Central Sprinkler Co.

Trademark Trial and Appeal Board

Oct 22, 1997

EX (T.T.A.B. Oct. 22, 1997)

Paper No. 18
TJQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 22, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Central Sprinkler Company
________
Serial No. 74/505,190
_______
Roberta Jacobs-Meadway, Jay K. Meadway and Michael L.
Lovitz of Panitch Schwarze Jacobs & Nadel for applicant.
Conrad W. Wong, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Central Sprinkler
Company to register on the Supplemental Register the mark
ATTIC for “automatic sprinklers for fire protection.”1
The Trademark Examining Attorney has refused
registration on the Supplemental Register on the ground

1 Application Serial No. 74/505,190, filed March 25, 1994,
alleging a bona fide intention to use the mark in commerce.
Applicant subsequently submitted an amendment to allege use which
Ser No. 74/505,190
2
that the matter sought to be registered is generic, and
thus incapable of distinguishing applicant’s goods from the
goods of others.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs.2
The issue on appeal is whether the term ATTIC is
generic, merely descriptive, or just suggestive when
applied to applicant’s automatic sprinklers for fire
protection.3 In urging that the refusal be reversed,

sets forth a date of first use of September 21, 1994, and a date
of first use in interstate commerce of October 27, 1994.
2 Attached to applicant’s appeal brief are additional third-party
registrations which previously had not been made of record. The
Examining Attorney, in his brief, objected to this new evidence.
The objection is well taken. Trademark Rule 2.142(d). Although
in its brief applicant suggested a suspension and remand to allow
the Examining Attorney to consider the additional registrations,
it is clear that this evidence could have been submitted much
earlier in the prosecution. Accordingly, the third-party
registrations attached to the brief are not of record and, thus,
have not been considered. The Board hastens to add that, in any
event, this evidence, even if considered, would not compel a
different result in this case.
3As a preliminary matter, we note that applicant, subsequent to
the amendment to the Supplemental Register, has, at times,
continued to argue that the mark is inherently distinctive
(conceding only suggestiveness) and, accordingly, is registrable
on the Principal Register. A review of the file shows that
applicant, in making the amendment to the Supplemental Register
in a response filed March 9, 1995, did not characterize or
otherwise indicate in any fashion that the amendment was an
alternative one. See: Trademark Manual of Examining Procedure,
§ 1212.02(c). In a response filed on November 24, 1995,
applicant again did not give any indication that the amendment to
the Supplemental Register was made only as an alternative in the
event that the mark was found not inherently distinctive. In
that response, applicant stated that “the only issue in the
instant case is whether ‘ATTIC’ is capable of identifying source
and distinguishing Applicant’s goods from those of others” (p.
2), and then went on to argue why the term is not generic. The
Ser No. 74/505,190
3
applicant argues that the Examining Attorney has not
sustained the Office’s burden of proof. Applicant’s
position is that the mark is not even merely descriptive,
let alone generic. Applicant contends that the category of
goods at issue here is “fire extinguishing equipment” or
“sprinklers for extinguishing fire”, and that there is no
evidence that the relevant public refers to this category
of goods as “ATTIC.” Applicant further contends that while
the term “attic” may be generic for a room directly beneath

