Brownfield Realty, Ltd.

Trademark Trial and Appeal Board

Jun 25, 2002

No. 75191100 (T.T.A.B. Jun. 25, 2002)

Mailed: June 25, 2002
Paper No. 23
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brownfield Realty, Ltd.
________

Serial No. 75/191,100
_______

Joseph M. Konieczny of Harding, Earley, Follmer & Frailey
for Brownfield Realty, Ltd.

Naakwama S. Ankrah,1 Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
_______

Before Cissel, Seeherman and Hanak, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Brownfield Realty, Ltd. has appealed from the final
refusal of the Trademark Examining Attorney to register
BROWNFIELD REALTY LTD and design, as shown below, for the
following services:
Real estate services, namely, the
acquisition, investment, leasing,
ownership, management, and disposition
of environmentally-impaired real estate
and debt instruments secured by
environmentally-impaired real estate
(Class 36);

1 This Examining Attorney wrote the brief on appeal. A
different Examining Attorney examined the application.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/191,100
2
Environmental remediation, namely,
soil, waste and/or water treatment
services (Class 40); and

Environmental management, namely,
hazardous waste management;
environmental due diligence, namely,
reviewing standards and practices to
assure compliance with environmental
laws and regulations (Class 42).

The stippling shown around the circumference of the design
element is a feature of the mark; the upper portion of the
circle is lined for the color orange, and the lower portion
of the circle is black.
Applicant has disclaimed exclusive rights to the term
LTD., but otherwise seeks registration of this mark on the
Principal Register without a disclaimer of the words
BROWNFIELD REALTY. Applicant asserts that these words are
inherently distinctive, and in the alternative, claims that
the words have become distinctive as provided by Section
2(f) of the Act. As a further alternative claim, applicant
seeks registration on the Supplemental Register without a
disclaimer of the words BROWNFIELD REALTY.
Ser No. 75/191,100
3
The prosecution history of this application is
somewhat convoluted. When applicant originally applied to
register its mark on the Principal Register, the Examining
Attorney required that the words BROWNFIELD REALTY LTD. be
disclaimed on the ground that they are merely descriptive
of applicant’s services. Applicant then offered a
disclaimer of the words, but amended the application to the
Supplemental Register. The Examining Attorney required
applicant to amend the registration from the Supplemental
Register to the Principal Register, stating that because
the mark was eligible for registration on the Principal
Register, it could not be registered on the Supplemental
Register (in effect, refusing registration on the
Supplemental Register). Applicant then withdrew the
disclaimer of BROWNFEILD REALTY LTD., explaining that the
offer of the disclaimer was inadvertent, and maintained its
request for registration on the Supplemental Register. The
Examining Attorney then issued an Office action making
final the requirement to amend the application to the
Principal Register and to disclaim the words BROWNFIELD
REALTY LTD. Applicant then filed a request for
reconsideration in which it disclaimed the term LTD.,
argued that BROWNFIELD REALTY is not merely descriptive of
applicant’s services and, in the alternative, that the
Ser No. 75/191,100
4
wording BROWNFIELD REALTY has acquired distinctiveness.
The Examining Attorney was not persuaded by the claim of
either inherent or acquired distinctiveness, and the
requirement for a disclaimer of BROWNFIELD REALTY was
eventually made final.
In the communications regarding the alternative claim
of acquired distinctiveness, neither applicant nor the
Examining Attorney made any reference to applicant’s
previous amendment to the Supplemental Register, and it
appeared that applicant had tacitly withdrawn the amendment
to the Supplemental Register since applicant’s claims of
inherent and acquired distinctiveness of BROWNFIELD REALTY
are obviously at odds with its seeking registration on the
Supplemental Register. However, in applicant’s appeal
brief it indicates that it still seeks registration on the
Supplemental Register in the alternative, and the Examining
Attorney has discussed this issue in his brief.
The issues before us, then, are whether the words
BROWNFIELD REALTY in applicant’s mark are merely
descriptive of its services and must be disclaimed, or, in
the alternative, whether these words have acquired
distinctiveness, or, in the alternative, whether
applicant’s mark is registrable on the Supplemental
Register without a disclaimer of these words.
Ser No. 75/191,100
5
The appeal has been fully briefed,2 but an oral hearing
was not requested.
The key question in this appeal is whether BROWNFIELD
REALTY is merely descriptive of applicant’s identified
services, and therefore must be disclaimed pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. 1056(a). That
section provides, in part, that the Director may require
the applicant to disclaim an unregistrable component of a
mark otherwise registrable. It is the Examining Attorney’s
position that the term is merely descriptive (and therefore
unregistrable) because when “brownfield”--property with
environmental cleanup obstacles--and “realty”--real estate-
-combine to form BROWNFIELD REALTY the resulting term is
highly descriptive of applicant’s services. In support of
this position the Examining Attorney has submitted a number
of excerpts of articles from the NEXIS database, including
the following:3
Salt Lake City received a $150,000
grant to boost its brownfield

