DJS Associates, Inc.

Trademark Trial and Appeal Board

Sep 28, 1998

EX (T.T.A.B. Sep. 28, 1998)

Paper No. 22
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB 9/28/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DJS Associates, Inc.
________
Serial Nos. 74/265,139;
74/802,305; and 75/975,964
_______
Charles N. Quinn of Dann, Dorfman, Herrell and Skillman,
P.C. for applicant.
Steven Fine, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Cissel, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
DJS Associates, Inc. has filed applications to
register the mark FORENSIC ENGINEERING SERVICES for
“accident investigations; and expert witnesses respecting
highway, traffic and transportation safety” (Serial No.
74/265,139), for “highway safety testing and consultation;
Ser No. 265139
2
traffic and transportation engineering services” (Serial
No. 74/802,305) and for “providing seminars and lectures in
the field of highway, traffic and transportation safety”
(Serial No. 75/975,964).1
Registration has been finally refused on the grounds
that the matter sought to registered is generic and thus
incapable of registration under Section 2(f), 15 U.S.C. §
1052(f), of the Trademark Act.2

1 All of the services were initially set forth in S.N. 74/265,139
and the final refusal was issued with respect to all. After
filing an appeal, applicant requested first one and then a second
division, resulting in the two “child” applications, S.N.
74/802,305 and S.N. 75/975,964. Applicant also submitted two
declarations under Section 2(f), which together covered all the
services, and a disclaimer of the term “Services” with respect to
the services specified in S.N. 75/975,964. In each instance, the
application was remanded to the Examining Attorney for
reconsideration, but the refusal was continued. Inasmuch as the
applications involve common issues of law and fact, the cases
have been consolidated and we consider the appeal, which in fact
is directed to all three applications, in this one opinion.
2 While the Examining Attorney has set forth the refusal in his
brief in terms of Sections 1, 2, and 45 of the Trademark Act, in
the final refusal, and the continuations thereof, he followed the
alternative approach to genericness, namely, that FORENSIC
ENGINEERING SERVICES is the ultimate in descriptiveness, as the
name of the services, under Section 2(e)(1), 15 U.S.C. §
1052(e)(1), and thus incapable of acquiring distinctiveness under
Section 2(f), 15 U.S.C. § 1052(f). We have chosen to take the
latter approach, although the factual analysis is the same for
either. See In re Northland Aluminum Products, Inc., 777 F.2d
1556, 227 USPQ 961 (Fed. Cir. 1985).
Ser No. 265139
3
Applicant and the Examining Attorney have filed
briefs,3 but no oral hearing was requested.4
The Examining Attorney initially supported his refusal
to register applicant’s mark on the basis of genericness
with a sampling of twenty-five of the seventy articles
found on the Nexis database referring to “forensic
engineering.” The articles illustrate specific services
encompassed by “forensic engineering,” such as the
investigation of building collapses, water line ruptures,
automobile defects, and bridge collapses, as well as
describe “forensic engineering” in more general terms, such
as “failure analysis in automobile accidents, fires and
explosions, structural evaluations and blasting-related
problems.” (The Kansas City Star, Aug. 25, 1992). In the

