Basic Industries International, Inc.

Trademark Trial and Appeal Board

Jul 24, 2020

87550193 (T.T.A.B. Jul. 24, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: February 25, 2020 Mailed: July 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Basic Industries International, Inc.
_____

Serial No. 87550193
_____

Steven J. Nataupsky and Brian M.Z. Reece of Knobbe, Martens, Olson & Bear, LLP,
for Basic Industries International, Inc.
Robert N. Guliano, Trademark Examining Attorney, Law Office 105,
Jennifer L. Williston, Managing Attorney.
_____

Before Lykos, Lynch, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Basic Industries International, Inc. (“Applicant”) seeks registration on the
Principal Register of the proposed mark THE CRUSHER (in standard characters) for
“hand operated can compactor” in International Class 8.1 During the prosecution of

1 Application Serial No. 87550193 filed on July 31, 2017, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in
commerce since at least as early as June 1984.

Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number in the downloadable .pdf version of the TSDR records. References to the
briefs and other materials in the appeal record refer to the Board’s TTABVUE docket system.
Serial No. 87550193
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the application, Applicant amended its application to seek registration under the
provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), conceding that
THE CRUSHER is merely descriptive of the goods.2
The Examining Attorney refused to register the term THE CRUSHER under
Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1052 and 1127, on the
grounds that THE CRUSHER is generic for the identified goods, and, in the
alternative, that it is merely descriptive under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), and has not acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f). After the Trademark Examining Attorney made
the refusals final, Applicant appealed to this Board. We affirm the refusals to register.
I. Procedural Issue
In its reply brief, Applicant requests that if we find Applicant’s evidence of
secondary meaning insufficient, we then remand the application to the Examining
Attorney for an amendment of the application to the Supplemental Register –
effectively seeking amendment only after the case has been decided. 9 TTABVUE 5.
However, the Board cannot accept an amendment to the Supplemental Register after
a case has been decided on appeal. TMEP § 816.05 (Oct. 2018). See also In re Adlon

