Interstate Resources, Inc.

Trademark Trial and Appeal Board

May 11, 2011

No. 77787101 (T.T.A.B. May. 11, 2011)

Mailed:
May 11, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Interstate Resources, Inc.
________

Serial Nos. 77787077 and 777871011
_______

John S. Hale of Gipple & Hale for Interstate Resources,
Inc.

Kelly Trusilo, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Kuhlke and Wolfson, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Interstate Resources, Inc., has filed
applications to register as trademarks on the Principal
Register the standard character mark INTERSTATE RESOURCES2

1 Inasmuch as the issues raised by these appeals are similar, the
Board is addressing them in a single opinion. Citations to the
briefs refer to the briefs filed in application Serial No.
77787077, unless otherwise noted; however, we have of course,
considered all arguments and evidence filed in each case.
2 Application Serial No. 77787077, filed on July 22, 2009, based
on an allegation of an intention to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77787077 and 77787101
2
and 3 for services identified as “generation of
electricity” in International Class 40. The examining
attorney refused registration pursuant to Section 6(a) of
the Trademark Act, 15 U.S.C. §1056(a), based on applicant’s
failure to comply with the requirement to disclaim the word
INTERSTATE on the ground that it is merely descriptive of
applicant’s services within the meaning of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. 1052(e)(1).
We affirm the refusal of registration in the absence
of a disclaimer in each application.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is ground for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK

3 Application Serial No. 77787101, filed on July 22, 2009, based
on an allegation of an intent to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Serial Nos. 77787077 and 77787101
3
Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re
Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
In support of her position that the term INTERSTATE is
merely descriptive of applicant’s services, the examining
attorney submitted several dictionary definitions,
including the following:
INTERSTATE – existing or carried on between
states, especially of the US. Oxford English
Dictionary (2010).
Serial Nos. 77787077 and 77787101
4
In addition she submitted excerpted articles from
various online sources, printouts from applicant’s website
and third-party registrations where the term INTERSTATE is
either disclaimed or registered on the Supplemental
Register. In referencing the record, the examining
attorney argues:
A web page from the applicant’s website ...
evidences that applicant is indeed exporting
energy produced to the regional transmission
grid. This web page features information
regarding applicant’s current services, “this
energy can be used at our paper mill ... and the
excess exported for sale to the regional
electrical transmission grid.” ... As stated in
the article ... from the Transmission Agency of
Northern California, a “transmission grid”
consists of a system of interconnected generating
facilities, substations and transmission lines
that provide energy from its sources to its end
users.”

Br. p. 4.

The record also includes the following excerpt from an
online article on energy deregulation:
As the industry continued to develop, utilities
combined into large financial holding companies.
In 1935, almost half of the generation of
electricity in the country was under the control
of three large holding companies. Because of the
size, complexity and interstate nature of these
trusts, their effective regulation by state
public utility commissions became impossible. ...
At the same time, the Federal Power Commission
(now the Federal Energy Regulatory Commission)
was created for the purpose of regulating the
interstate wholesale electricity market.

Serial Nos. 77787077 and 77787101
5
“Electricity Deregulation” August 2004 retrieved from
newsbatch.com.
She concludes that “according to applicant’s own
website, its excess energy generated is being utilized in
the interstate transmission grid.” Br. p. 4.
We find that the examining attorney has made a prima
facie case that the word INTERSTATE used in connection with
applicant’s services is merely descriptive. The word
INTERSTATE clearly and unambiguously describes a
significant feature of the services, namely that they are
interstate in scope, as is demonstrated by the record. We
also find that the word INTERSTATE when combined with the
word RESOURCES and, in the case of Application Serial No.
77787101, the background design, does not lose its
descriptive significance.
Applicant argues that it “is not a carrier of
electricity nor is it a multi-state broker. It merely
generates electricity from steam produced in its waste
disposal process.” Br. p. 4. However, as noted above, the
term INTERSTATE indicates the scope of the service;
applicant does not have to be a broker for the term to have
descriptive significance. It is similar to the terms
“national,” “international,” “global” or “worldwide.”
These terms also may be merely descriptive of services that
Serial Nos. 77787077 and 77787101
6
are nationwide or international in scope. See TMEP Section
1209.03 (7th ed. 2010) and cases cited therein.
In addition, applicant argues that “[a]n ordinary
consumer taken from the realm of the general public would
not normally associate the word ‘interstate’ with the
presently identified services of generating electricity.
It is by no means clear as to what information if any would
be immediately conveyed to prospective purchasers of the
services from Applicant.” Br. p. 4. While the ultimate
end users may include the general public, applicant’s
direct consumers would be operating at the wholesale market
of energy purchasing. As noted on applicant’s website, its
excess energy is “exported for sale to the regional
electrical transmission grid.” In any event, it would be
clear to any consumer that the term INTERSTATE indicates
that the energy generated is for use beyond a local or in-
state use.
Finally, both applicant and the examining attorney
submitted third-party registrations to show that the USPTO
has alternatively treated the word INTERSTATE as
descriptive or not descriptive by sometimes requiring a
disclaimer of the term and sometimes not requiring a
disclaimer. The examining attorney submitted over 35
third-party registrations for various services where the
Serial Nos. 77787077 and 77787101
7
term is either disclaimed, registered under Section 2(f)
based on acquired distinctiveness or resides on the
Supplemental Register. The third-party registrations
submitted by applicant are also for various services,
several are cancelled and five support the opposite
proposition in that they are registered based on acquired
distinctiveness or reside on the Supplemental Register.
For the most part, the registrations are not specific to
the services involved in this case. The third-party
registration highlighted by applicant, for the mark
COLORADO INTERSTATE GAS, is registered under Section 2(f),
indicating the wording is not inherently distinctive. To
the extent these third-party registrations have probative
value they weigh in favor of a finding of mere
descriptiveness. We hasten to add that we do not rely on
them for our ultimate conclusion. As is well established,
prior decisions in other applications are not binding on
the Board and each case is evaluated on its own record. In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001)
Applicant correctly states that in cases of refusals
under Section 2(e)(1) we must resolve doubt in favor of
applicant; however, we have no such doubt in this case.
Serial Nos. 77787077 and 77787101
8
Thus, the disclaimer requirement is appropriate. In
view of the above, the requirement to provide a disclaimer
for the word INTERSTATE is affirmed in each application.
Decision: The refusal to register based on the
requirement for a disclaimer of INTERSTATE is affirmed
in each application. However, if applicant submits
the required disclaimer of INTERSTATE in each
application to the Board within thirty days, this
decision will be set aside as to the affirmance of the
disclaimer requirement.4 See Trademark Rule 2.142(g),
37 C.F.R. §2.142.

4 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use INTERSTATE is
claimed apart from the mark as shown.” TMEP 1213.08(a) (5th ed.
2007).