Dipyourcar.com LLC

Trademark Trial and Appeal Board

Nov 25, 2015

No. 86306692 (T.T.A.B. Nov. 25, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dipyourcar.com LLC
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Serial No. 86306692
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Matthew H. Swyers of The Trademark Company for Dipyourcar.com LLC.

Katherine Weigle, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Kuhlke, Cataldo and Lykos, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Dipyourcar.com (Applicant) seeks registration on the Principal Register of the
standard character mark DIP COAT for “Automotive paints; Clear coating
protectant for vehicles; Coating composition in the nature of paint for industrial
applications; Coating preparations having water repellent properties; Paint sealant
for exterior surfaces of vehicle; Paint sealers; Paints and lacquers; Paints for
automotive finishes,” in International Class 2.1

1 Application Serial No. 86306692, filed on June 11, 2014, based upon Applicant’s allegation
of first use and first use in commerce on June 1, 2014 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a).
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The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground that DIP COAT is merely descriptive of Applicant’s goods
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. We affirm the refusal to register.
Mere Descriptiveness
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Oppedahl &
Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting Estate
of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A mark is merely
descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the mark.”)). See also In re
TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The
determination of whether a mark is merely descriptive must be made “in relation to
the goods [or services] for which registration is sought, the context in which it is
being used, and the possible significance that the term would have to the average
purchaser of the goods because of the manner of its use or intended use.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). It is not
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necessary, in order to find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use of the goods or services.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
nondescriptive meaning, or if the composite has a bizarre or incongruous meaning
as applied to the goods or services. See generally In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968). See also In re Shutts, 217 USPQ 363, 364-65
(TTAB 1983).
Evidence and Argument
In support of her position that the term DIP COAT is merely descriptive of the
applied-for goods, the Examining Attorney submitted evidence pertaining to the
meaning of the individual terms and Applicant’s and third parties’ use of these
terms. The evidence falls into three categories: (1) third-party websites showing
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merely descriptive use of the word DIP; (2) Applicant’s website and specimen of use;
and (3) third-party registrations for similar goods where the word COAT is
disclaimed.
The Examining Attorney contends that the “term ‘DIP’ merely describes the type
of paint that the goods are used in connection with, as well as the manner in which
the goods are applied to automobiles.” 6 TTABVUE 4. She points to Applicant’s
specimen of use consisting of a label on a container indicating the goods are for use
“after dipping” as shown below:

Applicant’s website includes the following descriptions: “Protects Dipped
Surfaces,” “Creates a smoother, slicker, less rubbery feel of dipped surfaces,”
“enhances colors and pearl finishes of dipped surfaces,” “Protects dip from staining,”
“Makes dipped surfaces easier to wash” and “More coats of new dip can be applied
over previously Dip Coated surfaces” as shown below:2

2 February 5, 2015 Office Action, TSDR pp. 3-4.
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Excerpts from the third-party websites submitted by the Examining Attorney
are set forth below.
The Plastidip website shown below includes the following text:3
From little trim pieces and a set of rims, to fully dipped
vehicles; here at Auto Armor we dip it all… How long will
it take for a full dip to be completed? We have a 24-48
hour turnaround time on most vehicle dips. … A lot of
customers actually dip their wheels and cars specifically
to protect the original surfaces from the winter season.

The Metalworks website shown below responds to the question of whether “paint
won’t stick after dipping” and explains that “All wood needs to be removed from
parts before dipping”:4

3 September 3, 2014 Office Action, TSDR p. 2-3.
4 September 3, 2014 Office Action, TSDR pp. 5-9.
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The Dip N Go Autocolor website describes itself as the “Longest Running Dip
Shop!” and the “oldest and most qualfied Dip Specialists,” offering services for “Full
vehicle Dips, Wheel Dips” and advertising “DuraDip Dip Enhancers”:5

The Examining Attorney also points to Applicant’s co-pending applications
wherein Applicant disclaimed the term DIP in the mark DIP ARMOUR for similar