2 May 1, 2018 Response to Office Action TSDR 1 (“Applicant submits herewith a signed
verified declaration asserting the acquired distinctiveness of the mark in question.”);
November 12, 2018 Response to Office Action TSDR 16 (“Applicant does not contest that
Applicant’s Mark is descriptive of its can compactor goods. However, . . . Applicant’s Mark
has acquired distinctiveness through Applicant’s substantially exclusive and continuous use
of the mark of [sic] over 33 years, and Applicant hereby claims acquired distinctiveness under
Section 2(f) of the Trademark Act.”). Applicant did not seek registration under Section 2(f) in
the alternative.
Serial No. 87550193
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Brand GmbH & Co., 120 USPQ2d 1717, 1725 (TTAB 2016) (applicant cannot make a
conditional request for remand based on the outcome of Board’s decision on appeal);
In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016) (denying
impermissible request that, in the event the refusal would be affirmed, the
application be remanded for an amendment to Supplemental Register). If applicant
wished to pursue this possibility, it should have made the alternative request for
registration on the Supplemental Register during prosecution of the application and
prior to appeal, or in a separately captioned request for remand and suspension of
proceedings with the Board, ideally prior to the deadline for filing an appeal brief, so
that the Board could make a prompt ruling on the request. See TMEP § 816.04.
II. Genericness
“A generic name . . . is ineligible for federal trademark registration.” U.S. Patent
and Trademark Office v. Booking.com B.V., 591 U.S. __, No. 19-46, slip op. at 1 (U.S.
June 30, 2020). “A generic term ‘is the common descriptive name of a class of goods
or services.’ A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire
distinctiveness.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041,
1045 (Fed. Cir. 2018) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)). Whether a proposed mark is generic
rests on its primary significance to the relevant public. Booking.com, 591 U.S. __, No.
19-46, slip op. at 6; In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed.
Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
1991).
Serial No. 87550193
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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?” Marvin
Ginn, 228 USPQ at 530; see also Royal Crown, 127 USPQ2d at 1046. A term also can
be considered generic if the public understands it to refer to a part of the genus, “even
if the public does not understand the term to refer to the broad genus as a whole.” In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016).
“[E]vidence of the public’s perception may be obtained from ‘any competent source,
such as consumer surveys, dictionaries, newspapers and other publications.”’
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827,
1833 (Fed. Cir. 2015) (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556,
1559 (Fed. Cir. 1985)). The Examining Attorney submitted a variety of evidence
reflecting the public’s understanding of the term “crusher.” Bearing in mind that we
assess the mark in its entirety, on this record, we nonetheless also find it “useful to
consider the public’s understanding of the individual words.” See Princeton
Vanguard, 114 USPQ2d at 1832-33.
The Examining Attorney must establish that a proposed mark is generic. In re
Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
Serial No. 87550193
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A. The Genus
Because the identification of goods in an application defines the scope of rights
that will be accorded the owner of any resulting registration under Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), generally “a proper genericness inquiry focuses
on the description of [goods] set forth in the [application or] certificate of registration.”
Cordua Rests., 118 USPQ2d at 1636 (quoting Magic Wand, 19 USPQ2d at 1552). In
re Rosemount, Inc., 86 USPQ2d 1436, 1437 (TTAB 2008); TMEP § 1209.01(c)(i).
The application identifies the goods as “hand operated can compactor.” The
Examining Attorney and Applicant do not agree on the genus; the Examining
Attorney argues that the genus is “crusher,” while Applicant argues that the genus
is “can compactor.”
A compactor is “a device that crushes garbage into a smaller and denser form”3 or
“an appliance that crushes and compresses trash into small convenient bundles.”4 We
find the genus of the goods is adequately defined by the identification of goods, or a
part thereof, in the application. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1554 (Fed. Cir. 1991); In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106,
1112 (TTAB 2010) (“[T]he genus of goods at issue in this case is adequately defined
by applicant’s identification of goods. . . .”). Accordingly, we find the genus to be “can
compactors.” This is confirmed by Applicant’s specimen of use (a photograph of
packaging for the goods), describing Applicant’s product as an “Aluminum Can

3 CAMBRIDGE DICTIONARY, December 4, 2018 Final Office Action TSDR 65.
4 DICTIONARY.COM, id. at TSDR 66.
Serial No. 87550193
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Compactor.” See In re Country Music Ass’n, Inc., 100 USPQ2d 1824, 1828 (TTAB
2011). We now proceed to consider whether the asserted mark THE CRUSHER is
understood by the relevant public primarily to refer to can compactors.
B. The Relevant Public’s Understanding of THE CRUSHER
The relevant public for a genericness determination is the purchasing or
consuming public for the identified goods. Magic Wand, 19 USPQ2d at 1553. Because
there are no restrictions or limitations to the channels of trade or classes of consumers
in Applicant’s identification of goods, the relevant consuming public consists of
ordinary consumers who purchase or use can compactors.
“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)); see also Booking.Com, 591 U.S.
__, No. 19-46, slip op. at 10. Nonetheless, the Federal Circuit has noted that it may
be appropriate “as a first step” to analyze the constituent terms in the applied-for
mark. Princeton Vanguard, 114 USPQ2d at 1833. See also 1800Mattress.com IP, 92
USPQ2d at 1684 (explaining that the Board appropriately considered the separate
meanings of “mattress” and “.com” when determining that the combination
“mattress.com” was generic); In re Hotels.com, 91 USPQ2d at 1535 (affirming the
Board’s finding that “the composite term HOTELS.COM communicates no more than
Serial No. 87550193
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the common meanings of the individual components”).
In undertaking our analysis, we keep in mind that while we look to the primary
significance of the mark, we look to the asserted mark in relation to the identified
goods, and we note that all possible generic names for a good must remain in the
public domain. See 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 12:9 (5th ed., June 2020 update) (“There is usually no one, single and
exclusive generic name for a product. Any product may have many generic
designations. Any one of those is incapable of trademark significance.”).
We start with the relevant dictionary definitions of record:
 CRUSH
v.tr. To press between opposing bodies so as to break, compress, or injure.
v.intr. To be or become crushed: Aluminum cans crush easily.5

