Global Vapor Control, Inc.

Trademark Trial and Appeal Board

Sep 5, 2018

No. 85839717 (T.T.A.B. Sep. 5, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 5, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Global Vapor Control, Inc.
_____
Serial No. 85839717
_____

John Ross Flynt and Tod T. Tumey of Tumey L.L.P.,
for Global Vapor Control, Inc.

Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Lykos, Lynch, and Coggins,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Global Vapor Control, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark GLOBAL VAPOR CONTROL in standard characters for the
following services:
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Maintenance and cleaning pertaining to industrial plants,
chemical plants, terminals, pipelines, and refineries,
namely, plant turn-arounds, plant turn-arounds without
use of flares in International Class 37;
Treatment of materials, namely, treatment of chemicals
and pollutants; treating waste materials from industrial
plants, chemical plants, terminals, pipelines, and
refineries; decontamination of industrial equipment,
namely, decontamination of hazardous materials from
tanks, vessels, piping, and reactors in International Class
40; and
Monitoring services for industrial plants, chemical plants,
terminals, pipelines, and refineries to monitor
environmental compliance and emissions for air quality,
operation efficiency, to ensure proper functioning, and
safety; engineering services in International Class 42.1
In response to a requirement by the Trademark Examining Attorney, Applicant
disclaimed GLOBAL.2 However, the Examining Attorney subsequently refused
registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), as merely descriptive of the identified services.
After the Examining Attorney made the refusal final, Applicant requested
reconsideration and raised a new issue by claiming acquired distinctiveness under
Section 2(f), 15 U.S.C. § 1052(f), without filing an allegation of use of the applied-for
mark.3 Notably, Applicant’s claim was not made in the alternative, and Applicant did
not present any arguments regarding the Section 2(e)(1) refusal in its request for
reconsideration. At that point, the Examining Attorney should have treated

1 Application Serial No. 85839717 has a filing date of February 4, 2013, and is based on
Applicant’s assertion of a bona fide intent to use the mark in commerce under Section 1(b),
15 U.S.C. § 1051(b).
2 TSDR November 21, 2013 Response to Office Action at 1.
3 TSDR February 29, 2016 Request for Reconsideration at 2-3.
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Applicant’s amendment as a concession of the descriptiveness of the mark. The Cold
War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626,
1629 (Fed. Cir. 2009) (“Where an applicant seeks registration on the basis of Section
2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f)
during prosecution presumes that the mark is descriptive”); In re Tennis Indus. Ass’n,
102 USPQ2d 1671, 1674 (TTAB 2012); In re Country Music Ass’n Inc., 100 USPQ2d
1824, 1827 (TTAB 2011). See also TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) § 1212.02(b) (Oct. 2017) and cases cited therein. Instead, in denying the
Request for Reconsideration, the Examining Attorney stated that “it is unclear
whether any new issues have been raised,” because the Examining Attorney
considered it unclear whether Applicant was arguing the inherent distinctiveness of
the mark, or claiming acquired distinctiveness “which is a concession that the mark
is not inherently distinctive.”4 She offered Applicant the opportunity to clarify its
intention in this regard. In Applicant’s next submission, it acknowledged the
Examining Attorney’s inquiry without directly answering it, but went on to argue
only acquired distinctiveness without couching it as a claim “in the alternative,” and
did not argue the underlying descriptiveness issue.5 However, in subsequent Office
Actions and responses thereto, both the Examining Attorney and Applicant did not
treat descriptiveness as conceded by the Section 2(f) claim, and instead made

4 TSDR March 21, 2016 Office Action (second, which superseded the first on the same date)
at 1.
5 TSDR September 1, 2016 Request for Reconsideration at 1.
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arguments supporting or traversing the 2(e)(1) refusal on the merits.6 Both the
Examining Attorney and Applicant also treated descriptiveness as an issue on appeal
in their briefs.7
We disagree with the procedural posture adopted by the Examining Attorney in
this case, as the Section 2(f) claim should have been treated as a concession.
Nonetheless, the Examining Attorney neither treated descriptiveness as conceded
nor informed Applicant that it could no longer argue the merits of the Section 2(e)(1)
refusal, and Applicant apparently considered the issue preserved on appeal. For these
reasons, we consider the merits of the Section 2(e)(1) refusal, below. See In re Binion,
93 USPQ2d 1531, 1538 (TTAB 2009) (although the applicant did not couch his Section
2(f) claim of acquired distinctiveness in the alternative when he argued against the
surname refusal, because the applicant and the examining attorney treated the claim
as an alternative one, the Board did as well); In re Central Sprinkler Co., 49 USPQ2d
1194, 1195 n.3 (TTAB 1998) (although the Board opined that the applicant’s
amendment to the Supplemental Register was not originally made in the alternative,
the Board treated it as such where the examining attorney continued to refuse
registration on both registers, and both the applicant and examining attorney later
discussed the amendment as though it were in the alternative).