Examining Attorney, in his final refusal dated February 21, 1996,
asserted that he “makes final the refusal to register the mark on
both the Principal and Supplemental Registers on the grounds that
the mark is descriptive of the goods, and generic so as to be
incapable of serving in a source recognition capacity.” The
Examining Attorney then issued a supplemental Office action,
attempting to clarify the statutory basis for refusal. It was
not until applicant’s request for reconsideration, filed on
December 6, 1996, that applicant stated, for what appears to be
the first time, that the amendment to the Supplemental Register
was made in the alternative. In that response, applicant argued
that the mark sought to be registered is not even merely
descriptive, let alone generic. In denying the request for
reconsideration, the Examining Attorney reiterated the refusal on
both registers. Applicant continued this tack in its appeal
brief, contending that the term ATTIC is only suggestive, but
going on to argue, in the alternative, that if the term were
found to be descriptive, the term is not generic and, therefore,
registrable on the Supplemental Register.
It is not at all clear that applicant’s amendment to the
Supplemental Register, filed March 9, 1995, was an alternative
one. In fact, the Board’s view is that the amendment was not,
and that it was only after the Examining Attorney refused
registration on both registers (for reasons unknown to the Board)
that applicant sought to argue in the alternative. Nonetheless,
in order to avoid any prejudice to applicant’s right to
registration, the Board will consider registrability on both the
Principal and Supplemental Registers. In the future, however,
Examining Attorneys are urged to follow the guidelines for
handling alternative amendments as set forth in Section
1212.02(c) of the Trademark Manual of Examining Procedure.
Ser No. 74/505,190
4
the roof of a house, the term is not generic for a
sprinkler that may be placed in an attic. According to
applicant, “the fact that Applicant’s sprinklers may be
used in attics does not, per se, establish genericy [sic]
of ‘ATTIC’ under the applicable authority”, citing to In re
Seats, Inc., 757 F.2d 274, 225 USPQ 364 (Fed. Cir. 1985),
and In re Sentry Chemical Co., 230 USPQ 556 (TTAB 1986).
In support of its arguments, applicant submitted the
following materials: a single page of printed literature
about applicant’s goods; a photocopy of one of applicant’s
sprinkler heads bearing the mark; third-party registrations
and excerpts from the Official Gazette; information
retrieved from the Internet; a declaration of George Meyer,
applicant’s president; and a declaration, with exhibits, of
a paralegal employed by the law firm representing applicant
in this appeal.
The Examining Attorney maintains that the matter
sought to be registered is generic, naming a category of
sprinklers that are used in attics. In support of the
refusal, the Examining Attorney submitted excerpts from
printed publications retrieved from the NEXIS database;
third-party registrations; and a dictionary listing of the
term “attic.” As a fallback position, the Examining
Attorney maintains that if ATTIC is not generic, then the
Ser No. 74/505,190
5
mark is at least merely descriptive and, thus, registrable
only on the Supplemental Register at this time.
With respect to genericness, the Office has the burden
of proving this refusal with “clear evidence” of
genericness. In re Merrill, Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Evidence of the relevant public’s perception of a term may
be acquired from any competent source, including
newspapers, magazines, dictionaries, catalogs and other
publications. In re Leatherman Tool Group, Inc., 32 USPQ2d
1443, 1449 (TTAB 1994), citing In re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir.
1985).
We now turn to look more specifically at the evidence
of record which, of course, governs our determination
herein. The dictionary definition of record shows that the
term “attic” means “a story or room directly beneath the
roof of a house.”
The Examining Attorney also introduced numerous
excerpts from printed publications retrieved from the NEXIS
database. The excerpts show that automatic sprinklers for
fire protection are used in attics. (See, for example:
“The village also will install a basic fire sprinkler pipe
and sprinklers in the attic....”; and “....the full
Ser No. 74/505,190
6
requirements of NFPA 13, which generally involve the use of
standard sprinklers in all attics....”) Further, the
National Fire Protection Association, Inc.’s “Standard for
the Installation of Sprinkler Systems” (1996 ed.) indicates
that “sprinklers....in an unventilated attic shall be of
the intermediate temperature classification.” This
publication goes on to set forth particular installation
concerns for sprinklers placed immediately below roofs. As
pointed out by applicant, none of the articles refers to
the sprinklers as “attic sprinklers.” Rather, the products
simply are called “sprinklers.”
The Examining Attorney’s evidence also includes four
third-party registrations of marks containing the word
“attic” for ventilators. In each instance, there is either
a disclaimer of the word “attic” or the mark issued on the
Supplemental Register.
The Examining Attorney further points to applicant’s
one page of informational literature that was submitted
pursuant to the Examining Attorney’s request. The page
addresses the sprinkler placement problems presented by
obstructions in attics, indicating that “[o]bstructions to
Attic Sprinklers differ from standard sprinklers and the
following criteria shall be used....There can be up to a 6
[inches] obstruction, measured vertically, as long as it is
Ser No. 74/505,190
7