 CRUSHER
A crusher is a piece of equipment used for crushing things.
…a garlic crusher …a 40-ton stone crusher.6
[A] device that crushes something.7
Someone or something that crushes.8

In addition, we take judicial notice of the following dictionary definitions of the
word THE:9

5 AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, December 4, 2018 Final
Office Action TSDR 79.
6 COLLINS ENGLISH DICTIONARY, November 2, 2017 Office Action TSDR 4; May 10, 2018
Office Action TSDR 8.
7 VOCABULARY.COM DICTIONARY, December 4, 2018 Final Office Action TSDR 63.
8 YOUR DICTIONARY, id. at TSDR 64.
9 Neither Applicant nor the Examining Attorney submitted a definition of THE. The Board
may take judicial notice of online dictionaries that exist in printed format or have regular
fixed editions. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013). The
Board may notice dictionary definitions sua sponte. See University of Notre Dame du Lac v.
Serial No. 87550193
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 definite article – used as a function word to indicate that a following noun or
noun equivalent is definite or has been previously specified by context or by
circumstance. – used as a function word before a singular noun to indicate that
the noun is to be understood generically;10

 def. art. Used before singular or plural nouns and noun phrases that denote
particular, specified persons or things. Used before a singular noun indicating
that the noun is generic;11

 definite article (used, especially before a noun, with a specifying or
particularizing effect, as opposed to the indefinite or generalizing force of the
indefinite article a or an). (used to mark a noun as being used generically).12

While “dictionary definitions of the individual words . . . in the proposed mark are
probative of the public’s understanding of their combination,” In re Empire Tech. Dev.
LLC, 123 USPQ2d 1544, 1550 (TTAB 2017), we also consider other evidence of record
to determine the relevant public’s understanding of the term THE CRUSHER. The
Examining Attorney attached to each Office Action web pages showing third-party
use of the word CRUSHER in connection with can compactors, and listed many of
these examples in his brief. See 8 TTABVUE 7-11. Many of the excerpts demonstrate
use of the term THE CRUSHER:
Simply hold the crusher’s handle and pull it down to
crush a can. (amazon.com)13

J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
10 From www.merriam-webster.com/dictionary/the. MERRIAM-WEBSTER.COM DICTIONARY.
Accessed July 22, 2020.
11 From www.ahdictionary.com/word/search.html?q=the. THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE, FIFTH EDITION. Accessed July 22, 2020.
12 From http://www.dictionary.com/browse/the#. RANDOM HOUSE UNABRIDGED DICTIONARY.
Accessed July 22, 2020.
13 May 10, 2018 Office Action TSDR 7.
Serial No. 87550193
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[I] noticed . . . upon further investigation that the rods that
the crusher slides up and down on were bowed. . . . [A]s
to whether or not the crusher is any good, well, you have
to keep it inside . . . . (amazon.com)14
We actually keep the crusher and bin inside of our pantry
and it looks really good there. I know the cost of the
crusher and the bin together makes it a much higher price
than buying something cheap for a garage, but . . . .
(amazon.com)15
[T]ake up less room in your recycling bin by using this Can
Crusher from Norpro. The crusher, which features a soft
silicone handle, can be used freestanding, or mounted to a
wall. (bedbathandbeyond.com)16
I would like it better if the handle had some sort of
retention that would hold it in the upright position. I have
a tight space that makes it difficult to walk around the
crusher. (amazon.com)17
After mounting the until above a 33 gallon trash can it took
me a few tries before I got comfortable with the action of
the crusher but after that I discovered a smooth operating
unit that requires little muscle. (amazon.com)18
Painted gray and black, the crusher can easily be wiped
down to clean. (agrisupply.com)19
Easy to use, simply hold the crusher’s handle and pull it
down to crush a can. Using a drill/screwdriver and the
included 4 screws, mount the crusher vertically to any
solid surface like walls, tables, etc. (sears.com)20