6 E.g., TSDR June 22, 2017 Office Action at 1 (addressing descriptiveness and the rationale
for the refusal without mentioning the effect of the Section 2(f) claim as a concession);
4 TTABVUE 1-4 (December 20, 2017 Request for Reconsideration) (includes a substantial
discussion under the heading “The mark is not descriptive”); 5 TTABVUE 2 (January 10,
2018 Denial of Reconsideration) (“the attached evidence supports the conclusion that the
proposed mark is merely descriptive….”).
7 10 TTABVUE (Applicant’s Brief) and 12 TTABVUE (Examining Attorney’s Brief).
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Applicant based its Section 2(f) claim on a prior registration of the same mark,
with a disclaimer of VAPOR CONTROL, for goods,8 as well as an unverified claim of
over five years of use of the mark, stated as follows:
It should be noted that the Mark “Global Vapor Control”
has been in use since June 30, 2010 and has a Registration
Number 4372862 for International Class 011. The
additional classes 037, 040, and 042 are additional services
that have been added as “Global Vapor Control” has
become known in the industry.9
Applicant also submitted what it called a “case study” that it argues shows use of the
mark for the services.10 Applicant did not provide a declaration with, or a date for,
the case study, although it bears a 2015 copyright notice.
The Examining Attorney deemed the Section 2(f) claim insufficient, and
eventually made the Section 2(e)(1) refusal and the rejection of the Section 2(f) claim
final. Applicant again requested reconsideration11 and appealed. The Examining
Attorney denied the request.12 The appeal then proceeded,13 and we now affirm the
refusal to register for the reasons discussed below.

8 Although initially Applicant relied on two registrations, Registration No. 4448115 for the
mark , and Registration No. 4372862 for GLOBAL VAPOR CONTROL in
standard characters, with a disclaimer of VAPOR CONTROL, in its brief on appeal Applicant
limits its reliance to the latter registration for the identical mark as in the subject application.
10 TTABVUE 6.
9 TSDR June 7, 2017 Response to Office Action at 1; see also TSDR September 1, 2016 Request
for Reconsideration at 1.
10 TSDR June 7, 2017 Response to Office Action at 2.
11 4 TTABVUE.
12 5-8 TTABVUE.
13 Although Applicant’s Brief expressed an “assum[ption] that the Examining Attorney is
asserting that the mark is generic,” 10 TTABVUE 6, the Examining Attorney clarified in her
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II. Evidentiary Matter
As an initial matter, we sustain the Examining Attorney’s objection to the
materials submitted as Exhibits 1 and 2 that Applicant attached to its brief, as they
are not from the evidentiary record created during the prosecution of the application.
The record should be complete prior to filing an appeal to the Board. 37 C.F.R.
§ 2.142(d). Therefore, exhibits attached to a brief that were not submitted during
prosecution of the application generally are disregarded as untimely. In re Jimmy
Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016); In re Hollywood Lawyers Online,
110 USPQ2d 1852, 1856-57 (TTAB 2014) (refusing to consider new evidence attached
to the brief); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) § 1203.02(e) (June 2018). Accordingly, we decline to consider Applicant’s
new Exhibits 1 and 2 because they are untimely and outside the record.14
III. Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods [or services] of the applicant is
merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive
within the meaning of the statute “if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In

