Barrel Associates

Trademark Trial and Appeal Board

May 9, 2013

No. 85205145 (T.T.A.B. May. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Barrel Associates
_____

Serial No. 85205145
_____

Mark A. Goodman of Goodman Law Center for Barrel Associates.
Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
_____

Before Quinn, Wolfson and Hightower, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Barrel Associates (“applicant”) seeks registration on the Principal Register of
the mark H2O BENT (in standard characters) for “wood barrels,” in International
Class 20.1
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), having
determined that the applied-for mark merely describes a characteristic of

1 Application Serial No. 5205145 was filed on December 23, 2010, based on an allegation of
applicant’s bona fide intent to use the mark in commerce.
Serial No. 85205145

2

applicant’s goods. The examining attorney also has made final a refusal based on
applicant’s alleged failure to respond to an information request made pursuant to
Trademark Rule 2.61(b).
After the examining attorney made the refusals final, applicant appealed to
this Board. We affirm the refusals to register the mark under Trademark Rule
2.61(b) and Section 2(e)(1).
Trademark Rule 2.61(b)
We first address the requirement under Trademark Rule 2.61(b) for
additional information regarding the meaning of the mark and its components.
During prosecution, an examining attorney may request additional
information, pursuant to Trademark Rule 2.61(b), in order to properly consider
whether to refuse the applicant’s mark as being merely descriptive. The examining
attorney may request literature, exhibits, and general information concerning
circumstances surrounding the mark, as well as, if applicable, its use or intended
use. Trademark Manual of Examining Procedure (“TMEP”) § 814 (April 2013). If
the applicant does not comply with a legitimate requirement for information,
registration may be refused. See, e.g., In Re Cheezwhse.com, Inc., 85 USPQ2d 1917,
1919 (TTAB 2008); In re Planalytics Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004);
In re DTI Partnership LLP, 67 USPQ2d 1699, 1700 (TTAB 2003) (requirement for
information affirmed where applicant “did not specifically address or acknowledge”
the requirement for information); and In re SPX Corp., 63 USPQ2d 1592, 1597
(TTAB 2002) (requirement for information affirmed where applicant “totally
ignored” request for information).
Serial No. 85205145

3

During examination, the examining attorney asked applicant to “directly
answer” the following questions:
Does H2O, BENT, or H2O BENT have any significance as
applied to the goods and/or services other than trademark
and/or service mark significance?
Does H2O, BENT, or H2O BENT have any significance in
the relevant trade or industry other than trademark
and/or service mark significance?
If available, the applicant will provide a website address
at which the mark is used. If no website is available, then
the applicant will state this fact for the record.
In response, applicant stated:
Additional Information Requested by the Examiner 1.
"H2O BENT" has no significance applied to the goods and
services other than trademark/service mark significance.
2. "H2O BENT" has no significance in the relevant trade
or industry other than trademark/service mark
significance. 3. Applicant is not using "H2O Bent" on a
website at this time.
Following the applicant’s response, the examining attorney reiterated his
request for additional information regarding the meaning of the individual
components H2O and BENT. He did not repeat the requirement for information
regarding applicant’s website or applicant’s mark in its entirety, i.e., H2O BENT.
Thus, the issues before us are whether the examining attorney’s request for
additional information regarding the meaning of the individual components H2O
and BENT was legitimate and whether applicant’s response was sufficient.
We agree with the examining attorney that the request was legitimate. As
he stated, knowing whether the individual components themselves carry descriptive
connotations apart from the designation H2O BENT would “add to the information
Serial No. 85205145

4

gained by the examining attorney’s research,” “may even contradict or inform the
examining attorney’s research,” and would have allowed the examining attorney “to
make a more informed decision as to maintain [sic] the refusal or to merely require
a disclaimer of a term.”2 The examining attorney thus was justified in inquiring
whether or not the terms “H2O” and “BENT” separately carried any descriptive
meaning, despite applicant’s assertion that the combined term H2O BENT had only
trademark significance.
Applicant’s answer to the examining attorney’s inquiry was responsive only
in part. The examining attorney specifically asked whether the term H20 or the
word BENT, in addition to the combination of the two, had any significance in the
relevant trade or as applied to the goods. Applicant answered with respect to the
combination H2O BENT, but did not answer the question whether either term as a
separate element has any meaning other than trademark significance. Applicant
argues that because the examining attorney’s questions start with the word “Does”
(suggesting that there is a single subject of the sentence), applicant inadvertently
treated the wording “H2O, BENT, or H2O BENT” as a “singular compound subject,
rather than as a plural subject.”3 This would only make sense if applicant’s answer
repeated the supposedly “singular compound subject,” that is, if its answer had been
that “H2O, BENT, and H2O BENT” have no significance. Instead, applicant
selectively picked one of the terms (the entire proposed mark) and failed to address