14 December 4, 2018 Office Action TSDR 70.
15 Id. at 71.
16 Id. at 73.
17 Id. at 77.
18 Id. at 78.
19 Id. at 97.
20 Id. at 99.
Serial No. 87550193
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(Emphasis added.) Others demonstrate use of CRUSHER without a preceding THE.
The following excerpts are representative:
Prepare your cans for recycling with this deluxe can
crusher from Norpro, Inc. (target.com)21
Crush large 16 oz. cans with this can crusher.
(harborfreight.com)22
[T]he 16 oz. crusher can be used for 12 oz. cans as well.
(amazon.com)23
Crusher works great with 12 oz aluminum cans and helps
save the planet through recycling and scrap collection.
(etsy.com)24
I mounted my crusher on a piece of plywood that I lay
across the container where I store the cans. (amazon.com)25
The easy to operate crusher is constructed of steel and has
a 13 inch lever arm to crush up to 16 oz. aluminum drink
cans. (agrisupply.com)26
I have crushed about 30 cans and the part that slides up
and down is jamming and slanted. I will use it until it
breaks and probably go elsewhere to find a better crusher.
(walmart.com)27
This is a pretty neat crusher. (walyou.com)28

21 November 2, 2017 Office Action TSDR 5.
22 May 10, 2018 Office Action TSDR 20.
23 December 4, 2018 Office Action TSDR 90.
24 Id. at 84.
25 Id. at 85.
26 Id. at 97.
27 Id. at 100.
28 Id. at 105.
Serial No. 87550193
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Colton Sleister crushes cans in a home-built can crusher.
(desmoinesregister.com)29
Our wide range of crushers helps you minimize the size or
waste material and make room for more recyclable waste.
(norcalcompactors.net)30
“I mean, we would crush cans, recycle cans just to get
enough money to buy the newest games,” Hernandez said.
“It got to the point where my parents even bought one of
those can crusher things, put it in the garage and every
time we drank a soda or drank bottled water, we’d just
throw it in the recycling.” (cincinnati.com)31
(Emphasis added.)
In addition, Applicant’s evidence in support of its alleged “widespread and
continuous use and promotion of [its m]ark in connection with can compactors,”
November 12, 2018 Response to Office Action TSDR 14, also shows use of THE
CRUSHER and/or CRUSHER in context with can compactors but not as a mark. For
example, exhibits attached to the declaration of Ajay N. Thakkar, Applicant’s
president show the following:
 Pacific Precision Metals THE CRUSHER Aluminum Can Compactor
(amazon.com)32

“Instantly crushes all 12- and 16-ounce cans . . . Simply hold the crusher’s
handle and pull it down to crush a can.”

Customer questions & answers:
Question: “Can you use this without mounting to a surface?”
Answer: “If not anchored, the crusher would tend to slide while closing the
lever to crush a can which takes some force. . . . if the crusher were
mounted to a board 6” or so longer than . . . see more”

29 Id. at 107.
30 Id. at 111.
31 Id. at 132.
32 Thakkar Decl., Ex. C, November 12, 2018 Response to Office Action TSDR 105-07.
Serial No. 87550193
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Question: “does it crush 16 oz cans?”
Answer: “Yes, 16 oz cans fit easily into the crusher.”

Question: “Will this crush 8 oz aluminum cans, …?”
Answer: “The slight bend keeps the cans from popping out of the crusher.
. . . Someone suggested mounting the crusher to a board so it can be slid
under a couch out of the way. . . . I cut the screws used to mount the
crusher to the board so they don’t extend out the back side.”