brief that she “has never asserted that the proposed mark is generic.” 12 TTABVUE 11. Thus,
genericness is not at issue in this appeal.
14 Nonetheless, we note that the exhibits, consisting of an Office Action and Notice of
Allowance from another application of Applicant, would not change the outcome in this case.
The Examining Attorney explicitly stated that she did not object to Exhibit 4. Exhibit 3, the
prior registration, already was in the record.
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re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir.
2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir.
2015).
Descriptiveness must be assessed “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 [or
services] because of the manner of its use or intended use.” Bayer AG, 82 USPQ2d at
1831 (citing In re Abcor Dev., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). The
descriptiveness analysis concentrates on the recitation of services set forth in the
application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed.
Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937,
16 USQP2d 1783, 1787 (Fed. Cir. 1990)). If a mark is descriptive of any of the services
in a class for which registration is sought, it is proper to refuse registration as to the
entire class. Chamber of Commerce of the U.S., 102 USPQ2d at 1219.
Applicant disclaimed GLOBAL, explicitly acknowledged that its “services are
provided globally,”15 and has not argued that GLOBAL is not descriptive. We find
GLOBAL to be descriptive in the context of Applicant’s mark. See In re Pollio Dairy
Prods. Corp., 8 USPQ2d 2012, 2014 n. 4 (TTAB 1988) (disclaimer concedes mere
descriptiveness); see also TMEP § 1209.03(o) (“The terms ‘GLOBAL’ and

15 TSDR August 7, 2015 Response to Office Action at 2.
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‘WORLDWIDE’ are also considered to be merely descriptive of services that are global
or worldwide in scope”).
The record in this case includes ample evidence of the descriptiveness of VAPOR
CONTROL in the context of all three classes of services recited by Applicant. As an
initial matter, Applicant’s own website characterizes Applicant as a “Degassing,
vapor control, and odor destruction specialist,” and refers descriptively to “the vapor
control industry.”16 The digital edition of Business & Industry Connection Magazine
contains a September 1, 2016 article entitled “Tank Degassing, vapor control are
serious operations.”17 The article refers to “[p]remier vapor control vendors” and
states that “[a] degassing and vapor control provider that designs and fabricates its
own degassing equipment will give you much better results ….”18 Many third parties
in the industry also use the term descriptively. For example:
The Zeeco website, under the heading “Vapor Control”
promotes its work “with customers around the world to
meet their global emissions standards with a range of
engineered vapor control, vapor recovery, and flare gas
recovery systems…” and describes maintenance services
and materials treatment services like Applicant’s.19
The website of John Zink Hamworthy Combustion
promotes its “vapor control technologies,” noting that its
“vapor control solutions simplify the process to make your
operations cleaner and more efficient,” and encourages
prospective customers to “contact the vapor control group.”
The website describes maintenance and materials
treatment services like Applicant’s, and touts “worldwide

16 5 TTABVUE 4.
17 7 TTABVUE 4-6 (bicmagazine.com).
18 Id. at 5.
19 5 TTABVUE 5 (zeeco.com).
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parts and service support … to keep your systems online
and your employees operating safely.” 20
The website of PSC describes cleaning and
decontamination services similar to Applicant’s, and
features PSC’s “industry leading Vapor Control
Management Group,” touting its “range of vapor control
applications.”21
Envent Corporation’s website notes that “[d]egassing and
vapor control are critical to get right,” and sets out five
considerations “when choosing a degassing and vapor
control company.” The services described on the website
include the types of services recited by Applicant.22
The website for Evergreen Industrial Services describes
services that mirror Applicant’s, and promotes “Vapor
Control & Degassing Services,” stating that Evergreen
Industrial Services “has been performing various forms of
vapor, odor and emissions control since 1994,” helps
“ensure our clients’ emissions challenges are met,” and has
“the ability to handle low-flow passive vapor control
needs.”23
The Miller Environmental Services, LLC website lists
“Vapor Control” in its menu of services.24
The USA DeBusk website states that “[f]or the highest
level of safety and regulatory compliance, USA DeBusk
provides complete vapor control management for
aboveground storage tanks and pipelines” and its “vapor
control technologies improve safety while decreasing time
on site, reducing costs, and improving overall
efficiencies.”25

