G2 Turftools, Inc.

Trademark Trial and Appeal Board

Mar 18, 2021

87852060 (T.T.A.B. Mar. 18, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re G2 Turftools, Inc.
_____

Serial No. 87852060
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John R. Perkins, Jr. of Perkins Law Firm, LLC,
for G2 TurfTools, Inc.
Kim Saito, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Zervas, Cataldo and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
G2 TurfTools, Inc. (“Applicant”) seeks registration of, on the Principal Register
under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), the proposed mark
TURFSCLICER (in standard characters) for “agricultural machines and earth
moving machines for golf courses and athletic fields, namely, sod laying machines,
seeders, and cultivators” in International Class 7.1

1 Application Serial No. 87852060 was filed on March 27, 2018 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and first use in
commerce since at least as early as August 30, 2006.
Serial No. 87852060
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The Trademark Examining Attorney refused registration under Trademark Act
Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s proposed mark,
as applied to the goods identified in the Application, is merely descriptive of them.
Applicant thereupon amended the Application to seek registration in the alternative
on the Principal Register on a claim of acquired distinctiveness pursuant Trademark
Act Section 2(f) – while continuing to argue in the alternative that its proposed mark
is inherently distinctive. The Examining Attorney rejected Applicant’s claim of
acquired distinctiveness pursuant to Trademark Act Section 2(f).
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. For the reasons
discussed below, we affirm the refusals to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we consider an evidentiary matter.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), in relevant part, states: “The record
in the application should be complete prior to the filing of an appeal. Evidence should
not be filed with the Board after the filing of a notice of appeal.” With its Reply Brief,
Applicant submitted letters from two of its customers discussing their familiarity
with Applicant’s proposed mark. “Th[is] evidence submitted with Applicant’s …
[Reply] [B]rief that Applicant did not previously submit during prosecution ... is
untimely and will not be considered.” In re Medline Industries, Inc., 2020 USPQ2d
10237 at *2 (TTAB 2020) (quoting In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1744 (TTAB 2018), aff’d, 777 F. App’x. 516 (Fed. Cir. 2019)).
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II. Mere Descriptiveness – Applicable Law
Absent a showing of acquired distinctiveness, Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1), precludes registration of a mark on the Principal Register which,
when used in connection with an applicant’s goods or services, is merely descriptive
of them. A mark is “merely descriptive” within the meaning of Section 2(e)(1) “if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer A.G., 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Conversely, a mark is suggestive if it
“requires imagination, thought, and perception to arrive at the qualities or
characteristics of the goods or services.” See Earnhardt v. Kerry Earnhardt, Inc., 864
F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (contrasting merely descriptive
from suggestive marks) and In re Franklin Cty. Historical Soc’y, 104 USPQ2d 1085,
1087 (TTAB 2012) (same). The Board resolves doubts as to the mere descriptiveness
of a proposed mark in favor of the applicant. In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1512 (TTAB 2016).
“A mark need not recite each feature of the relevant goods or services in detail to
be descriptive, it need only describe a single feature or attribute.” In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(citation and internal quotation omitted). See also In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely
descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s
Serial No. 87852060
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goods or services.”) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001)).
Whether a mark is merely descriptive is evaluated “in relation to the particular
goods 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 Chamber of Commerce, 102
USPQ2d at 1219 (quoting In re Bayer, 82 USPQ2d at 1831) and “not in the abstract
or on the basis of guesswork.” In re Fat Boys, 118 USPQ2d at 1513 (citing In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)).
Thus, we ask “not whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is whether someone who knows
what the goods and services are will understand the mark to convey information
about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (citation and internal quotation omitted).
That a term has different meanings in different contexts is not controlling. In re
Bright-Crest Ltd., 204 USPQ 591, 593 (TTAB 1979).
Where a mark consists of multiple terms, the mere combination of descriptive
terms does not necessarily create a non-descriptive word or phrase. In re Phoseon
Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely
descriptive components is registrable only if the combination of terms “function[s] as
an indication of more than a mere description of the ingredients [or functions] of the
Serial No. 87852060
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goods on which the mark is used, In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ
382, 385 (CCPA 1968), or results in the “coinage of hitherto unused and somewhat
incongruous word combinations whose import would not be grasped without some
measure of imagination and ‘mental pause’.” In re Shutts, 217 USPQ 363, 364-65
(TTAB 1983).
However, 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. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1374 (PATENTS.COM
merely descriptive of computer software for managing a database of records that
could include patents and for tracking the status of the records by means of the
Internet); see also In re Phoseon Tech., 103 USPQ2d at 1823 (“When two or more
merely descriptive terms are combined, ... [i]f 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.”).
Thus, our determination as to whether the proposed mark TURFSLICER is
merely descriptive is based on an analysis of the proposed mark as a whole.
DuoProSS Meditech, 103 USPQ2d at 1756 (“When determining whether a mark is
merely descriptive, the Board must consider the commercial impression of a mark as
a whole.”). On the other hand, we may consider the significance of each element
separately in the course of evaluating the mark as a whole. Id. at 1756-57 (noting
that “[t]he Board to be sure, can ascertain the meaning and weight of each of the
components that makes up the mark.”).
Serial No. 87852060
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Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in
advertising material directed to the goods.” In re Abcor, 200 USPQ at 218. It also may
be obtained from an applicant’s own specimen of use and any explanatory text
included therein. In re N.C. Lottery, 123 USPQ2d at 1710. Such evidence similarly
may come from an applicant’s own usage other than that found on its labels,
packaging or advertising materials. See, e.g., In re Chamber of Commerce, 102
USPQ2d at 1220 (content of applicant’s website, along with articles discussing the
activities of chambers of commerce, constituted substantial evidence supporting the
Board’s mere descriptiveness finding).
Proof of mere descriptiveness also may originate from Applicant’s own descriptive
use of its proposed mark, or portions thereof, in U.S. patents obtained or patent
applications filed by Applicant; such proof further many be found in U.S. patents or
patent applications of third parties. In re Omniome, Inc., 2020 USPQ2d 3222, at *10
(TTAB 2019) (in affirming its refusal to register the designation SEQUENCING BY
BINDING, the Board pointed to numerous examples in Applicant’s U.S. patents and
patent applications made of record in which Applicant used SEQUENCING BY
BINDING (or SEQUENCING-BY-BINDING) descriptively to refer to an invention
embodiment, a reaction, a method, a procedure, a technique, a platform and a
workflow); In re Int’l Game Tech. Inc., 1 USPQ2d 1587, 1588 (TTAB 1986) (excerpts
from U.S. utility patents made of record to show that the term “on-demand,” in the
Serial No. 87852060
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phrase ON-LINE, ON-DEMAND, had descriptive significance with respect to
computers, computer-controlled equipment, or other automated equipment – merely
descriptive refusal affirmed).
III. Mere Descriptiveness – Arguments and Evidence
“Whether a mark is merely descriptive or not is ‘determined from the viewpoint of
the relevant purchasing public.’” In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d
1087, 1090 (Fed. Cir. 2005) (quoting In re Bed & Breakfast Registry, 791 F.2d 157,
160 (Fed. Cir. 1986)). In response to inquiries from the Examining Attorney,
Applicant avers its industry is called the “turf equipment industry, [which] … sells
highly specialized equipment to [a] small group of customers within the turf industry
….” Moreover, “typical purchasers are municipalities for use on sports fields or
municipal golf courses, public and private golf courses, and public schools for sports
fields.”2 “The [E]xamining [A]ttorney [likewise stated she] provided evidence of the
descriptiveness of TURF, SLICE/SLICER/SLICING, and TURF SLICER in the turf
industry ….”3 We therefore find the relevant purchasing public comprises purchasers
of turf maintenance equipment for use on sports fields or golf courses.

