Elgin Sweeper Company

Trademark Trial and Appeal Board

Mar 26, 2009

No. 77193259 (T.T.A.B. Mar. 26, 2009)

Mailed:
March 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Elgin Sweeper Company
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Serial No. 77193259
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Jennifer L. Sherman for Elgin Sweeper Company

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney)
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Before Seeherman, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Elgin Sweeper Company has appealed from the final
refusal of the trademark examining attorney to register
MEMORY SWEEP as a trademark for “electronic control system
for use on street cleaning machines to allow components to
automatically return to previously adjusted settings.”1
Registration has been refused pursuant to Section 2(e)(1)

1 Application Serial No. 77193259, filed May 30, 2007. The
application was originally based on Section 1(b) of the Trademark
Act (intent-to-use). On March 11, 2008 applicant filed an
amendment alleging use as of May 2007 and use in commerce as of
December 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77193259
2
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark is merely descriptive of its goods.
It is the examining attorney’s position that MEMORY SWEEP
describes a function or feature of applicant’s electronic
control systems, namely, that they sweep the memory of
street cleaning machines so that they can return to
previously adjusted settings.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1), if it immediately
conveys knowledge of the ingredients, qualities, or
characteristics of the goods or services with which it is
used. However, a suggestive mark, i.e., one that requires
imagination, thought or perception to reach a conclusion on
the nature of the goods or services, is registrable. See
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987).
The examining attorney has submitted evidence showing
that memory sweep is a term that is used to describe
removing old information from the memory cache of a
computer system. Applicant does not dispute this.
However, applicant has explained that its goods are not a
computer system, and that none of the evidence submitted by
the examining attorney “has any application or use for
control devices such as Applicant’s or that the term has
Ser No. 77193259
3
any use or application in the street cleaning industry or
in the industry of making machines for cleaning streets.”
Reply brief, unnumbered p. 2.
We agree with applicant. The descriptiveness of a
term must be considered 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 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). Thus, the fact that “memory sweep” describes
removing data from cached memory on a computer is not
relevant to the goods at issue, which do not serve this
function. On the contrary, the word SWEEP in applicant’s
mark suggests the action of the street cleaning machine,
while the word MEMORY suggests that the settings of the
electronic control system are retained by the system, so
they do not have to be input each time. The combination of
these words, MEMORY SWEEP, does not directly tell the
consumer a characteristic or function of the goods.
Rather, the mark has an element of incompleteness such that
a consumer must mentally add words to transform the mark
Ser No. 77193259
4
into a readily comprehensible expression. Because mental
steps are required for a consumer to draw a conclusion as
to the nature of the goods, the mark is suggestive and not
merely descriptive. See In re Southern National Bank of
North Carolina, 219 USPQ 1231 (TTAB 1983) (MONEY 24 not
merely descriptive of banking services, namely, automatic
teller machine services).
Decision: The refusal of registration is reversed.