20 5 TTABVUE 7-8 (johnzink.com).
21 5 TTABVUE 10 (pscnow.com).
22 5 TTABVUE 12 (enventcorporation.com).
23 5 TTABVUE 16, & 8 TTABVUE 2-4 (evergreenes.com).
24 7 TTABVUE 7-8 (millerenviro.com).
25 8 TTABVUE 5-7 (debusksg.com).
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The Lanier & Associates Consulting Engineers, Inc.
website advertises its “Vapor Control Services” as part of
“the complete range of engineering services on a turnkey
vapor control project.”26
The Ponder Environmental Services, Inc. website promotes
“Degassing/Vapor Control.”27
The Sprint Waste Services website features “Vapor
Control” in its list of “Our Services.”28
The ProAct Services Corporation website advertises its
“Pipeline Degassing & Vapor Control” services, noting that
it has “proven methods for controlling vapors during
evacuation of products containing high concentrations of
VOC’s from pipelines and pipeline metering stations,” and
that the vapor can be drawn out and burned as fuel. The
website invites prospective customers “to request a quote
for your current or future degassing and vapor control
needs.”29
The GEM Mobile Treatment Services website offers “Vapor
Control & Degassing” services identical and similar to
Applicant’s services.30
The Siemens website sets out its “Odor and Vapor Control”
services, including the types of services recited by
Applicant.31
The Warner Nicholson Engineering Consultants website
notes that it “has unique capabilities for providing
consulting engineering services related to vapor control,”
and describes other services that overlap with
Applicant’s.32

26 8 TTABVUE 8 (lanier-engineers.com).
27 8 TTABVUE 10 (ponderenvironmentalservices.com).
28 8 TTABVUE 11-12 (sprintwaste.com).
29 8 TTABVUE 13 (proact-usa.com).
30 TSDR January 10, 2014 Office Action at 2 (gem-mobile.com).
31 TSDR January 10, 2014 Office Action at 4 (water.siemens.com).
32 TSDR January 10, 2014 Office Action at 5-6 (vaporrecovery.com).
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The record shows that those in the field frequently refer to the type of
maintenance and cleaning Applicant identified in International Class 37, the
decontamination and treatment of materials recited in International Class 40, and
the engineering services in International Class 42 as aspects of “vapor control.” We
find unavailing Applicant’s arguments against descriptiveness that rest only on
narrow constructions of the dictionary definitions of “vapor” and “control,” without
acknowledging the significance of widespread descriptive use of “vapor control” in the
industry.
Applying the appropriate standard whether someone familiar with the identified
services will understand the mark to convey information about them, we find that
consumers would immediately and directly understand that Applicant’s services are
global and that they relate to vapor control, a well-recognized term in Applicant’s
industry. See DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1757 (Fed. Cir. 2012); Abcor Dev., 200 USPQ at 218; In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002).
When a mark combines two descriptive terms, such as GLOBAL and VAPOR
CONTROL, the descriptiveness analysis turns on whether the combination of terms
evokes a new and unique commercial impression. We find no such new and unique
commercial impression from the combination in this case. “In considering a mark as
a whole, the Board may weigh the individual components of the mark to determine
the overall impression or the descriptiveness of the mark and its various
components.” In re Oppedahl & Larson LLP, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
Serial No. 85839717
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If the combination retains the descriptive significance of the individual parts, the
mark as a whole must be considered merely descriptive. In re Petroglyph Games Inc.,
91 USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely descriptive for computer
game software); see also In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB
2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and
UV curing systems composed primarily of light-emitting diodes for industrial and
commercial applications).
Overall, the evidence shows that within Applicant’s industry, GLOBAL VAPOR
CONTROL describes a key feature of Applicant’s services. Given the nature and
volume of evidence, we find Applicant’s mark not only merely descriptive of the
identified services but highly descriptive as well.
IV. Acquired Distinctiveness
Descriptive marks may be registered on the Principal Register under Section 2(f)
with a showing of acquired distinctiveness. 15 U.S.C. § 1052(f).33 “To establish
secondary meaning, or 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.” Coach Svcs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012) (internal
quotation marks omitted). We determine whether Applicant’s asserted mark has