2 Office Action Response of June 2, 2020 at TSDR 8. Page references herein to the application
record refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In
re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the
briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE
designation is the docket entry number; and after this designation are the page references, if
applicable.
3 Examining Attorney’s Brief, 12 TTABVUE 15.
Serial No. 87852060
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A. The Examining Attorney’s Arguments and Evidence
The Examining Attorney argues:
Applicant’s goods are “agricultural machines and earth moving
machines for golf courses and athletic fields, namely, sod laying
machines, seeders, and cultivators.” … In this case, both the individual
components, TURF and SLICER, and the composite result,
TURFSLICER, are descriptive of applicant’s goods and do not create a
unique, incongruous, or non[-]descriptive meaning in relation to the
goods …4
In support of the USPTO’s position, the Examining Attorney cites to Applicant’s
description of its own industry as the “turf equipment industry,”5 as we mentioned
above. We also take note of Applicant’s concession during prosecution that “[t]he term
‘TURF’ is widely known as a descriptor of grass, sod, or other surfaces commonly used
for golf and other outdoor sports ….”6 Thus, TURF is highly descriptive, if not generic,
of the materials and physical locations on which Applicant’s goods are used (i.e., golf
courses and athletic fields).
As support for her contention that SLICER is merely descriptive of Applicant’s
identified goods, the Examining Attorney begins with a dictionary definition of
SLICER as meaning “a person or thing that slices.”7 The Examining Attorney also
points to the following uses by both Applicant and third parties as showing that the

4 Id. at 5. At the same page of her Brief, for a better understanding of Applicant’s goods, the
Examining Attorney cites to the definitions of a CULTIVATOR as “a mechanical implement
for breaking up the soil and uprooting weeds,” and a SEEDER as “a machine for sowing seed
mechanically.” (Definitions from OXFORD REFERENCE online dictionary made of record with
the Denial of Request for Reconsideration of September 13, 2020 at TSDR 8-9).
5 Id.
6 Office Action Response of August 27, 2019 at TSDR 2.
7 Office Action of July 14, 2020 at TSDR 23 (definition of SLICER from INFOPLEASE online
dictionary).
Serial No. 87852060
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terms TURF, SLICE, SLICER and SLICING are used to describe turf equipment for
golf courses and athletic fields (emphasis added):8
 Applicant’s website (provided as a specimen of use) – TURFSLICER as “A
patent pending turf slicing device installed on the … turffloat … provides an
easy and effective way to grind up and redistribute aerification cores to low
areas. The unique slicing action of the turfslicer … blades also penetrates the
thatch area to provide much needed air space while cutting and replanting
existing stolons to promote a healthier, thicker turf. … With adjustable frame
mounts the patented slicer blades can be raised clear of the surface for free
floating action or set to a depth … for maximum slicing of turf or sprigs.
(Application filed on March 27, 2018 at TSDR 8).
 Applicant’s owner’s manual (provided as a specimen of use) –
o “If your turffloat is equipped with the optional turfslicer, … [u]se extreme
care when working with turfslicer, slicer blades are extremely sharp ….”
(Application filed on March 27, 2018 at TSDR 15).
o “Check turfslicer rotation, by rotating with thick soled shoe, to ensure that
slicer blades do not contact grate. If any slicer blade contact turffloat
grate, bend stainless steel blades, using an adjustable wrench, until slicer
assembly rotates smoothly.” (Application filed on March 27, 2018 at TSDR
16).
o “WARNINGS: Slicer blades are extremely sharp!” (Application filed on
March 27, 2018 at TSDR 17).
o Parts of the goods are described as “slicer assembly float, slicer grate, and
slicer grate tab.” (Application filed on March 27, 2018 at TSDR 19):