5 September 3, 2014 Office Action, TSDR pp. 13-14.
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goods6 and the Board upheld the refusal based on mere descriptiveness of
Applicant’s proposed mark DIP PEARLS.7
With regard to the word COAT the Examining Attorney relies on the following
dictionary definitions:8
Coat: a layer that covers or conceals a surface;
Coating: a layer or film spread over a surface for
protection or decoration.
Based on these definitions she concludes that the “term ‘coat’ therefore merely
describes the nature of the goods identified in the application as a ‘coating.’” 6
TTABVUE 6. As to the mark in its entirety she contends that “use of the terms
together does not create a unitary mark with a separate, nondescriptive meaning.
The combined terms DIP COAT immediately provide potential consumers with the
knowledge that applicant’s goods are coatings for dip paint applications.” 6
TTABVUE 7.

6 App. Serial No. 86325822 for the mark DIP ARMOR for coating protectant DIP
disclaimed. February 5, 2015 Office Action, TSDR p. 24.
7 Application Serial No. 86165003, July 23, 2015 Board decision.
8 September 3, 2014 Office Action, TSDR p. 28. These definitions are retrieved from the
COLLINS ENGLISH DICTIONARY and not from the COLLINS AMERICAN DICTIONARY, and
therefore are of limited probative value. However, we take judicial notice of the following
definitions of the words “coat” and “coating” from www.dictionary.com based on the
RANDOM HOUSE DICTIONARY (2015):
coat 3. a layer of anything that covers a surface: That wall
needs another coat of paint.;
coating 1. A layer of any substance spread over a surface.
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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Applicant asserts that “there is no instantaneous connection as to the nature of
the goods provided by the Applicant.” 4 TTABVUE 12. However, this contention is
not made in connection with the goods, rather Applicant points to other meanings of
the word “dip” that would not be relevant in connection with Applicant’s paint
coating goods (e.g., “immersing a dog or sheep in a solution to destroy germs and
parasites.”9 In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. See also DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012).
Applicant also points to third-party registrations to support its contention that
the USPTO treats the words DIP and COAT as suggestive. We find that the third-
party registrations do not support Applicant’s position. First, as is well established,
we must make our decision in each case on its own merits “[e]ven if some prior
registrations had some characteristics similar to” the current application, “the
PTO’s allowance of such prior registrations does not bind the Board … .” In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Moreover,
many of the registrations upon which Applicant relies are registered on the
Supplemental Register (Reg. No. 4389865 for the mark RUBBER DIP for “a liquid
air dry coating applicable to tools and other articles made of wood, metal, glass,
rope, fabric and plastic to protect against chemicals, ultraviolet light, abrasion,
penetration, moisture, rust and corrosion”) or under Section 2(f) based on acquired
distinctiveness (Reg. No. 2108560 for the mark DIP SEAL for “clear and colored

9 January 14, 2015 Response to Office Action, TSDR p. 15.
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transparent hot metal plastics sealer coatings for application to hand and machine
tools to protect against corrosion, impact, abrasion, and chemical action”), or are
unitary marks where the terms are coupled with arguably distinctive matter (Reg.
No. 4055536 for the mark MYDIPKIT for “water transfer imaging kits featuring
chemical activator, base coat paint, primer, top coat, film, rubber gloves, mask, scuff
pad and instruction material”; Reg. No. 3870831 for the mark DIPSOL for “Metal
strippers; degreasing preparations not used in manufacturing processes for use on
metals; metal cleaners and rust removers all used for the treatment of metals”; Reg.
No. 4575666 for the mark FINALCOAT for “Paint sealants and clear coating
protectants for vehicles”; and Reg. No. 2091222 for the mark AUTOCOAT for “paint
for auto/motor vehicles”).10
By contrast, the third-party registrations submitted by the Examining Attorney
consistently disclaim the word “coat” in connection with similar goods. See, e.g., Reg.
No. 3580999 for the mark ARMOR COAT for a ceramic coating COAT disclaimed;
Reg. No. 4029342 for the mark DIGI COAT for pre-treatment coatings COAT
disclaimed; Reg. No. 4308451 for the mark FINALE ANTI-REFLECTIVE COAT for
protective coatings ANTI-REFLECTIVE COAT disclaimed; and Reg. No. 4473975
for the mark BEST COAT SETTING THE STANDARD IN COATING SOLUTIONS