2 Examining Attorney’s Appeal Brief, pp. 5-6 (unnumbered).
3 Applicant’s Appeal Brief, at p. 3.
Serial No. 85205145

5

the remaining two terms (the individual components). The refusal under
Trademark Rule 2.61(b) is affirmed.
Section 2(e)(1); Applicable Law
We now turn to a consideration of the refusal under Trademark Act § 2(e)(1).
Section 2(e)(1) prohibits registration of a mark which is merely descriptive of an
applicant’s goods or services. A term is deemed to be merely descriptive of goods or
services, within the meaning of 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 In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a term describe all of the properties or functions of the goods
and/or services in order for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant attribute or feature about
them. Moreover, whether a term is merely descriptive is determined not in the
abstract, but in relation to the goods and/or services for which registration is
sought. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The term “water bent” describes a process for shaping wooden barrels. As
applicant states in its brief, “so called ‘water-bent’ barrels are first immersed in very
hot water to break down the lignins in the wood, bent to shape, then slowly toasted
over an oak fire while still wet. Because water conducts heat better than air, this
toasting penetrates extraordinary depth. Typical characteristics associated with
this barrel are a sweet nose, velvety texture and spicy confluence of vanilla,
Serial No. 85205145

6

cinnamon nutmeg and roasted nut.”4 Although it is conceded that the terminology
“water bent” readily describes a feature of applicant’s wood barrels, applicant
argues that the mark H20 BENT is not merely descriptive because (1) a modicum of
imagination is required to recognize H2O as meaning “water,” and (2) the
terminology “water bent” is a highly specialized term that would not be understood
by the average purchaser of applicant’s goods, but only to those with the relevant
“degree of scientific educational background” in the technical aspects of how barrels
are made.5
A. Whether Consumers Would Readily Perceive H2O as WATER
The examining attorney has submitted a copy of the dictionary definition of
“h2o” found at http://dictionary.reference.com, defining the term as a “binary
compound that occurs at room temperature as a clear colorless odorless tasteless
liquid,” and specifically noting that “water” is a synonym of the term.6 He also
submitted a copy of a Wikipedia entry for “Properties of Water” that indicates
search requests for “H2O” redirect to the entry, and which begins its discussion of
the properties of water with “Water (H2O) is the most abundant compound on
Earth’s surface….”7
The examining attorney has also requested that we take judicial notice of
dictionary definitions of “H2O” and “water” that were attached to his brief. Judicial
notice may be taken of dictionary evidence attached to a brief. See, e.g., In re Red

4 Applicant’s Appeal Brief, p. 4.
5 Applicant’s Appeal Brief, pp. 4 and 6.
6 Attached to Final Office action dated 10/31/11.
7 Attached to Office action dated March 30, 2011.
Serial No. 85205145

7

Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (“The Board has a long history of
taking judicial notice of definitions excerpted from print dictionaries and submitted
after appeal”). See also, University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983) (Board may take judicial notice of use of a term in dictionaries).
Accordingly, we take judicial notice of the definition of “H2O” as “water” from the
Abbreviations Dictionary, Tenth Edition (2001), and the definitions of “water” as
“H2O” from The Cassell Dictionary of Science (1997)8 and Webster’s New World
Dictionary of Science (1998).9 We also note that “water” and “H2O” are listed
together in the Thesaurus section of Webster’s New World Dictionary and
Thesaurus, Second Edition (2002). We do not, however, take judicial notice of the
references from the online catalog, Credo Reference, because the examining attorney
has not shown that the information from Credo Reference exists in printed form.
See In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009) (“During
an appeal, the Board may take judicial notice of dictionary definitions retrieved
from online sources when the definitions themselves are derived from dictionaries
that exist in printed form.”); and TBMP § 1208.04 (3d ed. 2011) (Board will take
judicial notice of “definitions or entries from references that are the electronic
equivalent of a print reference work.”). Entries that have not been shown to be the
equivalent of a print reference work will be given no consideration.