8 Examining Attorney’s Brief, 13 TTABVUE 6-8.
Serial No. 87852060
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o Parts of the goods are described as “slicer assembly, slicer bracket outside,
and slicer bracket center.” (Application filed on March 27, 2018 at TSDR
21):

 US Patent No. US2881847A titled “Turf slicer.” A description of the invention
states: “Particular application of a turf slicer is found in the employment of
the slicer on creeping bent lawns, such as those used on golf course greens.
Since a creeping bent lawn grows with the blades of grass horizontal rather
than vertical, the blades, therefore, tend to mat over the turf and cut off the
movement of air and moisture to the turf. A specific function of the slicer on
the creeping bent lawn is the slicing of the lawns runners which are disposed
horizontally and extend for a length of a number of inches and, consequently,
hamper the health of the surrounding lawn. These runners impede the growth
of the adjacent lawn. … Still another object of this invention is to provide a
turf slicer wherein the slicing blades are easily and readily mounted onto
the supporting shaft in helically disposed positions.” (Office Action of July 25,
2018 at TSDR 7).
 US Patent No. 9750172B2 titled “Turf implement having turf slicing reel.”
The Abstract of the invention states: “A turf implement has a frame that
carries a rotatable turf slicing reel. A height adjustment lever pivots in
opposite directions on the frame to raise and lower the slicing reel relative to
the turf.” The Background of the Invention provides: “Various implements are
known in the turf industry for renovating, improving or maintaining a turf
surface such as a lawn, the fairways or greens of golf courses. . . These
implements are variously referred to in the industry as “slicer seeders”, as
“aerators”, as “scarifiers”, as “dethatchers”, or as “verticutters”. A common
characteristic of these implements is the use of a rotatable slicing reel that is
rotated about a substantially horizontal axis of rotation. The slicing reel
carries a plurality of laterally spaced, vertically disposed cutting members that
are used for cutting or slicing into a soil layer of the turf to create narrow slits
in the turf or for pulling, tearing or otherwise acting on a thatch layer of the
turf to in a process known as dethatching.” ... “One aspect of this invention
relates to a turf implement which composes a frame supported for movement
over the turf. A rotatable slicing reel is carried on the frame for rotation about
a substantially horizontal axis of rotation.” … “Another aspect of this invention
relates to a turf implement which comprises a frame that carries a rotatable
turf slicing reel.” … “Yet another aspect of this invention relates to a turf
Serial No. 87852060
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implement which comprises a frame that carries a rotatable turf slicing reel.”
(Office Action of April 6, 2019 at TSDR 7-9).
 US Patent No. US7677324B2 titled “Turf slicer with vertical oscillator.”
Applicant describes this patent as issuing from “Applicant’s own patent
application.”9 The Abstract of the invention states: “A turf slicer includes a
gang of six slicer wheels that “walk” through the turf in response to the
forward motion of the turf slicer.” The Background of the Invention states:
“[I]t would be desirable to have a turf aerator that utilizes slicer wheels with
a large number of slicer blades being employed and with the ability to more
easily have the slicer blades fully penetrate the turf. It is to this improvement
that this invention is directed.” The Summary of the invention provides: “[T]he
present invention comprises a turf slicer for penetrating and aerating turf,
including a support frame, a drive shaft rotatably supported by the support
frame, and power takeoff means arranged to rotate the drive shaft. A series of
slicer wheels, each including a plurality of radially extending slicer blades,
are rotatably supported on the drive shaft. The slicer blades for this aerator
may be mounted in a plurality of slicer wheels with each slicer wheel
including several slicer blades.” (Office Action of March 21, 2020 at TSDR 6-
7).
 YouTube video about “turf-slicing” a practice athletic field. (Office Action of
April 6, 2019 at TSDR at 17).
 eXmark website – discusses a “slicer seeder” which is a grass seeder that
performs the functions of “verticutting, dethatching, and overseeding.” The
product is advertised as including the following feature: “slicer blade depth
adjustment.” (Office Action of November 4, 2019 at TSDR 5).
 Book titled “Handbook of Turfgrass Management and Physiology,” available
on the taylorfrancis.com website. Passages from the book state: “In agriculture,
the term ‘cultivation’ refers mainly to the tilling of soil, but in turfgrass
management, it refers to the mechanical processes used to lessen the soil,
break up undesired soil layers ....” Discussing “turf cultivation” The book says
“Cultivation is usually conducted on higher-quality turfs and involves
techniques such as coring, slicing, spiking, forking, water injection,
verticutting, top dressing, and rolling.” (Denial of Request for Reconsideration
of September 13, 2020 at TSDR 3-4).
 Article titled “The Pros and Cons of Slice Seeding vs. Aeration,” available on
the tblawncare.com website. The article discusses “Slice seeding” which
“utilizes a steel bladed machine that slices into the yard. These slices create
… furrows in … [the] soil. Afterward, the machine places grass seeds into the
furrows.” [I]f … [one has] areas with visibly thin grass or no grass at all, …