 Basic Industries The Crusher Can Crusher – 77701 (doitbest.com)33

The computing breadcrumb trail indicates that the page can be found by
following: Housewares › Trash Cans & Trash Bags › Can Crushers › Can
Crusher

 The Crusher 16 in. L Can Crusher. (acehardware.com)34

The breadcrumbs indicate the page is located at: Home / Home and Decor/
Kitchen Utensils and Gadgets / Can Crushers.

 “Make the recycling process more efficient with The Aluminum Can
Crusher By Basic Industries International.” (walmart.com)35

 “The Crusher” manual can crusher review – Amazon. (youtube.com)36

“‘The Crusher’ manual can crusher review. Purchased on Amazon for
around $22. This was shot in my garage btw.”

“Up next” videos include “Simple DIY Can Crusher – Mikes Inventions,”
“Can crusher & applesauce maker!!!!,” and “Plastic Bottle Crusher Model
#2200.”

 8 Best Can Crushers 2018 (youtube.com)37

“Our complete review, including our selection of the year’s best can crusher
. . . . Can crushers included in this wiki include the commercial zone

33 Id. at TSDR 108-110.
34 Id. at TSDR 111.
35 Id. at TSDR 112.
36 Thakkar Decl., Ex. D, November 12, 2018 Response to Office Action TSDR 114.
37 Id. at TSDR 115.
Serial No. 87550193
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compactor, basic industries compactor, zing industrial, kitchencraft stand,
basic industries multi crush, dial industries easy pull, . . . .”

(Emphasis added.)
The Examining Attorney argues that the evidence of record shows that the term
CRUSHER is commonly used in a generic manner to refer to can compactors,
including those that are hand operated and manufactured and sold by Applicant’s
competitors. 8 TTABVUE 12. Applicant argues that the term CRUSHER commonly
refers to a stone crusher and points to a Wikipedia entry for “crusher” which indicates
that “[a] crusher is a machine designed to reduce large rocks into smaller rocks,
gravel, or rock dust.”38 6 TTABVUE 6. However, the same Wikipedia entry goes on to
explain that, in general, “[c]rushers may be used to reduce the size, or change the
form, of waste materials so they can be more easily disposed of or recycled” and “[i]n
industry, crushers are machines which use a metal surface to break or compress
materials into small fractional chunks or denser masses.”39 At any rate, Applicant’s
attempt to demonstrate the meaning of CRUSHER as a stone crusher pivots from the
goods at issue and the relevant public. Our inquiry must focus on the purchasing or
consuming public for can compactors. That the word CRUSHER may have other
meanings (e.g., a stone crushing machine) in different contexts is immaterial, since
our genericness inquiry is not conducted in the abstract but focuses on the
identification of goods in the application, see Magic Wand, 19 USPQ2d at 1552, and
how consumers would perceive the mark in connection with those goods. See, e.g.,