2 With its reply brief applicant has submitted a listing (42
applications and 8 registrations) of marks which include the word
REALTY. This list is manifestly untimely and has not been
considered. See Trademark Rule 2.142(d).
3 In reaching our decision herein we have not relied on the wire
service reports submitted by the Examining Attorney because it is
not clear whether they were used in articles that had public
circulation. For similar reasons, we have not considered the
articles taken from foreign papers. Even without these articles
though, there are dozens of articles of record taken from papers
in circulation in the United States.
Ser No. 75/191,100
6
restoration work and $50,000 to
preserve green space.
“The Salt Lake Tribune,” April 16, 2000

...awarded Las Vegas another grant,
this time for $100,000, to begin the
process of cleaning up more so-called
brownfield sites.
Brownfields are industrial or
commercial sites that are not
contaminated to the extent that they
qualify for cleanup as a Superfund
site, but...
...Last year, the 4-acre armory site,
tainted by hazardous waste and
petroleum by-products, was the nation’s
first brownfield site to be restored
under the EPA revolving loan fund.
“Las Vegas Review-Journal,” April 15,
2000

The Environmental Protection Agency
awarded a $200,000 grant to the
Downriver Community Conference Thursday
to support brownfield redevelopment and
greenspace initiatives. The conference
can use $150,000 to fund its program to
develop under-used industrial and
commercial facilities.
“The Detroit News,” April 14, 2000

The General Assembly has passed so-
called brownfield legislation, which
allows businesses to develop abandoned
sites with environmental problems and
clean them up, without incurring any
future liability.
“The Post and Courier” (Charleston,
SC), April 14, 2000

...funds to study possible
contamination at the former Connecticut
Foundry Co. site.
The town may apply for a Brownfields
grant from the federal Environmental
Protection Agency, Mayor Donald Unwin
said Friday.
Ser No. 75/191,100
7
“The Hartford Courant,” February 15,
1997

...Gov. Tommy Thompson’s proposal for
the 1997-’99 budget includes $20
million in grants to help clean
environmentally contaminated
properties, known as brownfields.
“Milwaukee Journal Sentinel,” February
14, 1997

The Lautenberg bill, named the
“Brownfields and Environmental Cleanup
Act of 1997,” and the Republican
brownfields initiative would boost
environmental audits, site
characterization and remediation
activity at contaminated industrial
sites around the country.
“Real Estate/Environmental Liability
News,” February 7, 1997

Headline: Brownfields bill to help
reuse old industrial sites; Delayed
city project shows cleanup issues
Text: Nationwide, with encouragement
from the Environmental Protection
Agency, brownfields programs have taken
off. Thirty-one states have enacted
voluntary cleanup programs, the EPA
says.
“The Sun” (Baltimore), February 2, 1997

The term “brownfields” is defined by
the state [Maryland] Department of the
Environment as “abandoned or
underutilized industrial or commercial
properties that face environmental
cleanup obstacles that would prevent
their redevelopment and reuse.”
“The Baltimore Sun,” January 27, 1997

The Examining Attorney has also made of record
printouts from the United States Environmental Protection
Agency website which devotes entire sections to
Ser No. 75/191,100
8
brownfields, with captions such as “About Brownfields,”
“Brownfields Projects and Initiatives” and “Other Sources
of Information on Brownfields.”
In addition, the Examining Attorney points to
applicant’s own information, some of which was submitted by
applicant and some of which was taken from applicant’s
website and made of record by the Examining Attorney. This
material includes the following statements:
If you are faced with an
environmentally contaminated commercial
or industrial property (a
“brownfield”), but you’ve heard the
horror stories of dealing with the EPA
or state environmental enforcement
agencies, we can help.
***
What do we do? Brownfield Realty, Ltd.
will assume regulatory responsibility
for the environmentally compromised
property, provide funds for efficient
remediation, provide environmental
insurance and/or secure agency
approvals necessary to return the
property to profitability.