9 Applicant’s Brief, 10 TTABVUE 15.
Serial No. 87852060
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[one] might want to boost grass growth with slice seeding.” (Denial of Request
for Reconsideration of September 13, 2020 at TSDR 15-16).
B. Applicant’s Arguments and Evidence
Applicant argues:
Applicant’s mark is not merely descriptive of Applicant’s goods because
TURFSLICER is vague and ambiguous in the context of Applicant’s …
“sod laying machines, seeders, and cultivators” …. TURFSLICER could
have several meanings that are readily apparent to consumers, causing
consumers to pause when encountering Applicant’s mark and use
additional thought, imagination, or perception to understand the mark’s
relationship to Applicant’s sod laying machines, seeders, and
cultivators. … The Examining Attorney’s evidence and analysis fall far
short of the stated conclusions and, with respect, are simply not
supported by precedent.
* * *
The Examining Attorney is entirely incorrect in evaluating the term
“SLICER.” Despite the Examining Attorney’s statement to the contrary,
there is no such thing as a “slicer” in the turf equipment industry, nor
does the term “slicer” in any manner whatsoever describe the function
of sod laying machines, seeders, and cultivators. The product is not a
slicer, and the Examining Attorney produced no evidence that the turf
equipment industry offers or recognizes any product called a slicer. The
product does not slice and the function cannot be described as slicing.
* * *
Until Applicant coined the term TURFSLICER, there was no product in
the turf industry arguably said to be a “slicer”. The fact that the
Examining Attorney was only able to locate Applicant’s patent and
nothing before that until going back as far as 1959 and makes this point
clear. That said, it is important to realize that neither Applicant, nor
any third party, has ever referred to its product as a turf slicer.
Applicant has at all times used proper trademark practices and referred
to its product by the trademark TURFSLICER.10

10 Applicant’s Brief, 10 TTABVUE 13-15.
Serial No. 87852060
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We searched in vain through Applicant’s briefs for supporting evidence. We did,
however, find in the record the evidence shown below of Applicant’s use of the
proposed TURFSLICER mark in connection with Applicant’s goods:

(Application of March 27, 2018 (Application of March 27, 2018
at TSDR 8 – website) at TSDR 17 – owner’s manual)

(Office Action Response (Office Action Response
of February 5, 2020 at of February 5, 2020 at
TSDR 9 – trade show picture) TSDR 10 – trade show signage)

Serial No. 87852060
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As shown immediately above, Applicant’s owner’s manual, provided as a specimen
of use,11 states: “use your turfslicer equipped turffloat to spread and grind up
aerification cores, spread topdress sand, plan grass seed, and condition fields.” Some
of the pictures of Applicant’s product shown above demonstrate a few of these uses –
consistent with the dictionary definition of “slicer” as a “thing that slices.”12
IV. Mere Descriptiveness – Discussion and Analysis
As alluded to above, Applicant says that “[u]ntil Applicant coined the term
TURFSLICER, there was no product in the turf industry arguably said to be a
‘slicer’”.13 This is not persuasive. “‘The fact that Applicant may be the first or only
user of a term does not render that term distinctive’ if, as here, it has been shown to
be merely descriptive of the goods identified in the application.” In re Fallon, 2020
USPQ2d 11249, at *11 (TTAB 2020) (quoting In re Fat Boys, 118 USPQ2d at
1514); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance someone
obtaining “a complete monopoly on use of a descriptive term simply by grabbing it
first”).
Applicant also notes that it “holds [registrations for] numerous TURF-based
trademarks, including its company name G2 TURFTOOLS® …, TURFPLANER®,

11 Application filed March 27, 2018 at TSDR 17.
12 Office Action of July 14, 2020 at TSDR 23 (definition of SLICER from INFOPLEASE online
dictionary).
13 Applicant’s Brief, 10 TTABVUE 15.
Serial No. 87852060
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TURFRACK® and TURFPLANING SERVICES®, along with logos.”14 Applicant did
not make copies of any of these registrations, or their prosecution histories, of record.
Notwithstanding, we note that these are different marks, some registered for
different goods or services, possibly on different records than the subject Application.
Further, we are not bound by the decisions of examining attorneys. The Board must
make its own findings of fact, and that duty may not be delegated by adopting the
conclusions reached by an examining attorney. In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”) “It has been said many times
that each case must be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d
1227, 1229 (TTAB 2010) (internal citation omitted).
Turning to the subject Application, we find Applicant’s concession that “[t]he term
‘TURF’ is widely known as a descriptor of grass, sod, or other surfaces commonly used
for golf and other outdoor sports ….”,15 the specimens of use and other materials
Applicant submitted with its Office Action responses, as well as the dictionary,
patents and third-party use evidence made of record demonstrate that the words
TURF and SLICER immediately, without thought or imagination, identify
characteristics of Applicant’s sod leveling machines sod laying machines, seeders, and

14 Id. at 5. See also Applicant’s Reply Brief, 13 TTABVUE 4.
15 Office Action Response of August 27, 2019 at TSDR 2.
Serial No. 87852060
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cultivators, namely, that they include a “slicer” – a thing that slices for the purposes
of turf aeration, cultivation or seeding. In re N.C. Lottery, 123 USPQ2d at 1709.
Moreover, each component of the proposed mark retains its merely descriptive
significance in relation to Applicant’s goods when combined, such that the
combination TURFSLICER results in a term that is itself merely descriptive. See,
e.g., In re Oppedahl & Larson, 71 USPQ2d at 1374. The fact that there is no
separation between the two terms TURF and SLICER does not alter the descriptive
meaning of the combination. See In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009)
(holding “URBANHOUZING,” the phonetic spelling of “urban” and “housing,” merely
descriptive of real estate services). In fact, Applicant’s use of its proposed mark as
follows creates the impression that the two terms are to be perceived as separate
terms, and not as a single term with a unique commercial impression:

We therefore find that the proposed mark TURFSLICER is merely descriptive of
Applicant’s identified goods.
V. Acquired Distinctiveness – Applicable Law
Applicant argues that, even if the proposed TURFSLICER mark is found to be
merely descriptive, “Applicant’s mark is nevertheless registrable because Applicant
has provided evidence that far exceeds the threshold for proof of acquired
Serial No. 87852060
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distinctiveness under [Trademark Act Section 2(f),] 15 U.S.C. § 1052(f).”16 “To
establish that a term has acquired distinctiveness, ‘an applicant must show that in
the minds of the public, the primary significance of a product feature or term is to
identify the source of the product rather than the product itself.’” In re Guaranteed
Rate, Inc., 2020 USPQ2d 10869, *2 (TTAB 2020) (quoting In re La. Fish Fry Prods.,
Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015) (internal quotation
omitted)). Applicant bears the burden of establishing that its proposed mark has
acquired distinctiveness. Id.
“Our ultimate Section 2(f) analysis of acquired distinctiveness and determination
in this appeal is based on all of the evidence considered as a whole.” Id. The U.S.
Court of Appeals for the Federal Circuit has instructed that
the considerations to be assessed in determining whether a mark has
acquired secondary meaning can be described by the following six
factors: (1) association of the [mark] with a particular source by actual
purchasers (typically measured by customer surveys); (2) length, degree,
and exclusivity of use; (3) amount and manner of advertising; (4) amount
of sales and number of customers; (5) intentional copying; and (6)
unsolicited media coverage of the product embodying the mark.
Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).17 “‘All
six factors are to be weighed together in determining the existence of secondary
meaning.’” In re Guaranteed Rate, 2020 USPQ2d 10869, at *3 (quoting Converse, 128
USPQ2d at 1546).

16 Applicant’s Brief, 10 TTABVUE 18.
17 “While Converse concerned an appeal from a decision issued by the International Trade
Commission, the Federal Circuit’s clarification of the factors in determining acquired
distinctiveness is equally applicable to any Board proceeding that necessitates a showing of
secondary meaning.” In re SnoWizard, Inc., 129 USPQ2d 1001, 1005 n.8 (TTAB 2018).
Serial No. 87852060
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A. Degree of Descriptiveness of the Proposed Mark
In assessing whether the proposed mark TURFSLICER has acquired
distinctiveness, we must first determine its degree of descriptiveness because “[t]he
greater the degree of descriptiveness the term has, the heavier the burden to prove it
has attained secondary meaning.” Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d
1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Boston Beer Co., 198
F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (internal quotation omitted)). See
also In re Guaranteed Rate, 2020 USPQ2d 10869 at *4; In re Virtual Indep.
Paralegals, LLC, 2019 USPQ2d 111512, *10 (TTAB 2019). Thus we must make “an
express finding regarding the degree of the mark’s descriptiveness on the scale
ranging from generic to merely descriptive, and … [we] must explain how … [our]
assessment of the evidentiary record reflects that finding.” Royal Crown Cola, 127
USPQ2d at 1048.
The Examining Attorney argues that “[t]he evidence outlined and discussed above
clearly shows that TURFSLICER is highly descriptive with respect to the goods ….”18
Applicant contends that “TURFSLICER is not merely descriptive, much less highly
descriptive, of sod laying machines, seeders, and cultivators.”19 We agree with the
Examining Attorney.
“The Examining Attorney introduced evidence to prove that … [TURFSLICER] is
merely descriptive … in the form of dictionary definitions … and third-party uses” of

18 Examining Attorney’s Brief, 12 TTABVUE 12.
19 Applicant’s Brief, 10 TTABVUE 23.
Serial No. 87852060
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SLICER. In re Guaranteed Rate, 2020 USPQ2d at *3. The Examining Attorney also
pointed to Applicant’s descriptive uses of TURF and SLICER in its specimens of use
and explanatory text, In re N.C. Lottery, 123 USPQ2d at 1710, as well as in the
content of Applicant’s website. In re Chamber of Commerce, 102 USPQ2d at 1220.
The Examining Attorney provided additional evidence of descriptiveness in the form
of a U.S. patent obtained by Applicant and patents obtained by third parties. In re
Omniome, Inc., 2020 USPQ2d 3222, at *10 (TTAB 2019). We further find relevant
Applicant’s concession during prosecution regarding the well-known meaning of
TURF in Applicant’s industry.20
On the basis of this evidence, we find that “on the scale ranging from generic to
merely descriptive,” Royal Crown Cola, 127 USPQ2d at 1048, TURFSLICER is much
closer to the generic end of the scale than to the merely descriptive end, making the
proposed mark highly descriptive of the “sod leveling machines” identified in the
application. See In re Guaranteed Rate, 2020 USPQ2d 10869, at *3 (third-party uses
of the terms “guaranteed rate,” “guaranteed mortgage rate,” and “guaranteed interest
rate” established that claimed mark GUARANTEED RATE was highly descriptive of
mortgage-related services); In re Virtual Indep. Paralegals, 2019 USPQ2d 111512 at
*10-11 (combination of descriptive terms “virtual,” “independent,” and “paralegals”
in claimed VIRTUAL INDEPENDENT PARALEGALS mark for paralegal services
made mark “highly descriptive of those services”).