36 [inches], measured vertically, below the Attic
Sprinkler.”
Applicant countered with evidence of its own,
including the declaration of its president. Mr. Meyer
asserts, in pertinent part, as follows:
I know of no company other than
[applicant] which uses ‘ATTIC’ as a
mark for sprinklers. The type of
sprinkler sold by [applicant] under the
‘ATTIC’ trademark is sold by others in
the industry [naming five others]. To
my knowledge, no company, other than
[applicant], uses ‘attic’ to identify
or describe any sprinkler product.
There is, in my opinion and experience,
no reason for any company to use
‘ATTIC’ to identify a sprinkler.
Also of record is the declaration of Dana Yost
Hartman, a paralegal at the law firm representing
applicant. Ms. Hartman asserts that she conducted a search
of the Thomas Register and that there are not any
businesses using the term “attic” for or in relation to
sprinklers. The search also revealed that only one
business used the term “attic” as part of its business name
(Hollywood Disappearing Attic Stair Co., Inc.).
Applicant submitted material retrieved from what looks
like the Internet Web page for the National Fire Sprinkler
Association. The material lists manufacturers which are
members of the association, including applicant. Applicant
Ser No. 74/505,190
8
relies on a listing, which appears at this Web site, of
products of one of its competitors (Reliable Automatic
Sprinkler Company), claiming that the material shows “that
terms other than ‘ATTIC’ are used for sprinkler products
similar to Applicant’s” and that, therefore, there is no
competitive need to use the term “attic” in the trade.
Applicant further submitted six third-party
registrations and two excerpts from the Official Gazette.
All of the referenced marks include a term (not disclaimed)
indicating a place in which the identified goods may be
used or situated (as, for example, CLOSET CADDY for a
hanging closet-storage device, and PATIO I for outdoor gas
grills). Applicant contends that the refusal to register
its mark is inconsistent with the Office’s practice
concerning similarly constructed marks.
The critical issue in genericness cases such as this
one is whether members of the relevant public primarily use
or understand the term sought to be registered to refer to
the genus (category or class) of goods in question. H.
Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). However, as the Board recently observed in In
re Boston Beer Co. L.P., 47 USPQ2d 1914, 1920 (TTAB 1998)
(citing to the H. Marvin Ginn Corp. case), “in most cases
Ser No. 74/505,190
9
involving trademarks, it is difficult to postulate a
general rule that will uniformly yield the correct result.”
The Board went on to state that “our determinations must be
made on a case-by-case basis in light of the particular
designation for which registration is sought and the record
in the application which is under consideration.” Id.
The broad general category of goods involved here is
sprinklers for fire protection. However, a product may be
in more than one category, and here applicant’s goods also
fall within the narrower category of sprinklers for fire
protection of attics. We find that the term “attic” would
be understood by the relevant public as referring to that
category of goods. Remington Products Inc. v. North
American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1449
(Fed. Cir. 1990).
In the present case, applicant readily admits that its
sprinklers may be used in the attic; but, according to
applicant, the sprinklers also may be used in other
locations. Aside from the fact that this statement is not
supported by any evidence of record, that applicant’s
sprinklers may be used in other locations of a structure
does not compel a different result here. The simple fact
is that the only evidence of record (that is, the one page
of product literature) relating to applicant’s particular
Ser No. 74/505,190
10
sprinklers indicates that the sprinklers at issue are for
placement and use in one place, that is, in the attic.
Neither applicant’s literature nor the specimen indicates
that the sprinklers are used anywhere else other than in an
attic. Indeed, it seems rather odd, at least to us, that a
sprinkler marketed under the term ATTIC would be purchased
for placement in a kitchen or bedroom. Upon encountering
the term ATTIC for sprinklers, the relevant public surely
would understand the term primarily to refer to a sprinkler
for the attic, that is, an “attic sprinkler.”
The third-party registrations submitted by applicant
and the Examining Attorney are of limited relevance. Each
case must be decided on its own set of facts, and the
referenced marks are different from the one involved here
and, moreover, cover goods different from sprinklers. We
are not privy to the records of the prior registrations
and, in any event, the instant record contains sufficient
evidence to support a finding of genericness.
In reaching our decision, we cannot overlook how the
relevant public will encounter the matter sought to be
registered. Applicant’s specimen, which is a label, is
reproduced below.
Ser No. 74/505,190
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Such use of ATTIC, at least to our eyes, is more in the
nature of a type of sprinkler than of a source identifier.
Further, the one page of applicant’s literature is
reproduced below.
Ser No. 74/505,190
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The specimen and product literature present here serve
to distinguish this case from the one heavily relied upon
by applicant, In re Sentry Chemical Co., supra [HOSPICE for
an odor neutralizing spray held not merely descriptive].
In that case, the Board made a point that there was no
reference to the word “hospice” in either the specimens of
record or the product literature. Here, however, both the