10 January 14, 2015 Response to Office Action, TSDR pp. 16-22. We note Reg. No. 4578858
for the mark DURADIP was cancelled prior to submission of Applicant’s brief. Cancelled
registrations are of little probative value. In re Brown-Forman Corp., 81 USPQ2d 1284,
1286 n.3 (TTAB 2006). Moreover, this example falls into the category of marks that are
unitary and create a different commercial impression due to other matter in the mark.
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DURABLE FLEXIBLE GREEN and design for moisture barrier coating BEST
COAT and DURABLE FLEXIBEL GREEN disclaimed.11
Finally, Applicant contends that it is unlikely that any competitor would need
this phrase given other options such as “Plunge Coating, Drop Covering, Submerge
Surface, or Immerse Skin.” 14 TTABVUE 16. That other options are available does
not transform an otherwise merely descriptive term into a suggestive one. In
addition, there is nothing in the record to support the contention that these are, in
fact, alternative terms. Applicant also takes issue with the evidence of third-party
use asserting that it is “unauthorized use and potentially infringing upon
Applicant’s trademark and may soon have to answer to Applicant for these
transgressions.” Id. We have considered the examples of third-party use of the
words “dip” and “coat” to merely describe their respective goods and find them
probative. However, we underscore that while the presence of third-party use could
be probative on the question of competitive need, the absence thereof is not
dispositive. Even if Applicant may be the first and presently the only “authorized”
user of the term for such goods, this fact does not obviate a mere descriptiveness
refusal. In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB
1983).
Analysis
The record shows that in connection with car painting the term “DIP” means a
type of aftermarket automotive paint application. In addition, in connection with

11 February 5, 2015 Office Action, TSDR pp. 5, 7, 16, 18.
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coating COAT means a coating for vehicles and other applications. The combination
of these terms simply describes the type of coating i.e., one applied over dip. There
is nothing incongruous or unique to cause the consumer to exercise any imagination
when presented with the combination DIP COAT when purchasing coatings.
There is nothing in the record to support a finding that the combination does not
retain the same descriptive meaning when used in connection with coatings. We
conclude that the combination DIP COAT does not present a unique or incongruous
term such that the combination removes the merely descriptive significance from
the terms.
As noted above, Applicant’s arguments regarding the other meanings of the
words DIP and COAT do not take into account the perception of the consumer as to
meaning in the context of Applicant’s goods, i.e., what meaning is relevant to
coatings. In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012); In re Chopper
Indus., 222 USPQ 258, 259 (TTAB 1984). In our analysis of the proposed term, DIP
COAT, we must consider “the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” Chamber of Commerce of the U.S., 102
USPQ2d at 1219. Applicant’s broad identification encompasses coatings for use over
dip. Applicant’s website makes clear that a significant feature of its coating is that
is for “use after dipping.” See Chamber of Commerce of the U.S., 102 USPQ2d at
1219. See also In re Bayer Aktiengesellschaft, 82 USPQ2d at 1832 (Internet evidence
may be considered for purposes of evaluating a trademark).
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Where the combination of descriptive terms creates a unitary mark with a
unique, incongruous or otherwise non-descriptive meaning in relation to the goods,
the mark is registrable. Colonial Stores, Inc., 157 USPQ at 384. The term DIP
COAT does not evoke other meanings such that “the merely descriptive significance
of the term[s] is lost in the mark as a whole.” RiseSmart Inc., 104 USPQ2d at 1934
(quoting In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983)). See also In re Tower
Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) and In re Cryomedical Sciences
Inc., 32 USPQ2d 1377, 1379 (TTAB 1994). In the context of these goods,
“Automotive paints; Clear coating protectant for vehicles; Coating composition in
the nature of paint for industrial applications; Coating preparations having water
repellent properties; Paint sealant for exterior surfaces of vehicle; Paint sealers;
Paints and lacquers; Paints for automotive finishes,” the meaning of DIP COAT is
clear, a coating for use after dipping; there is no incongruity or double entendre.
Decision: The refusal to register Applicant’s mark DIP COAT as merely
descriptive under Section 2(e)(1) is affirmed.