20 Office Action Response of August 27, 2019 at TSDR 2
Serial No. 87852060
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B. Sufficiency of Evidence of Acquired Distinctiveness
Because TURFSLICER is highly descriptive of sod leveling machines, “Applicant’s
burden of establishing acquired distinctiveness under Section 2(f) is commensurately
high.” Id. at *11; see also Performance Open Wheel Racing, Inc. v. U. S. Auto Club
Inc., 2019 USPQ2d 208901, *7 (TTAB 2019) (“Highly descriptive terms are less likely
to be perceived as trademarks, and therefore more substantial evidence of secondary
meaning will ordinarily be required to establish their distinctiveness.”).
To carry this burden, Applicant may offer three basic types of evidence:
1. A claim of ownership of one or more active prior registrations on the
Principal Register of the same mark for goods or services that are
sufficiently similar to those identified in the pending application.
Trademark Rule 2.41(a)(1), 37 C.F.R. § 2.41(a)(1).
2. A verified statement that the mark has become distinctive of the
applicant's goods or services by reason of the applicant’s substantially
exclusive and continuous use of the mark in commerce for five years
before the date on which the claim of distinctiveness is made.
Trademark Rule 2.41(a)(2), 37 C.F.R. § 2.41(a)(2).
3. Other appropriate evidence of acquired distinctiveness. Trademark
Rule 2.41(a)(3), 27 C.F.R. § 2.41(a)(3).
In re Guaranteed Rate, 2020 USPQ2d 10869 at *2. “[A]pplicant may submit one or
any combination of these types of evidence. Depending on the nature of the mark and
the facts in the record, the [E]xamining [A]ttorney may determine that a claim of
ownership of a prior registration(s) or a claim of five years’ substantially exclusive
and continuous use in commerce is insufficient to establish a prima facie case of
acquired distinctiveness. In which case, [A]pplicant may then submit additional other
evidence of acquired distinctiveness.” Id.
Serial No. 87852060
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Applicant purports to offer the latter two types of evidence here. More specifically,
after its receipt of the first Office Action, while continuing to argue that the proposed
mark is inherently distinctive, Applicant amended the TURFSLICER application as
follows:
The Examiner rejected the application under Section 2(e)(1). Applicant
has reviewed the records with this application and determined that the
best course of action is to proceed under section 2(f) because the mark
has been in continuous use since 2011. Additional specimens are filed
herewith to support applicant’s declaration under section 2(f).
* * *
The mark has become distinctive of the goods/services through the
applicant’s substantially exclusive and continuous use of the mark in
commerce that the U.S. Congress may lawfully regulate for at least the
five years immediately before the date of this statement.
* * *
The mark has become distinctive of the goods/services, as demonstrated
by the attached evidence.21
1. Substantially Exclusive and Continuous Use
As noted immediately above, Applicant amended its Application to state that the
proposed TURFSLICER mark has become distinctive of Applicant’s goods through its
substantially exclusive and continuous use of the mark in commerce for at least five
years immediately before the date of the amendment. Applicant further argues that
its proposed TURFSLICER mark “has become distinctive of the [g]oods through
exclusive and continuous use of the mark in commerce for thirteen years. … This

21 Petition to Revive Abandoned Application and Office Action Response of February 11, 2019
at TSDR 1-3.
Serial No. 87852060
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alone should have been sufficient …” says Applicant.22 The Examining Attorney
responds that
Section 2(f) of the [Trademark] Act and [Trademark Rule 2.41(a)(2),] 37
C.F.R. §2.41(a)(2) state that reliance on a claim of five years’ use to
establish acquired distinctiveness “may” be acceptable in appropriate
cases. The USPTO may, at its option, require additional evidence of
distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116
USPQ2d 1262 (Fed. Cir. 2015) (noting that the statute does not require
the USPTO to accept five years’ use as prima facie evidence of acquired
distinctiveness).23

The Examining Attorney, during prosecution, was very clear that Applicant’s
“allegation of five years’ use is insufficient to show acquired distinctiveness because
the applied-for mark is highly descriptive ….”24 We agree with the Examining
Attorney.
“Although Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the
[US]PTO may accept five years of ‘substantially exclusive and continuous’ use as
prima facie evidence of acquired distinctiveness, the statute does not require the
[US]PTO to do so.” In re La. Fish Fry Prods., 116 USPQ2d at 1265. The Federal
Circuit in In re La. Fish Fry Prods. noted that “[p]articularly for a mark that is as
highly descriptive as FISH FRY PRODUCTS, the Board was within its discretion not
to accept Louisiana Fish Fry’s alleged five years of substantially exclusive and
continuous use as prima facie evidence of acquired distinctiveness.” Id.

22 Applicant’s Brief, 10 TTABVUE 19.
23 Examining Attorney’s Brief, 12 TTABVUE 12.
24 Office Action of April 6, 2019 at TSDR 3.
Serial No. 87852060
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Here, the Examining Attorney’s determination that the proposed TURFSLICER
mark is highly descriptive of Applicant’s goods is amply supported by the record.
Under the circumstances, we find it appropriate to reject Applicant’s claim of five
years (in its Application) or thirteen years (in its brief) of substantially exclusive and
continuous use of its proposed mark as being insufficient to prove acquired
distinctiveness. See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128
USPQ2d 1370, 1378 (Fed. Cir. 2018) (finding that Board was within its discretion not
to accept five years of substantially exclusive and continuous use as sufficient
evidence of acquired distinctiveness where the proposed marks were highly
descriptive); In re Virtual Indep. Paralegals, 2019 USPQ2d 111512 at *11-12 (because
proposed mark VIRTUAL INDEPENDENT PARALEGALS was “at very best, highly
descriptive, we find that five years of substantially exclusive and continuous use is
not sufficient to prove that VIRTUAL INDEPENDENT PARALEGALS has acquired
distinctiveness”). We turn now to Applicant’s additional evidence in support of its
Section 2(f) claim.
2. Applicant’s Evidence under the Converse Factors
a. Association of TURFSLICER with Applicant by Actual
Purchasers
This factor is “typically measured by customer surveys.” Converse, 128 USPQ2d
at 1546. Applicant does not offer such a survey, but does offer letters from two of its
clients attesting to their association of TURFSLICER with Applicant.25 Cf. In re MK