38 Wikipedia, November 12, 2018 Response to Office Action TSDR 26.
39 Id.
Serial No. 87550193
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Remington Prods. Inc. v. North Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444,
1448 (Fed. Cir. 1990) (assessing descriptiveness and genericness by looking at how a
consumer would perceive the mark “in connection with the products”). The webpages
submitted by the Examining Attorney demonstrate usage and understanding of the
term THE CRUSHER and the word CRUSHER by itself in appropriate context, that
is, among the relevant public.
Applicant also argues, without pointing to any specific examples in its briefs, that
the evidence of record reflects a mixture of uses showing third-party recognition of
Applicant as the source of Applicant’s goods, 6 TTABVUE 5-6, 8, and that it “does not
have full control on how customers use” its mark, “[o]ftentimes, customers will spell
or format Applicant’s [asserted m]ark incorrectly, particularly because of the casual
nature of online reviews and submissions.” 6 TTABVUE 7. Applicant presumably
references the website evidence attached as exhibits to the Thakkar declaration. See
November 12, 2018 Response to Office Action TSDR 37-41 (declaration), 105-112
(advertisements of Applicant’s goods), and 114-115 (YouTube reviews of Applicant’s
goods). The advertisements are examples of how Applicant’s can compactors are sold
by Amazon, Do it Best, Ace Hardware, and Walmart, and demonstrates proper
trademark use; and the two YouTube videos by third-parties reference Applicant’s
goods and contain images of the asserted mark affixed thereto in the following special
form: .
Serial No. 87550193
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“The mere fact that a record includes evidence of both proper trademark use and
generic use does not necessarily create a mixed record that would overcome an
examining attorney’s evidence of genericness.” In re Am. Online Inc., 77 USPQ2d
1618, 1623 (TTAB 2006). See also Merrill Lynch, 4 USPQ2d at 1143 (mixed use found
where “substantial number of publications” showed recognition that source of mark
was the appellant); In re Trek 2000 Int’l Ltd., 97 USPQ2d at 1113 (a so-called “mixed
record” may be found where “the evidence of generic use is offset by applicant’s
evidence that shows not only a significant amount of proper trademark use but also
trademark recognition by third parties.”) (internal quotations omitted). It would be
unusual in cases such as this where an applicant has been using an allegedly generic
term for some period of time for there not to be some evidence showing good
trademark use. Here, this evidence is quite limited. On the other hand, the totality
of the evidence strongly supports the Examining Attorney’s position that the term is
generic, and Applicant has not sufficiently rebutted that evidence. See Am. Online,
77 USPQ2d at 1623 (“[A]pplicant’s response [was] impressive. . . . [T]he evidence of
generic use [was] offset by Applicant’s evidence that show[ed] not only a significant
amount of proper trademark use but also trademark recognition by customers,
publishers, and third parties.”).
C. Conclusion as to Genericness
Upon consideration of all of the evidence of record, we find that Applicant’s
proposed mark THE CRUSHER is the generic name of the genus of goods. A generic
term can encompass a range of products or a particular product that may be
Serial No. 87550193
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categorized under an all-encompassing term. See, e.g., In re Greenliant Sys. Ltd., 97
USPQ2d 1078, 1082 (TTAB 2010) (NANDRIVE found generic for “electronic
integrated circuits” because NAND drives were types of solid state flash drives, a
subcategory of applicant's broadly worded “electronic integrated circuits”); In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 10 USPQ2d 1879 (Fed. Cir.
1989) (ANALOG DEVICES held generic for a wide range of electronic products in
International Class 9). Here, the generic term “crusher” encompasses a range of
products including compactors, and particularly can compactors. Applicant’s
particular product, “hand operated can compactor,” is categorized under the all-
encompassing term “crusher.”
The addition of the article THE to the word CRUSHER does not transform the
individual words into something more when put together as THE CRUSHER in the
context of can compactors. Here, the evidence of record reflects widespread generic
use of the designation THE CRUSHER as a whole as well as CRUSHER by itself. In
addition, the third-party generic use of THE CRUSHER and CRUSHER alone
suggests that nothing about the combination of words makes the whole any greater
than the sum of its parts. See In re The Place, Inc., 76 USPQ2d 1467, 1468 (TTAB
2005) (definite article THE adds “no source-indicating significance to the mark as a
whole”).
In sum, the record demonstrates that the primary consumer perception of the
term THE CRUSHER, as a whole, is that of a common name for the identified goods,
namely, hand-operated can compactors. In light of the evidence of record, including
Serial No. 87550193
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dictionary definitions and evidence showing that members of the relevant consuming