Does Brownfield Realty, Ltd. buy such
properties? YES! We actively seek out
properties which have existing
pollution either from on-site
activities or from adjacent properties.
www.brownfld.com

In addition, with his appeal brief the Examining
Attorney has submitted a dictionary definition of “realty”
Ser No. 75/191,100
9
as meaning “real estate.”4 We take judicial notice of this
definition.5
A mark is merely descriptive, and therefore prohibited
from registration under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods or services with which it is used. In re
Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It does not have
to describe every one of these, but it is sufficient to be
considered merely descriptive if it describes a single,
significant quality, feature, function, etc. In re Venture
Lending Associates¸226 USPQ 285 (TTAB 1985).
The evidence of record clearly shows that BROWNFIELD
is a recognized term for contaminated land, and that
applicant’s real estate, environmental remediation and
environmental management services all involve brownfield
sites. Thus, BROWNFIELD describes a significant
characteristic of applicant’s services. The term REALTY
also describes applicant’s services, in that applicant’s

4 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Ser No. 75/191,100
10
services involve real estate. When the words are combined
as BROWNFIELD REALTY or BROWNFIELD REALTY LTD. and used in
connection with applicant’s identified services, the
resulting terms immediately tell consumers, respectively,
that applicant provides its real estate, environmental
remediation and environmental management services for
contaminated land and that applicant is a company that
provides such services. As such, BROWNFIELD REALTY is not
inherently distinctive.
Applicant argues in its reply brief that the word
REALTY “suggests that applicant is a realtor, [sic] i.e.,
broker, of commercial or residential real estate,” p. 2,
but that applicant is not. However, whatever the word
REALTY may suggest to applicant, the clear meaning of the
word is “real estate,” and applicant itself has identified
its services as “real estate” services. Thus, we do not
accept applicant’s argument that REALTY is an inherently
distinctive term for applicant’s real estate services; on
the contrary, the term is generic for real estate services,
in the same way that “real estate” would be generic.
Applicant also points to the definition adopted by
Examining Attorney of the word “brownfield” as “abandoned
or underutilized industrial or commercial properties that
face environmental cleanup obstacles that would prevent
Ser No. 75/191,100
11
their redevelopment and reuse.” Applicant then
recharacterizes this definition as meaning
“environmentally-impaired real estate” and combines
applicant’s characterization of “brownfield” with the
definition of “realty” as meaning “real estate” to reach
the conclusion that BROWNFIELD REALTY would mean
“environmentally-impaired real estate real estate.”
Applicant contends that this combination of definitions is
redundant and nonsensical.
We are not persuaded by applicant’s semantic “logic”
that BROWNFIELD REALTY is inherently distinctive. Rather,
consumers will immediately understand that BROWNFIELD
REALTY refers to real estate that is environmentally
contaminated, and that when this term is used in connection
with applicant’s identified services, it describes a
characteristic of the services, namely that the services
involve such real estate.
This brings us to applicant’s first alternative
position, namely, that if BROWNFIELD REALTY is not
inherently distinctive, it has acquired distinctiveness.
In support of this position, applicant has submitted only a
declaration, dated October 18, 2000, attesting to
applicant’s substantially exclusive and continuous use in
commerce since as early as September 1996, in other words,
Ser No. 75/191,100
12
for not quite a four-year period. It is noted that in the
response accompanying this declaration applicant states
that it is claiming use in commerce for more than five
years, and therefore is entitled to the statutory
presumption of Section 2(f). That section provides that
“The Director may accept as prima facie evidence that the
mark has become distinctive, as used on or in connection
with the applicant’s goods in commerce, proof of
substantially 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.”
(emphasis added). Because applicant did not show use of
the mark for the five years prior to the filing of its
claim of acquired distinctiveness on October 23, 2000, it
is not entitled to rely on a mere declaration as prima
facie evidence of acquired distinctiveness.
Even if applicant had made the requisite five years
use, we would not have found the term BROWNFIELD REALTY to
have acquired distinctiveness. It is the applicant’s
burden to prove that its mark, or in this case the term
which for which a disclaimer has been required, has
acquired distinctiveness. The greater the descriptiveness
of the term, the greater the evidence necessary to prove
acquired distinctiveness. See Yamaha International Corp.
Ser No. 75/191,100
13
v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988). In view of the highly descriptive nature of
BROWNFIELD REALTY for applicant’s identified services, a
mere declaration of four (or even five) years of
substantially exclusive and continuous use of the mark in
commerce is insufficient to demonstrate that the term has
acquired distinctiveness.
This brings us to applicant’s second alternative
position, that its mark is registrable on the Supplemental
Register. The Examining Attorney has essentially refused
registration on this register (by requiring that applicant
amend its application to the Principal Register) because a
mark which is registrable on the Principle Register may not
be registered on the Supplemental Register. The Examining
Attorney asserts that, because applicant’s mark is
registrable on the Principal Register with a disclaimer of
BROWNFIELD REALTY LTD., it may not be registered on the
Supplemental Register.
The Examining Attorney has cited Section 1141.01 of
the Trademark Manual of Examining Procedure in support of
his position. That section states that “A mark which is
clearly eligible for the Principal Register may not be
registered on the Supplemental Register. An application
requesting registration of such a mark on the Supplemental
Ser No. 75/191,100
14
Register must be amended to the Principal Register, or
refused registration.” 6 We also note that Section 23 of
the Trademark Act, 15 U.S.C. 1092, states that “All marks
capable of distinguishing applicant’s goods or services and
not registrable on the principal register herein provided
...may be registered on the supplemental register....”
(emphasis added).
Although marks which are registrable on the Principal
Register may not be registered on the Supplemental
Register, the present case presents us with an odd
situation, in that the Examining Attorney is requiring
that, to be registrable on the Principle Register, all the
wording in the mark must be disclaimed. Essentially, the
Examining Attorney has found that the relatively minor
design element is enough to “carry” the mark and justify
its registration on the Principal Register, although the
dominant part of the mark is unregistrable.
We do not think this is a correct interpretation of
the statute or the Manual or the case law. The entire mark
applicant is seeking to register is clearly not registrable