3 In view of their untimely submission, no consideration has been
given to the third-party registrations and application introduced
by the Examining Attorney in his appeal brief. Trademark Rule
2.142(d).
4 In view of the remands to the Examining Attorney, as well as
confusion as to the date for filing the brief, applicant has
filed three briefs, all of which have been taken under
consideration. While the Board agrees with applicant that the
last action issued by the Examining Attorney should have
indicated that the services under consideration were at that
point the subject of S. N. 75/975,964 and not 74/802,305, we see
no basis for the argument that this action should have issued as
a first action in the newly created divisional application. Both
divisional applications were created, at applicant’s request,
after the issuance of a final refusal of the parent application,
and thus registration of applicant’s mark for all of the
services, regardless of their later division to separate
applications, had been finally refused.
Ser No. 265139
4
first continuation of the final refusal, the Examining
Attorney supplemented his evidence with additional excerpts
from the Nexis database, one of which specifically
describes the use of analysis by forensic engineers as the
basis for recommendations to “enhance safety on highways.”
(Canadian Occupational Health & Safety News, May 29, 1995).
Another article speaks of the appearance of forensic
engineers as “expert witnesses in court trials to explain
technical issues and offer explanations, based on sound
scientific investigation… .” (Evansville Business Journal,
July 1994). In the second continuation of the final
refusal, the Examining Attorney added the definition for
“forensic engineering” found in the McGraw-Hill Dictionary
of Scientific and Technical Terms (3rd Ed. 1983), i.e., “the
application of accepted engineering practices and
principles for discussion, debate, argumentative or legal
purposes.”
In addition to this extrinsic evidence, the Examining
Attorney has based his arguments upon the specimen of
record in the parent application, which consists of a
brochure promoting the FORENSIC ENGINEERING SERVICES
division of applicant, whose services are listed as
“Engineering Analysis in: Accident Reconstruction, Highway
Safety, and Traffic & Transportation” along with
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“Investigations,” “Expert Testimony” and “Seminars &
Lectures.”
The Examining Attorney maintains that the evidence
establishes that the term “forensic engineering” is a
generic or common descriptive term for a class of services
and that applicant’s services fall within the class. While
noting that the most well-known aspect of “forensic
engineering” is accident investigation, the Examining
Attorney points to the dictionary definition to show that
the full range of “forensic engineering,” includes any
service “that logically bridges the engineering and legal
argument/policy debate fields.” (Examiner’s Brief, p.3).
Thus, he argues that applicant’s performance of engineering
analysis in preparation for public discussion, as well as
for legal purposes, lies within the realm of “forensic
engineering.” Insofar as applicant’s seminars and lectures
are concerned, the Examining Attorney takes the position
that “Forensic Engineering Services” is generic for the
subject matter of these seminars and, thus, generic for the
service of providing the seminars.
Applicant has raised two major arguments with respect
to the refusal in general. In the first place, applicant
contends that the Examining Attorney has failed to produce
any evidence whatsoever of the use of FORENSIC ENGINEERING
Ser No. 265139
6
SERVICES in any form, much less as a generic term. Second,
applicant argues that there has been no showing that the
term is being used in a generic context when used in
connection with applicant’s services. With respect to the
seminars and lectures in particular, applicant argues that
the service of providing seminars does not fall within the
scope of “forensic engineering” and furthermore, that there
is no indication in applicant’s identification of these
services that the subject matter of these seminars is
“forensic engineering,” as described in the dictionary
definition made of record by the Examining Attorney.
As set forth by our primary reviewing court in H.
Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986), a generic term is the common descriptive name
of a class of goods or services. The critical issue in
determining whether a term is generic is whether the
members of the relevant public primarily use or understand
the term sought to be registered to refer to the genus of
goods or services in question. The Court set out the
following two-step inquiry to be used in determining
whether a term is generic:
(1) What is the genus of goods or services at issue,
and
Ser No. 265139
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2) Is the term sought to be registered primarily
understood by the relevant public to refer to
that genus of goods or services.
Here the engineering services involved are directed to
not only accident investigations, highway safety testing
and consultation, and expert witnesses respecting highway,
traffic and transportation safety, but also to traffic and
transportation engineering services. We believe that all
these services may be construed as engineering services and
analysis as applied to the field of highway or traffic
safety for purposes of consultation or providing expert
witnesses.
The term sought to be registered is FORENSIC
ENGINEERING SERVICES. While applicant places great
emphasis on the presence of the word SERVICES in the term,
and the absence of the word in the evidence relied upon by
the Examining Attorney, we find no merit to this argument.
The word “Services” is unequivocally generic for any
service, and has no source-indicating significance
whatsoever. Cf. In re Failure Analysis Associates, 1
USPQ2d 1144 (TTAB 1986) [while “Failure Analysis” is no
more than name of services offered, word “Associates” is
sufficient to render FAILURE ANALYSIS ASSOCIATES capable of
distinguishing applicant’s services from those of others,
since no evidence that consumers would use term
Ser No. 265139
8
“Associates” to refer to category of services rendered].
Thus, our inquiry is restricted to whether the relevant
public would primarily consider the services being offered
by applicant to fall within the genus defined by the term
“Forensic Engineering.”
We find this to be the case. It is patently evident
from applicant’s brochure that the engineering analyses
which are performed by applicant are investigations in the
areas of highway and traffic safety for “discussion,
debate, argumentative or legal purposes" and accordingly,
fall within the broad definition of “forensic engineering.”
Furthermore, from the Nexis database evidence made of
record, we find that “forensic engineering” would be
readily recognized by the public as an area of engineering
directed to failure analysis, whether in connection with a
bridge collapse or an automobile accident, for either legal
or public policy purposes. Applicant’s use of FORENSIC
ENGINEERING SERVICES in connection with its engineering
services and analyses in the area of highway or traffic
safety would simply convey the information that applicant’s
services are in this general area of engineering, so the
term is not capable of acting as an indication of source
for applicant alone. See In re Gould Paper Corp, 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
Ser No. 265139
9
Turning to the seminars and lectures being offered by
applicant, we find no reason to believe that these seminars
are intended for any other purpose than to educate persons
with respect to the application of engineering analysis to
highway and traffic safety. Thus, the subject matter would
fall within the general realm of “forensic engineering.”
Accordingly, use of FORENSIC ENGINEERING SERVICES in
connection with these seminars would simply indicate the
topic to be discussed, rather than the source of the
seminars. See In re Harcourt Brace Jovanovich, Inc., 222
USPQ 820 (TTAB 1984).
In summary, we find that FORENSIC ENGINEERING SERVICES
is generic for the services listed in each of the
applications and incapable of distinguishing applicant’s
identified services from like services of others.
Furthermore, even if the term were not considered generic,
we agree with the Examining Attorney that the evidence
produced by applicant is insufficient to establish acquired
distinctiveness. The declarations of use of the term for a
period of ten years are inadequate to prove that the term
has acquired secondary meaning as an indicator of source to
the relevant public.
Ser No. 265139
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Decision: The refusal to register is affirmed.
R. F. Cissel
P. T. Hairston
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board