33 The statute also provides that the USPTO “may accept as prima facie evidence that the
mark has become distinctive, as used on or in connection with the applicant’s goods in
commerce, proof of substantially exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on which the claim of distinctiveness
is made.” 15 U.S.C. § 1052(f).
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acquired distinctiveness based on the entire record, keeping in mind that “[t]he
applicant … bears the burden of proving acquired distinctiveness.” In re La. Fish Fry
Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citation
omitted). The amount and character of evidence required to establish acquired
distinctiveness depends on the facts of each case and on the nature of the mark sought
to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39
(CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381, 383 (CCPA 1960).
Typically, more evidence is required in cases such as this, where a mark is highly
descriptive. See, e.g., Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d
1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ
1420, 1424 (Fed. Cir. 2005) (“[T]he applicant’s burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.”)). The record, including that third
parties in Applicant’s field frequently use “vapor control” and that they use terms like
“global” and “worldwide” to describe the reach of their services, shows that the mark
is highly descriptive. Moreover, Applicant’s Section 2(f) burden in this intent-to-use
application is even heavier. As the Board noted in In re Olin Corp., 124 USPQ2d 1327,
1335 (TTAB 2017):
We emphasize that, by the very nature of the inquiry,
Section 1(b) applicants face a heavy burden in establishing
that their mark will acquire distinctiveness when use
commences. Accordingly, the required showing for
acquired distinctiveness to “transfer” to new products is a
rigorous one.
With this backdrop, we consider the Section 2(f) claim.
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A claim of distinctiveness under Section 2(f) normally is not raised in a Section
1(b) application before the applicant files an amendment to allege use or a statement
of use because a claim of acquired distinctiveness, by definition, requires prior use.
In re Binion, 93 USPQ2d at 1538; see also Olin, 124 USPQ2d at 1332-33. In this
intent-to-use application, Applicant has yet to file an allegation of use of the mark in
connection with the services. However, an intent-to-use applicant may rely on use of
the mark on other goods or services that are so related to the applied-for services that
the previously-created distinctiveness will transfer. Id. at 1333-34; see also TMEP
§ 1212.09(a). Trademark Rules 2.41(a)(1) and (2) provide that:
(a) For a trademark or service mark–
(1) Ownership of prior registration(s). In appropriate cases,
ownership of one or more active prior registrations on the
Principal Register or under the Trademark Act of 1905 of
the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently
similar to the goods or services in the application; however,
further evidence may be required.
(2) Five years substantially exclusive and continuous use
in commerce. In appropriate cases, if a trademark or
service mark is said to have 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 the five years before the date on which the
claim of distinctiveness is made, a showing by way of
verified statements in the application may be accepted as
prima facie evidence of distinctiveness; however, further
evidence may be required.
37 C.F.R. § 2.41(a)(1) & (2).
Serial No. 85839717
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Applicant relies on its prior registration, Reg. No. 4372862, issued in 2013 for the
mark GLOBAL VAPOR CONTROL, with VAPOR CONTROL disclaimed, for the
following goods:
Chemicals for industrial use, namely, chemicals for use in
odor control, degassing, and volatile organic compound
control in International Class 1; and
Equipment and systems for odor control for industrial use,
namely, ventilating exhaust fans, air filters, and air
filtration units used to eliminate odors; equipment and
systems for degassing, namely, pressure swing adsorption
equipment, temperature swing adsorption equipment,
perm selective membrane equipment, solvent extraction
equipment, pervaporation equipment or solid adsorption
equipment, for the recovery, purification and return of
gases in industrial applications; equipment and systems
for thermal oxidation exhaust gas removal, namely,
ventilating exhaust fans in International Class 11.
Applicant also makes the related assertion that “[a]s listed on the Certificate of
Registration [Reg. No. 4372862], this mark has been used in commerce since March
7, 2008, for over ten years” and asserts that the mark is now in use in connection with
the services.34
Although Applicant’s prior registration is for the same mark as in the subject
application, the prior registration covers goods rather than services such as those at
issue. As the Board held in In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999):
[A]pplicant must establish, through submission of relevant
evidence rather than mere conjecture, a sufficient
relationship between the goods or services in connection
with which the mark has acquired distinctiveness and the
goods or services recited in the intent-to-use application to
warrant the conclusion that the previously created

34 10 TTABVUE 6 (Applicant’s Brief).
Serial No. 85839717
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distinctiveness will transfer to the goods or services in the
application upon use.
Applicant has submitted no convincing evidence of relatedness of the goods to the
services here. To the extent Applicant argues relatedness in its brief by making an
unsupported argument that the goods “have been and continue to be used for the
services,”35 as discussed further below, we reject this argument given the lack of a
verified use statement. To the extent Applicant’s Brief points to its webpage at
Exhibit 4 as proof (“The products and their services are displayed and described on
Applicant’s website.”),36 contrary to Applicant’s statement, the webpage neither
shows use of the mark on the goods identified in the prior registration, nor does it
describe such products. Further, the webpage does not demonstrate either the extent
to which the services in the application are related to the goods in the registration or
that there is a strong likelihood that the mark’s (presumed) established trademark
function for the goods identified in the registration will transfer to the services when
use in commerce occurs. See Rogers, 53 USPQ2d at 1745.
Moreover, as the Examining Attorney has pointed out, Applicant’s prior
registration contains a disclaimer of VAPOR CONTROL, whereas GLOBAL was
treated as inherently distinctive in relation to the goods. Thus, in the prior
registration, Applicant apparently conceded the descriptiveness of and disclaimed the