specimens and the product literature would seem to
indicate, as shown above, that applicant’s particular
sprinklers are designed for use in attics.
Ser No. 74/505,190
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Also, as shown in the product literature, the term
“attic” appears twice, once in “Attic Sprinklers” and the
other in “the Attic Sprinkler.” Certainly, under the type
of analysis in which the Court engaged in the case of In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987) [the term SCREENWIPE is generic for pre-moistened,
anti-static cloth for cleaning computer and television
screens], the term “attic sprinkler” for sprinklers used in
an attic would be generic. That is to say, the separate
words “attic” and “sprinkler” joined to form a compound
“attic sprinkler” have a meaning identical to the meaning
common usage would ascribe to those words as a compound.
The fact that applicant has chosen to not include the term
“sprinkler" in the mark sought to be registered should not
lead to the registrability of ATTIC standing alone. The
simple fact is that ATTIC, when applied to sprinklers for
use in an attic, “immediately and unequivocally describes
the purpose, function and nature of the goods.” In re
Gould Paper Corp., supra at 1112.
In reaching our decision, we readily acknowledge the
sometimes-used distinction that generic names are nouns and
descriptive terms are adjectives. 2 J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 12:10 (4th
ed. 1997) [“A rule of thumb sometimes forwarded as
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distinguishing a generic name from a descriptive term is
that generic names are nouns and descriptive terms are
adjectives. However, this “part of speech” test does not
accurately describe the case law results.”]. Here, we
recognize that applicant’s mark does not present the
classic case of a generic noun, but rather a generic
adjective. In this case, because the term ATTIC directly
names the most important or central aspect or purpose of
applicant’s goods, that is, that the sprinklers are used in
attics, this term is generic and should be freely available
for use by competitors. See: In re Northland Aluminum
Products, Inc., supra [BUNDT for coffee cake held generic];
In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970)
[CUSTOMBLENDED for gasoline held generic because category
of gasoline was blended personally for the motorist]; In re
Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA
1969) [PASTEURIZED for face cream held generic]; In re
Preformed Line Products Co., 323 F.2d 1007, 139 USPQ 271
(CCPA 1963) [PREFORMED for preformed electrical equipment
held generic]; Roselux Chemical Co., Inc. v. Parsons
Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (CCPA 1962)
[SUDSY for aqua ammonia containing a synthetic detergent
held generic]; Servo Corp. of America v. Servo-Tek Products
Co., 289 F.2d 955, 129 USPQ 352 (CCPA 1961) [SERVO for
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servomechanisms held generic]; J. Kohnstam, Ltd. v. Louis
Mark & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960)
[MATCHBOX for toy vehicles held generic because that
category of toy cars was sold in matchbox-sized boxes]; In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991)
[MULTI-VIS for multiple viscosity motor oil held generic];
In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389
(TTAB 1991) [PERMA PRESS for soil and stain removers held
generic]; In re National Patent Development Corp., 231 USPQ
823 (TTAB 1986) [ULTRA PURE for biological interferons for
medical use held generic]; Fluid Energy Processing &
Equipment Co. v. Fluid Energy, Inc., 212 USPQ 28 (TTAB
1981) [FLUID ENERGY for hydraulic/pneumatic equipment held
generic]; Copperweld Corp. v. Arcair Co., 200 USPQ 470
(TTAB 1978) [COPPERCLAD for copper-coated carbon electrodes
held generic]; In re Demos, 172 USPQ 408 (TTAB 1971)
[CHAMPAGNE for salad dressing held unregistrable]; and
Ethicon, Inc. v. Deknatel, Inc., 183 USPQ 503 (TTAB 1963)
[COTTONY for sutures held generic].
We agree with the Examining Attorney that if a
purchaser were seeking to buy sprinklers for an attic, it
would be reasonable to refer to such products as “attic”
sprinklers. The fact that applicant may be the first or
the only one using ATTIC in connection with sprinklers is
Ser No. 74/505,190
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not dispositive. Southwire Co. v. Kaiser Aluminum &
Chemical Corp., 196 USPQ 566, 572 (TTAB 1977).
Accordingly, we find that the asserted mark is generic
and, thus, not registrable on the Supplemental Register.
For the sake of completeness, and to avoid any
possible prejudice to applicant, we now turn to the issue
of mere descriptivenss. (see n. 3, supra) As often
stated, genericness is the ultimate in descriptiveness. H.
Marvin Ginn Corp., supra at 530. But in the event that our
finding of genericness is reversed in any appeal, we offer
our view on the issue of mere descriptiveness of
applicant’s mark.
Applicant argues that the asserted mark just suggests
that its sprinklers “are intended for installation above a
living or work space, but below the roof.” We are not
persuaded by this argument. We have no doubt that the mark
ATTIC is merely descriptive when applied to automatic
sprinklers for fire protection. That is to say, we find
that the mark ATTIC immediately describes a significant
characteristic of the goods, that is, that the sprinklers
are for use in attics. In re Abcor Development Corp., 616
F.2d 525, 200 USPQ 215 (CCPA 1978).
Ser No. 74/505,190
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Decision: The refusal to register is affirmed.
R. L. Simms
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/505,190
18