public use the term “the crusher” and the word “crusher” itself to describe can
compactors, we find that the Examining Attorney has clearly demonstrated that
Applicant’s proposed mark is a generic name for Applicant’s goods; and that relevant
customers would understand the term THE CRUSHER primarily to refer to a can
compactor. We therefore affirm the refusal to register Applicant’s proposed mark on
the ground that it is generic.
III. Mere Descriptiveness and Lack of Acquired Distinctiveness
For completeness, we also address the Examining Attorney’s alternative refusals
to register the mark on grounds that it is merely descriptive of the identified goods
under Section 2(e)(1) and has not acquired distinctiveness under Section 2(f).
A term is merely descriptive under Section 2(e)(1) if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
use of the services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987). “[T]o be placed on the principal register, descriptive terms must
achieve significance ‘in the minds of the public’ as identifying the applicant’s goods or
services—a quality called ‘acquired distinctiveness’ . . . .” Booking.com, 591 U.S. __,
No. 19-46, slip op. at 3 (citing Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205, 211 (2000)).
During the prosecution of the application Applicant conceded that THE
CRUSHER is merely descriptive of the goods, November 12, 2018 Response to Office
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Action TSDR 16 (“Applicant does not contest that Applicant’s Mark is descriptive of
its can compactor goods.”), and Applicant does not argue otherwise in its appeal brief.
Similarly, Applicant’s amendment to claim acquired distinctiveness was not made in
the alternative, but rather was an unconditional Section 2(f) claim; therefore, it may
be construed as conceding that the matter to which it pertains is not inherently
distinctive and, thus, not registrable on the Principal Register absent proof of
acquired distinctiveness. See Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks
registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an
applicant’s reliance on Section 2(f) during prosecution presumes that the mark is
descriptive.”).
Despite Applicant’s concession that THE CRUSHER is merely descriptive, we
must determine its degree of descriptiveness for purposes of determining whether it
has acquired distinctiveness. “[A]pplicant’s burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.” In re Steelbuilding.com, 415 F.3d
1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). Based on the record as a whole, for the
same reasons set out above in the genericness discussion, we therefore alternatively
find Applicant’s proposed mark highly descriptive. See Royal Crown, 127 USPQ2d at
1045 (Board should first determine if a proposed mark is highly descriptive rather
than merely descriptive before assessing acquired distinctiveness).
Serial No. 87550193
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We assess Applicant’s claim of acquired distinctiveness based on the entire record,
keeping in mind that “[t]he applicant . . . bears the burden of proving acquired
distinctiveness.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262,
1264 (Fed. Cir. 2015) (citation omitted). Because we have found the proposed mark
highly descriptive, Applicant’s burden of establishing acquired distinctiveness under
Section 2(f) is “commensurately high.” In re Virtual Independent Paralegals, LLC,
2019 USPQ2d 111512, *11 (TTAB 2019) (citing cases). See also See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988); In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990). Inasmuch as Applicant’s Section 2(f) claim rests on prior use and
“[o]ther evidence,” see Trademark Rule 2.41(a)(2)-(3), 37 C.F.R. § 2.41(a)(2)-(3), we
look to the following six factors which inform whether a mark has acquired secondary
meaning:
(1) association of the trade[mark] with a particular source
by actual purchasers (typically measured by consumer
surveys); (2) length, degree, and exclusivity of use; (3)
amount and manner of advertising; (4) amount of sales and
number of customers; (5) intentional copying; and (6)
unsolicited media coverage of the product embodying the
mark. . . . All six factors are to be weighed together in
determining the existence of secondary meaning.
Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed.
Cir. 2018). Applicant submitted evidence for factors two, three, four, and six.
Under the second factor, Applicant argues that it has used its mark for over 33
years, and, citing the language of Section 2(f) that “[t]he Director may accept as prima
facie evidence that the mark has become distinctive . . . proof of substantially
Serial No. 87550193
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exclusive and continuous use thereof as a mark by the applicant in commerce for the
five years before the date on which the claim of distinctiveness is made,” 15 U.S.C.
§ 1052(f), claims that its 33 years is “over six times [the five years] required to
establish a prima facie case of acquired distinctiveness under Section 2(f).” 6
TTABVUE 10. While “it is true that evidence of substantially exclusive use for a