8 The entry reads, in pertinent part: “water (H2O) A colourless, odourless, tasteless
liquid….”
9 The entry reads: “water H2O liquid without color, taste, or odor.”
Serial No. 85205145

8

Applicant does not dispute that the symbol “H2O” is the scientific symbol
associated with water. Applicant essentially argues, however, that an average
purchaser of its goods would not immediately perceive the term “H2O” as “water,”
but would simply take it as a combination of letters and a number. Cf., In re La
Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Tia Maria, Inc. 188
USPQ 524 (TTAB 1984) (ordinary American purchaser would not “stop and
translate” the words TIA MARIA even though they originate from Spanish).
Arguing by analogy, applicant states: “If [the fact that H2O is the chemical symbol
associated with water] were [to render the mark merely descriptive], the mark,
‘C12H22O11’ would be descriptive for sugar.”10 In other words, applicant argues
that the phonetic and visual effect of the term H2O in applicant’s mark will serve to
sufficiently delay a prospective consumer’s recognition of the “pertinent meaning” of
the mark as “water bent,” because a mental step is required to translate “H2O” into
“water.” Thus, the mark H2O BENT would not immediately be perceived as being
the equivalent of “water bent.”
We have carefully considered the evidence of record in light of applicant’s
arguments. To show that “H2O” is a common abbreviation for “water,” and
generally known, the examining attorney has, in addition to the above-referenced
dictionary definitions, submitted copies of printouts from third-party websites
showing use of “H2O” as an abbreviation for “water” in connection with barrels
designed to hold water, barrel racks, and barrel covers. For example:

10 Applicant’s Appeal Brief, p. 3.
Serial No. 85205145

9

At the website www.alpineparty.com, several categories of
products are listed as available for rent, under the
heading “Alpine Party Rental”; one of the entries reads
“H2O Barrel Cover - $5.00.”11
The website Pot Belly Pig Secrets describes materials and
equipment needed for properly raising pigs, and advises:
“And for water, we should have a H2O Barrel.”12
The Costco.com website advertises a 55-gallon Barrel
Water Storage System and includes several customer
reviews of the system; one of them identifies the product
under review as a “55 Gallon H2o barrel water storage.”13
The examining attorney also has submitted copies of nine use-based, third-
party registrations for marks containing the term “H2O” wherein the term has been
disclaimed, and argues that because the goods or services for which such marks
have been registered include or relate to water, and the term H2O has been
disclaimed in each registration, that the Office recognizes that “H2O” will be readily
seen by the public as synonymous with “water.”14 The goods and services of the
nine registrations involve water, such as Registration No. 1997043 for the mark
H2O SOLUTIONS, INC. and design for “water purification services”;15 Registration
No. 3260372 for the mark H2O BLASTERS for “water pistols; water squirting
toys”;16 and Registration No. 3899806 for the mark H2O SPORTS for “rental
services, namely, the rental of kayaks, sailboats, powerboats, personal watercraft,

11 At www.alpineparty.com, as it appeared on 10/8/11, cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
12 At www.thepotbellypigs.com, as it appeared on 10/8/11, cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
13 At http://reviews.costco.com, as it appeared on 10/6/11, cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
14 Ten registrations were submitted with the Final Office action, but one of them has since
been cancelled.
15 Registered August 27, 1996; renewed.
16 Registered July 10, 2007.
Serial No. 85205145

10

wave runners, jet skis and stand up paddle boards; environmental tours by boat,
and dolphin watch cruises.”17
Third-party registrations may be used in the manner of dictionary
definitions, to show that a term has a particular meaning or significance in an
industry or as applied to goods or services. In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006) (“As shown by the examining attorney’s evidence, the term
‘SOLUTIONS’ has been regarded as merely descriptive in a number of third-party
marks, the registrations of which include disclaimers of the term ‘SOLUTIONS.’”).
See also, American Lebanese Syrian Associated Charities, Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1029 (TTAB 2011); Tektronix, Inc. v.
Daktronics, Inc., 187 USPQ 588, 592 (TTAB 1975). These registrations corroborate
the common sense conclusion that the term “H2O” is synonymous with “water” and
is merely descriptive when used in connection with wood barrels that have been
“water bent,” i.e., subjected to the process of being submersed in hot water and then
bent into a desired shape.
Based on the evidence of record, we find that the chemical symbol H2O is
commonly substituted for the word “water” and that it is generally known as the
equivalent, or synonym, of “water.” Thus, the average purchaser of applicant’s
goods will immediately perceive the term “H2O” as “water” without having to take
any calculated mental steps to reach that conclusion.

17 Registered January 4, 2011.
Serial No. 85205145

11

B. Whether a Technical Background is Required to Immediately Discern the
Meaning of “Water Bent” in Connection with Applicant’s Goods
Applicant argues that a typical consumer of its products would not
understand the “rather technical aspect” of its goods. “The fact that water was used
as part of a complex technique to bend a particular wood barrel does not
immediately convey information about the oak barrel to the consumer. Consumers
of wood barrels are likely not educated on the technical aspects of how barrels are
made.”18
To show that the term “water bent” would be readily understood by the
relevant purchaser of applicant’s goods, the examining attorney has submitted
copies of printouts from third-party websites showing how the term “water bent” is
used in connection with wood barrels. Several of these websites describe the
process used to create a water-bent barrel. For example:
The website at www.premierwinecask.com19 describes the
procedure as follows: “Our water-bent barrels are first
immersed in very hot water to break down the lignins in
the wood, bent to shape, then slowly toasted over an oak
fire while still wet.”20
The website at http://www.bottigamba.com mentions a
water-bent barrel as part of its winemaking seminar:
“Winemaking seminar held in Castell’Alfero in June ’08,
with main objective [sic] the production of premium

