
Refusal), and cases cited therein.
Serial No. 76686920
9
dictionary evidence indicates that the term is used to
refer to devices which measure distance traveled, and the
online advertisements and articles demonstrate the use of
SPEEDOMETER to refer to wearable fitness-tracking devices
with a wide variety of functions other than speed. Thus,
even construing applicant’s goods as to not measure speed,
there is nothing in applicant’s identification that
excludes the measurement of distance traveled or any of the
other functions provided by goods identified in the
marketplace as “speedometers.” And to the extent that
applicant’s goods are capable of measuring speed, it is
clear that applicant cannot, by careful drafting, exclude
from consideration a central purpose of those goods
inextricably entwined with the identified functions. See
In re Reed Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB
2005), aff’d (not precedential), 482 F.3d 1376, 82 USPQ2d
1378 (Fed. Cir. 2007).
Contrary to applicant’s contention, we agree with the
examining attorney that in this context, SPEEDOMETER goes
beyond merely describing a feature or function of the
identified goods. Rather, it refers to the genus to which
the goods belong. As the evidence demonstrates, there are
a number of devices in the marketplace referred to in whole
or in part as a “speedometer,” encompassing a range of
Serial No. 76686920
10
functions and capabilities, and fitting easily within the
genus to which applicant’s goods pertain.
We do not mean to say that SPEEDOMETER is necessarily
the only term that can be used to refer to such a genus.
Clairol, Inc. v. Roux Distrib. Co., Inc., 280 F.2d 863, 126
USPQ 397, 398 (CCPA 1960) (there may be a number of generic
terms for a given good). But the evidence clearly
establishes that it is one such term. Applicant’s
competitors do in fact use SPEEDOMETER to refer to their
goods falling within the genus, and would be harmed by
applicant’s registration.
III. Conclusion
After careful consideration of the evidence and
argument of record, we conclude that SPEEDOMETER is a
generic term for “monitoring device worn on the person for
tracking fitness of the walking and running exercises, and
not concerned with the speed of the walking and running
exercise,” and that the mark is therefore ineligible for
registration on the Supplemental Register.
Decision: The refusal under Trademark Act § 23 is
affirmed.