period of five years immediately preceding the filing of an application may be
considered prima facie evidence of acquired distinctiveness” under Section 2(f), In re
Ennco Display Sys., Inc., 56 USPQ2d 1279, 1286 (TTAB 2008), the “language of the
statute is permissive, and the weight to be accorded this kind of evidence depends on
the facts and circumstances of the particular case.” Id. (citing Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988)). We have
discretion to find that evidence of a period of use is insufficient to show acquired
distinctiveness, and we do so here because of the highly descriptive nature of
Applicant’s proposed mark. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d
965, 128 USPQ2d 1370, 1378 (Fed. Cir. 2018) (“while evidence of substantially
exclusive and continuous use may be sufficient to prove a prima facie case of acquired
distinctiveness, that is not always the case”); La. Fish Fry Prods., 116 USPQ2d at
1265. See also In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984)
(affirming USPTO’s decision to require more than an affidavit of eight years of
continuous and substantially exclusive use); In re Kalmbach Publ’g Co., 14 USPQ2d
1490, 1492 (TTAB 1989) (deeming a Section 2(f) claim of more than 10 years of use
insufficient for a highly descriptive mark “without specific evidence of the extent of
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the mark’s exposure to the purchasing public and of the purchasers’ perception of the
asserted mark”); In re Synergistics Research Corp., 218 USPQ 165, 167 (TTAB 1983)
(“[W]e have consistently held that a declaration or affidavit of continuous and
exclusive use as a mark for an extended period of years is insufficient in and of itself
to support registrability under Section 2(f) of the Trademark Act where the term
sought to be registered is highly descriptive in character.”). The record suggests that
Applicant’s use of the terminology in its mark is not substantially exclusive in the
relevant industry. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ
939, 940-41 (Fed. Cir. 1984); see also Target Brands Inc. v. Hughes, 85 USPQ2d 1676,
1682 (TTAB 2007).
Applicant claims that since 2001 it has spent at least $50,000 in advertising,
marketing, and promoting its can compactors, and sold approximately 350,000 units
resulting in over $3.15 million in gross sales. Thakkar Decl., paras. 5-6, November
12, 2018 Response to Office Action TSDR 38. However, the record lacks the necessary
information and context to credit Applicant’s marketing and promotional expenses
under the third factor with much probative value, because we have no sense of the
manner of advertising or the extent of consumer exposure to the marketing and
promotions. Under the fourth factor, while Applicant’s sales suggest that it has
achieved some success in the industry, Mr. Thakkar’s declaration does not include
any context on the industry, or even the number of Applicant’s customers, so that the
evidence under this factor does not convince us that the sales figure translates to
consumer recognition of this at best highly descriptive mark. See In re Bos. Beer Co.
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L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir 1999) (claim based on annual sales
under the mark of approximately 85 million dollars, and annual advertising
expenditures in excess of ten million dollars, not sufficient to establish acquired
distinctiveness in view of highly descriptive nature of the mark); In re Melville Corp.,
228 USPQ 970, 972 (TTAB 1986) (affirming the rejection of Section 2(f) claim, despite
substantial advertising and revenue figures, given “the absence of any direct evidence
that the purchasing public has come to recognize applicant’s slogan as a term
identifying applicant’s services”).
Applicant does not discuss factor six (unsolicited media coverage of the product
embodying the mark) in the context of acquired distinctiveness, but we note Applicant
made of record screen shots of two YouTube videos that mention Applicant’s product
and mark. See Thakkar Decl., Ex. D, November 12, 2018 Response to Office Action
TSDR 114-15. The first video appears to discuss Applicant’s product as a review after
it was purchased on Amazon, and the second video appears to mention Applicant’s
product among seven other crushers. Applicant provided no context for these videos
or the extent of consumer exposure within the industry. We do not consider this the
type of unsolicited media coverage that would support widespread consumer exposure
to THE CRUSHER as a source indicator for Applicant.
Considering the evidence of acquired distinctiveness as a whole and weighing it
together, we find that Applicant has failed to meet its burden to show that consumers
would recognize the proposed highly descriptive mark as a source indicator.
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IV. Decision
We affirm the refusal to register Applicant’s proposed mark on the ground that it
is a generic designation of the identified goods, and in the alternative, we affirm the
refusal to register on the ground that the mark is merely descriptive and without
acquired distinctiveness.