25 Applicant’s Reply Brief, 13 TTABVUE 12, 14.
Serial No. 87852060
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Diamond Prods., 2020 USPQ2d 10882, *25 (TTAB 2020) (discussing declarations
from applicant’s customers regarding their claimed recognition of applicant’s saw
blade design); Kohler Co. v. Honda Gikken Kogyo K.K., 125 USPQ2d 1468, 1507-08
(TTAB 2017) (discussing statements from applicant’s distributors regarding their
claimed recognition of applicant’s engine design). However, as we mentioned earlier,
because these letters were not timely made of record, Applicant may not rely on them.
Even if the letters were timely submitted, unsworn letters from two customers
attesting to the association of TURFSLICER with Applicant hardly suffices as
support for a showing of acquired distinctiveness. Cf. In re Flex-O-Glass, Inc., 194
USPQ 203, 206 (TTAB 1977) (“[T]he fact that the affidavits may be similar in format
and expression is of no particular significance herein since the affiants have sworn
to the statements contained therein.”) (Emphasis added).
b. Length, Degree, and Exclusivity of Use
Applicant argues that it “presented a verified statement and supporting evidence
under [Trademark Act Section] 2(f) during prosecution that TURFSLICER has
become distinctive of the [g]oods through exclusive and continuous use of the mark
in commerce for thirteen years.”26 Applicant further argues that “[t]he evidence
presented by Applicant includes a turffloat owner’s manual from 2007 detailing the

26 Applicant’s Brief, 10 TTABVUE 18-19. We assume Applicant’s reference to the “verified
statement” is to the five years’ use declaration in the February 11, 2009 amendment to its
Application, as no other declaration is in the record.
Serial No. 87852060
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turfslicer as an attachment, multiple invoices dated as early as 2008, quotes to
customers as early as 2012, and photos of the turfslicer at tradeshows since 2007.”27
The statement from Applicant’s counsel of substantially exclusive use of the
proposed TURFSLICER mark has little probative value regarding the exclusivity of
Applicant’s use, particularly in the face of (1) Applicant’s concession that TURF is
widely known as a descriptor of grass, sod, or other surfaces commonly used for golf
and other outdoor sports, (2) the evidence of record that multiple third parties refer
to the term slicer as connoting a thing that slices for the purposes of turf aeration,
cultivation or seeding – just as it is used in the dictionary, and (3) Applicant’s
descriptive use of “turf slicer” and “turf slicing” in its own patent application and
website.
c. Advertising
“Applicant [asserts it] presented additional evidence of acquired distinctiveness,
such as product brochures, press releases, promotional videos, and a multitude of
actual photos of the [proposed] mark in use as claimed since 2007.”28 Applicant
[contends it also] presented a detailed list of its advertising expenditures. …
Applicant [further claims it] does not generally engage in print media advertising,
nor do others in the turf equipment industry. The primary form of advertising in the
turf equipment industry is through trade shows.”29

27 Id. at 19 (citing to Application filed on March 27, 2018 at TSDR 10-25; Office Action
Response of February 11, 2019 at TSDR 8-9, 17-19, 27; and Office Action Response of August
27, 2019 at TSDR 12-14, 16, 18, 19, 21, 22, 25, 26, 32, 33 and 35-38.
28 Id.
29 Id. at 21.
Serial No. 87852060
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First, Applicant does not provide the extent of distribution or reach to the relevant
target audience of the product brochures, press releases, promotional videos, and
product demonstrations as shown in the photos of the proposed mark accompanying
Applicant’s goods that Applicant made of record.30 See Omaha Steaks Intl, Inc. v.
Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690-92 (Fed. Cir.
2018) (discussing testimony about how and where the opposer promoted its products
to the public through catalogs, direct mailings, email marketing, customer calls,
television, radio, magazine and newspaper campaigns, digital marketing, and social
media, as well as the volume of these efforts and their impact upon the creation of
customer recognition of the opposer’s marks). The promotional video on the YouTube
channels to which Applicant refers (that the Examining Attorney made of record)
does not mention the TURFSLICER mark at all.
Second, while Applicant submitted photographic proof of its trade show
attendance from 2007-2008 and from 2013-2019,31 there is no discussion regarding
the types or number of attendees at these trade shows, how representative the
numbers of attendees at these trade shows are in comparison to the numbers of
potential purchasers in the industry as a whole, or how significant these trade shows
are in Applicant making actual sales of products. Id. (discussing the number of the
opposer’s product orders processed per day, attendance at tradeshows and other

30 See Office Action Response of August 27, 2019 at TSDR 12-14, 16, 18, 19, 21, 22, 25, 26, 32,
33 and 35-38; Office Action Response of February 5, 2020 at TSDR 9-11, 15, 19-25; March 21,
2020 Office Action at TSDR 5.
31 Applicant’s Brief, 10 TTABVUE 8-11.
Serial No. 87852060
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publicly attended venues, availability of product bearing the marks at retail stores,
and their impact upon the creation of customer recognition of the opposer’s marks).
Applicant’s advertising expenditures32 are as follows:
Year Advertising Trade
Shows
2019 $ 2,245.00 $29,623.87
2018 $ 4,490.00 $27,017.37
2017 $15,299.90 $26,639.59
2016 $10,306.55 $29,394.79
2015 $ 2,726.74 $24,204.72
2014 $ 1,363.06 $22,083.20
2013 $ 7,524.90 $11,762.34
2012 $ 1,139.74 $ 7,802.40
2011 $ 947.50 $ 671.90
2010 $ 1,000.00 $ 1,000.00
2009 $ 9,848.41 $ 1,302.69
2008 $ 2,655.99 $ 7,047.72
2007 $ 575.00 $ 6,264.38