35 10 TTABVUE 6 (Applicant’s Brief).
36 10 TTABVUE 6 (Applicant’s Brief). We note that the exhibit does not bear the URL or date
generally required, but the Examining Attorney explicitly indicated in her brief that she did
not object to the exhibit, so we will consider it for whatever probative value it may have. See
In re I-Coat Co., LLC, 126 USPQ2d 1730, 1732-33 (TTAB 2018).
Serial No. 85839717
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disputed term in this application – VAPOR CONTROL. And although in the prior
registration, Applicant did not disclaim GLOBAL, it has done so in this application,
thereby conceding its descriptiveness in relation to the services. As the Examining
Attorney has noted, GLOBAL merely describes the global nature of the services at
issue but likely did not describe the goods covered by the prior registration. This point
further underscores why we deem it inappropriate to find a transfer of distinctiveness
from the prior registration to this application.
To the extent Applicant may be asserting a claim under Rule 2.41(a)(2) based on
prior use of the mark on goods or in connection with the services identified in this
intent-to-use application, Applicant’s unverified assertions cannot establish acquired
distinctiveness. The rule clearly requires “a showing by way of verified statements in
the application.” 37 C.F.R. § 2.41(a)(2). See In re Rogers, 53 USPQ2d at 1746 (refusing
to credit declarations that do not clearly assert use in connection with clearly
identified goods and services in a type of commerce lawfully regulated by the U.S.
Congress); see also Olin, 124 USPQ2d at 1337-38 (Board need not address Section 2(f)
claim under Rule 2.41(a)(2) where “Applicant failed to satisfy the statutory
requirement of Trademark Act Section 2(f) to aver that its use of the OLIN mark on
the Historic Products has been substantially exclusive”).
In addition, even assuming, arguendo, that the goods in Applicant’s prior
registration were similar enough to the services at issue such that a transference of
acquired distinctiveness could be presumed, or that Applicant had provided the
requisite verified statement to support its use allegations, we still would reach the
Serial No. 85839717
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same outcome. Trademark Rule 2.41(a) uses the permissive word “may” and does not
mandate that a prior registration for similar goods or services or prior use of the mark
necessarily establishes acquired distinctiveness. In fact, the rule explicitly reserves
discretion to deem the prior registration or use evidence insufficient, noting that
“further evidence may be required.” 37 C.F.R. § 2.41(a). Thus, even with proof that
the goods in the prior registration were sufficiently similar to the services and that
Applicant has used the mark in connection with such goods or with the services in
this application, given the highly descriptive nature of Applicant’s mark for the
applied-for services, we would require further evidence of acquired distinctiveness.
See Royal Crown Co. v. Coca-Cola Co., 127 USPQ2d at 1045; In re Synergistics
Research Corp., 218 USPQ 165, 167 (TTAB 1983) (“[W]e have consistently held that
a declaration or affidavit of continuous and exclusive use as a mark for an extended
period of years is insufficient in and of itself to support registrability under Section
2(f) of the Trademark Act where the term sought to be registered is highly descriptive
in character.”). Applicant has provided no further evidence.
After a careful review of the record, we find that Applicant’s evidence of acquired
distinctiveness does not show that the applied-for mark has come to be recognized as
a source indicator for Applicant. We cannot find that GLOBAL VAPOR CONTROL
has achieved acquired distinctiveness in connection with the applied-for services.
Consumers would immediately understand GLOBAL VAPOR CONTROL, when used
in connection with Applicant’s identified services, merely to describe a key feature of
them. “Our society is better served if … highly descriptive … terms remain available
Serial No. 85839717
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for use among competitors.” In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91
(CCPA 1980) (footnote omitted).
Decision: The refusal to register the mark on the ground that it is merely
descriptive under Section 2(e)(1) and it has not acquired distinctiveness under
Section 2(f) is affirmed.