18 Applicant’s Appeal Brief, p. 4.
19 The examining attorney indicates in his Brief that he believes this website belongs to
applicant, Brief, p. 5 (unnumbered), but there is no corroborating information in the record
from which we may determine this to be the case. The fact that the link history reads:
“Home/Catalogue/American Oak Wine Barrels/Barrel Associates/Water Bent” only appears
to illustrate the links through which the search passed to get to the displayed web page.
20 Attached to Office action dated March 23, 2011.
Serial No. 85205145

12

quality wines, … and a comparison between a fire and a
water bent barrel.”21
The online magazine Wine Business Monthly highlights
the procedure for bending barrels: “Most barrels are sold
as either ‘fire-bent’ or ‘water-bent.’ As one might suspect,
the terms mean that either fire or water is used to soften
the staves prior to bending. … When barrels are water-
bent, they are usually immersed in hot water, which does
the job of softening the wood.”22
The evidence also includes printouts from websites at which water-bent
barrels are advertised for sale. The advantages of buying a water-bent barrel are
mentioned in some of the websites. For example:
A third-party website advertises applicant’s barrels,
listing them for sale as “American Oak Water Bent”
barrels and “Hungarian Oak Water Bent” barrels. The
flavor characteristics that these barrels impart to the
wine is described as “providing a velvety texture, rounded
with a spicy confluence of vanilla, cinnamon, nutmeg and
roasted nut.”23
Presque Isle Wine Cellars (“PIWC”) advertises that they
are an “eastern USA distributor for … oak barrels” and
that they offer barrels with “water bent staves,” as well as
two “specific” water-bent barrels, the “Delicate Pinot” and
the “Delicate White.”24
Pickering Winery Supply offers “the finest in cooperage
from three French tonnelleries and one American cooper.”
The American cooper is Cornerstone Cooperage, and the

21 Attached to Office action dated March 23, 2011.
22 At http://www.winebusiness.com, as it appeared on 10/20/11; cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
23 At www.enoltech.com.au, as it appeared on 9/11/11; cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
24 At www.piwine.com,as it appeared on 9/38/11; cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
Serial No. 85205145

13

advertising copy for its goods reads: “All barrels are
water-bent, producing soft tannins.”25
Emerson Brown offers a 2010 Sauvignon Blanc wine for
$25 per bottle. The web page indicating the
characteristics of the wine states that 35% “once used
water bent French Oak barrels.”26
Wine Business Monthly presented a list detailing flavor
characteristics for barrel types, including applicant’s
“American Water Bent: Big-time vanilla, but integrates
well with reds. Best used as a blending component. Rich,
creamy caramel sneaks up in the finish to add depth and
clarity to mid-palate and finish.”27
This record evidence shows that the term “water bent” is merely descriptive
of wooden barrels that have been bent into shape after having been immersed in
water. It also shows that the water-bent barrel is desirable for its ability to impart
particular flavor characteristics to its liquid contents, typically wine. The websites
are directed to ordinary buyers of various types of wine barrels and the media
articles in Wine Business Monthly are written in a non-technical style. Thus, the
typical purchaser of applicant’s wood barrels would not require a technical or
science background to immediately understand that the mark H2O BENT merely
describes a water-bent barrel, as compared with a fire-bent barrel or a barrel
roasted by alternative means, such as in an oven.

25 At http://winerystuff.com/oak.htm,as it appeared on 10/21/11; cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
26 At www.emersonbrownwines.com,as it appeared on 10/8/11; cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
27 At www.winebusiness.com, as it appeared on 10/20/11; cached by Bing at
http://cc.bingi.com/cache. Attached to Final Office action dated 10/31/11.
Serial No. 85205145

14

Conclusion
The above evidence of record shows that the phrase “H2O BENT” is
descriptive of a feature or characteristic of applicant’s water-bent barrels. Because
“H2O” is a widely-recognized synonym for the word “water,” the average customer
of applicant’s wood barrels will immediately perceive applicant’s mark as meaning
“water bent.” The term “water bent” describes a type of barrel that has been
subjected to a process which includes immersing the barrel in water and bending it
into a desired shape. For these reasons, applicant’s mark H2O BENT is merely
descriptive of the goods.
Decision: The refusal to register under Trademark Act § 2(e)(1) is affirmed.