In response to an inquiry from the Examining Attorney, Applicant states that

the “advertising” column … [as shown above] illustrates marketing
expenses other than trade shows; and the “trade show” column
illustrates marketing expenses specific to tradeshows. Applicant has no
way of tracking the percentage of its marketing expenses that would
apply to any particular product, as all of applicant’s marketing is
directed to its company and products as a whole. Applicant can,
however, estimate that as much as 10% of its total marketing budget
may be attributed to TURFSLICER.33 (Emphasis added).
The Examining Attorney argues that

[Applicant’s] annual expenditure[s] for advertising do[] not appear to be
a large amount of money considering the price of [A]pplicant’s
TURFSLICER goods range from $1,950 to $2,550. ([Office Action
Response of] June [2], 2020 … at TSDR … 8.) The full impact of
[A]pplicant’s circumstantial evidence of its advertising and promotional
efforts to support its Section 2(f) claim cannot be determined. Applicant

32 Office Action Response of February 5, 2020 at TSDR 26.
33 Office Action Response of June 2, 2020 at TSDR 12.
Serial No. 87852060
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failed to provide information indicating what its competitors’
expenditures are or the typical per-tradeshow-costs [are] (as tradeshows
appear to be [A]pplicant’s main source of advertising) …. Therefore, the
[E]xamining [A]ttorney does not have the context and/or basis for
comparing [A]pplicant’s advertising efforts with industry norms.34
We agree with the Examining Attorney. Without some context regarding
competitors’ comparable advertising expenditures, we have very little basis to
determine whether Applicant’s expenditures support its claim of acquired
distinctiveness. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002) (“Raw numbers of … advertising expenses … in today’s
world may be misleading. … Consequently, some context in which to place raw
statistics is reasonable. … [O]ne form of such context would be the substantiality of
the … advertising figures for comparable types of products.”).
d. Amount of Sales and Number of Customers;
Intentional Copying
Applicant provides neither the amount of its sales of sod leveling machines nor
the number of its customers. Applicant makes no claim of intentional copying of the
proposed TURFSLICER mark by competitors or other third parties.
e. Unsolicited Media Coverage of the Product
Embodying the Proposed Mark
Applicant’s argument on this Converse factor is that it “submitted multiple press
releases and statements made by the media and the trade discussing the
TURFSLICER brand, dating as early as 2012 and including at least one best new

34 Examining Attorney’s Brief, 12 TTABVUE 13-14.
Serial No. 87852060
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product award.”35 First, we give little weight to Applicant’s 2008, 2012 and 2017 press
releases, because by definition they do not constitute “unsolicited media coverage.”
Even if we were to give the press releases some weight, the 2008 and 2017 releases
hurt Applicant’s cause in that they make descriptive uses of the terms TURF, SLICE
and SLICING:
 2008 Press Release – Turfslicer … is designed as a tractor attachment …. It
can be installed on a Turffloat frame, to both “float” and “slice” an area of turf
at the same time, or it can be installed on a separate Turfslicer frame. The
Turfslicer, when attached to the Turffloat frame, provides an easy and effective
way to grind up aeration cores, mix the material with the topdressing and
redeposit the material into low areas. At the same time, the unique slicing
action of the turfslicer blades also penetrate the thatch area to provide much-
needed air space while cutting and replanting existing stolons to promote a
healthier, thicker turf. The Turfslicer can also be installed on the optional
Turfslicer frame for “slicing-in” of existing turf and sprigs.
 2017 Press Release – With the turfslicer attachment, the mini turfroller makes
planting sprigs, setting seed, and top dressing more efficient. The unique
slicing action of the turfslicer blades also penetrates the thatch area to provide
much needed air space while replanting existing stolons to promote a healthier,
thicker turf. The turfslicer is fully adjustable … for maximum slicing of turf,
sprigs, or seed.
The 2012 press release only mentions the proposed TURFSLICER mark in
passing as part of Applicant’s existing patented product line. Thus, Applicant’s 2012
press release has very little probative value on this appeal.
Applicant’s only example of an unsolicited media coverage is the “Innovation
Award” from the Sports Turf Managers Association in 2011 for Applicant’s
TURFPLANER product. An article appearing in Sports Turf magazine noting the
award, similar to Applicant’s 2012 press release, only mentions TURFSLICER in

35 Applicant’s Brief, 10 TTABVUE 23; citing to Office Action Response of February 11, 2019
at TSDR 10-16; and February 5, 2020 Office Action Response at 19-25.
Serial No. 87852060
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passing as part of Applicant’s existing patented product line. This article cannot truly
said to be unsolicited media coverage directed to the proposed TURFSLICER mark
or product.
f. Summary
As discussed above, given the highly descriptive nature of the proposed mark,
Applicant’s claim of exclusive and continuous use of TURFSLICER since 2007, by
itself, is insufficient to prove that it has acquired distinctiveness. Considered as a
whole, Applicant’s evidence on the Converse factors falls far short of carrying
Applicant’s burden of showing that its highly descriptive proposed mark
TURFSLICER has acquired distinctiveness pursuant to Trademark Act Section 2(f)
for sod leveling machines.
Decision:
The Examining Attorney’s refusal to register Applicant’s proposed mark
TURFSLICER on the ground of mere descriptiveness under Trademark Act Section
2(e)(1), and refusal to accept Applicant’s proof of acquired distinctiveness under
Trademark Act Section 2(f), are affirmed.