6 This statement is taken from the edition of the Manual which
was in effect at the time the Examining Attorney’s brief was
filed. A third edition of the Manual has now been released, and
contains, in Section 815.01, essentially the same statement,
except that the citation to In re U.S. Catheter & Instrument
Corp., 158 USPQ 54 (TTAB 1968), has been deleted.

Ser No. 75/191,100
15
on the Principal Register; it is only if applicant
disclaims the dominant portion of the mark that it would be
considered registrable. To put it another way, the
Examining Attorney has found, and we agree, that the
dominant part of the mark, the words BROWNFIELD REALTY
LTD., is unregistrable on the Principal Register. In these
circumstances, we find that applicant’s mark is entitled to
registration on the Supplemental Register, despite the fact
that it would also be registrable on the Principal Register
with a disclaimer of all the wording.
However, even marks which are registrable on the
Supplemental Register may not contain generic terms unless
those terms have been disclaimed. See In re Carolyn's
Candies, Inc., 206 USPQ 356 (TTAB 1980) and cases cited
therein. The term REALTY in applicant’s mark is generic
for applicant’s real estate services. As noted previously,
REALTY is another word for “real estate,” and applicant’s
services in Class 36 are clearly identified as real estate
services. Accordingly, the refusal of registration must be
affirmed absent a disclaimer for this word. However,
because the word REALTY is generic only with respect to the
services in Class 36, applicant may obtain a registration
without a disclaimer if it divides the application to sever
Classes 40 and 42 from the Class 36 application.
Ser No. 75/191,100
16
Decision: The refusal to register the mark on the
Principal Register pursuant to Section 6 absent a
disclaimer of BROWNFIELD REALTY is affirmed because the
term is merely descriptive and has not acquired
distinctiveness is affirmed; the refusal to register the
mark on the Supplemental Register is also affirmed.
However, applicant is allowed 30 days in which to submit a
disclaimer of BROWNFIELD REALTY, in which case this
decision will be set aside, and the mark will proceed to
publication for registration on the Principal Register; or
applicant may submit a disclaimer of REALTY and the
application will proceed to registration on the
Supplemental Register; or applicant may submit a request to
divide the application, and enter a disclaimer of REALTY
with respect to the Class 36 application. In that event,
the application in Classes 40 and 42 will proceed to
registration on the Supplemental Register without
disclaimer and the application in Class 36 will proceed to
registration on the Supplemental Register with a disclaimer
of REALTY.