David A. Hatch and James Hickey

Trademark Trial and Appeal Board

Jun 12, 2009

No. 76681358 (T.T.A.B. Jun. 12, 2009)

Mailed:
June 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re David A. Hatch and James Hickey
________

Serial No. 76681358
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William Nitkin, Esq. for David A. Hatch and James Hickey

Hannah M. Fisher, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney)
_______

Before Seeherman, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

David A. Hatch and James Hickey, a Massachusetts
partnership (hereafter “applicants”) have appealed from the
final refusal of the Trademark Examining Attorney to
register NOZZLE-LOK in standard character format as a
trademark for “a portable plastic gasoline container.”1
Registration has been refused pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground

1 Application Serial No. 76681358, filed August 31, 2007, based
on Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-
to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76681358
2
that applicant’s mark is merely descriptive of the
identified goods.
We must first clarify a procedural point. In their
appeal brief applicants have noted that in the final Office
action the examining attorney presented a different reason
for asserting that their mark was merely descriptive from
that given in the first Office action, and she also
submitted additional evidence with the final action.
Applicants claim that this is a “new ground of refusal …
that was not raised before and one which the Applicants
have not had the opportunity to address.” Brief, p. 2.
An examining attorney may not issue a final Office
action until all requirements and grounds for refusal have
been previously raised, so that an applicant has been given
an opportunity to respond. See Trademark Rule 2.64(a).
However, in this case the examining attorney properly
complied with this requirement. The examining attorney did
not raise a new ground of refusal in the final Office
action. In both the initial and final Office actions the
examining attorney has refused registration on the same
ground, namely, that applicants’ mark is merely
descriptive. It is true that, because the examining
attorney learned more about the nature of applicants’ goods
and such goods in general between the time she issued the
Ser No. 76681358
3
first and the final Office actions, her reasoning for
finding the mark to be descriptive changed. However, this
does not constitute a new ground for refusal. As to
applicants’ argument that they “have had no opportunity to
refute this new, inaccurate claim of how Applicants’ can
works as well as the relevance of the applicability of this
purported evidence,” brief, p. 1, this is also incorrect.
As the examining attorney pointed out in her brief,
applicants could have filed a request for reconsideration
within six months of the issuance of the final Office
action in which they could have submitted additional
arguments or evidence. See Trademark Rule 2.64(b) (“During
the period between a final action and expiration of the
time for filing an appeal, the applicant may request the
examiner to reconsider the final action”). Applicants may
submit a request for reconsideration as a matter of right,
whether or not they also file a notice of appeal. If
applicants had filed a request for reconsideration with
their notice of appeal, or had a request for
reconsideration pending at the time they filed their notice
of appeal, the Board would have suspended proceedings in
the appeal and remanded the application to the examining
attorney to consider that submission. See TBMP §1204 (2d
ed. rev. 2004).
Ser No. 76681358
4
Accordingly, to the extent applicants suggest in their
appeal brief that they should be afforded an opportunity to
present further evidence, such a request is denied.
We now consider the substantive ground for refusal,
namely, that applicants’ mark is descriptive of their
identified goods.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
Ser No. 76681358
5
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
It is the examining attorney’s position, as set forth
in her appeal brief, that NOZZLE-LOK is a misspelling of
and would be recognized as “nozzle lock”; that portable
plastic gasoline containers such as those identified in the
application include an attached nozzle that facilitates
transfer of gasoline from the container to another
receptacle; and that such nozzles may feature a locking
mechanism to aid in storing and transporting gasoline, to
prevent spillage, and to prevent children from accessing
the gasoline. In support of her position the examining
attorney points to applicants’ statement, in their response
to the first Office action, that their gasoline container
“will have a nozzle,” and to website evidence of third-
party gasoline containers in which a “child proof nozzle
lock” is advertised as a feature of the product.
Applicants have not disputed that NOZZLE-LOK will be
perceived as the equivalent of “nozzle lock” or that these
words are descriptive of gasoline containers. “Applicants
wish to point out that while the words NOZZLE and LOCK may
Ser No. 76681358
6
be descriptive of the structure of such third party
goods….” Brief, p. 1. Rather, in their appeal brief
applicants have argued that the examining attorney’s
arguments represent a new ground of refusal, a point that
we have already addressed. Applicants have also stated in
their appeal brief that their nozzle does not lock, and
that NOZZLE-LOK therefore only suggests “the sealing nature
of the internal valve that Applicants will be utilizing in
their nozzle.” Applicants also claim that LOK “is merely
suggestive of a securely closed valve inside the nozzle
which is generally not referred to as a lock.” Brief, p.
2.
Applicants’ assertions, made for the first time in
their appeal brief, cannot substitute for evidence. As
noted above, if applicant wanted to submit evidence on the
meaning of the word “lock,” or information on the nature of
their particular goods, they could have done so by filing a
request for reconsideration. They chose not to do so, and
cannot now rely on information that is not in the record.2
Accordingly, we must consider whether the mark is merely
descriptive of the goods as they are identified in the

2 If applicants had timely submitted during prosecution
information or evidence as to the nature of their particular
goods, the examining attorney may well have refused registration
on the alternative ground that the mark is deceptively
misdescriptive of the goods.
Ser No. 76681358
7
application, not as they are characterized by applicants in
their brief.
First, we agree with the examining attorney that the
misspelling of LOK or the hyphenating of the mark does not
change the commercial impression. The mark will be
perceived as NOZZLE LOCK. See Armstrong Paint & Varnish
Works v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU-ENAMEL;
NU found equivalent of “new”); In re Quik-Print Copy Shops,
616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT
held descriptive; “There is no legally significant
difference here between ‘quik’ and ‘quick’”); In re Organik
Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997)
(“ORGANIK, which is the phonetic equivalent of the term
‘organic,’ is deceptive”); and Hi-Shear Corp. v. National
Automotive Parts Association, 152 USPQ 341, 343 (TTAB 1966)
(HI-TORQUE “is the phonetic equivalent of the words ‘HIGH
TORQUE’”).
Second, the evidence submitted by the examining
attorney shows that nozzle locks are significant features
of gasoline containers. As a result, consumers who view
NOZZLE-LOK in connection with a portable plastic gasoline
container will immediately and directly understand this
term to describe a feature of the goods. We would add that
even if we were to accept applicant’s assertion that “the
Ser No. 76681358
8
nozzle on their gasoline container is very different from
prior art gasoline container nozzles,” reply brief, p.1,
consumers would still understand that the container has a
nozzle that seals or locks. Therefore, the mark is merely
descriptive of the identified goods.
Decision: The refusal of registration is affirmed.