J & S Innovators, Inc.

Trademark Trial and Appeal Board

Apr 10, 2008

No. 78871020 (T.T.A.B. Apr. 10, 2008)

10 April 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re J & S Innovators, Inc.
________

Serial No. 78871020
_______

Michael D. Oliver of Bowie & Jensen, LLC for J & S
Innovators, Inc.

Tina Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Drost, Taylor, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 27, 2006, applicant, J & S Innovators, Inc.
applied to register the term THE SAND ANCHOR (in standard
character form) on the Principal Register for goods
ultimately identified as “removable plastic apparatus for
retaining tables, chairs, sunshades, umbrellas, volleyball
poles on a beach” in Class 20. The application identifies
the date of first use anywhere and in commerce as January
8, 1994. During the prosecution of the application,
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 78871020
2
applicant amended the application to seek registration
under the provision of Section 2(f) of the Trademark Act.
15 U.S.C. § 1052(f).
The examining attorney1 has refused to register
applicant’s mark on the grounds that “it is incapable of
distinguishing Applicant’s goods from those of others
pursuant to Trademark Act Section 2(e)(1), 15 U.S.C.
Section 1052(e)(1), and the rejection of Applicant’s claim
of distinctiveness because it is insufficient pursuant to
Trademark Act Section 2(f), 15 U.S.C. Section 1052(f).”
Brief at 1. See also TMEP 1209.02 (5th ed. September 2007).
The examining attorney argues that applicant’s
“proposed mark is a generic or highly descriptive
designation of the identified goods.” Brief at 3. The
examining attorney submitted several types of evidence.
First, the examining attorney included definitions of:
Sand – material made of tiny grains; a substance of
fine loose grains of rock or minerals, usually quartz
fragments, found on beaches, in deserts, and in soil
sometimes as a building material

Anchor – any device that keeps an object in place.

See First Office Action, Attachment.

1 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 78871020
3
With her brief, the examining attorney requested that
we also take judicial notice of the definition of the word
“The,” as “adjective indicating one as distinct from
another,” which we do. University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
The examining attorney also submitted the following
excerpts from the internet (emphasis added):
Includes 2 backpack beach chairs, 6” UV coa[ted]
umbrella and sand anchor.
www.readyrentals.com

Rio Sports Sand Anchor…
Product Features
- Sand anchor stops umbrellas from blowing away...
Product description
Umbrella Sand Anchor. Screws umbrella firmly into the
sand…
Customer Reviews:
Bought two of these anchors, one for us and one for my
folks. We had excellent luck with them.
Amazon.com website

Anchor Away Sand Anchor…
This versatile anchor is your solution for beach
umbrellas, fishing rods and other sports anchoring
needs. Made with rugged and durable hard plastic to
make anchoring easy.
East Coast Surf Supply, ebay.com

Our Sand Anchor holds your beach umbrella perfectly in
place and at any angle. Simply twist into the sand
and then snap onto the handle with a quick turn of the
thumb screw.
Coolibar website

Much larger than most beach umbrellas, includes a
handy backpack and sand anchor that screws into the
sand and prevents the umbrella from blowing away.
Ser. No. 78871020
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USimprints.com website

This classic beach umbrella features a frame made of
steel. Rugged Sunbrella marine and awning grade 9.25
fabric. Tote carrying bag and sand anchor/table sold
separately on our website.
Hici Patio Furniture website

Sand Grabber Umbrella Anchor
Stops blow away beach umbrellas.
Aubuchon Hardware website

Beach Umbrella Anchor
The anchor has a wide handle and broad threads making
it easy to drive it into loose sand or packed turf.
Beachstuf.com website

Applicant has submitted the declaration of its
president, Jim Skarda, which contained the following
statements:
- The declarant believes that applicant “was the first
company to use the mark THE SAND ANCHOR” for the goods in
the application (¶ 2).
- The mark has been in continuous and exclusive use
since January 8, 1994 (¶ 3).
- Applicant has spent approximately $140,000 in
“advertising and marketing of the products associated with
the Mark since it began use of the Mark” (¶ 4).
- Applicant has sold approximately 250,000 units of
the product (¶ 4).
- The mark has acquired distinctiveness (¶ 5).
Ser. No. 78871020
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Applicant also points out that it was the owner of a
prior registration for the mark THE SAND ANCHOR (“sand”
disclaimed) for the identical goods except that the term
“plastic” is only found in the pending application’s
identification of goods.
Finally, we sustain the examining attorney’s objection
to applicant’s inclusion of a list of six trademark
registrations in its appeal brief. Not only is it too late
to submit this evidence, but also a list of registration
numbers and marks, even if it was timely submitted would
not be entitled to any weight. In re First Draft Inc., 76
USPQ2d 1183, 1192 (TTAB 2005) (“Submission of the TARR
printout with its appeal brief, however, is an untimely
submission of this evidence”) and In re Duofold, Inc., 184
USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record”).
Descriptiveness/Genericness
Because applicant is now seeking registration under
Section 2(f), there is no question that its mark is merely
descriptive. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840
F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as
here, an applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
Ser. No. 78871020
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lack of inherent distinctiveness as an established fact”)
(emphasis in original). Therefore, the immediate question
is whether the mark THE SAND ANCHOR is generic. Under H.
Marvin Ginn Corp. v. Int’l Association of Fire Chiefs,
Inc., “[t]he critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). The Federal Circuit went on to
explain that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?

Id.

Here, there can be little doubt but that applicant’s
goods are “anchors” because they are devices that keep
objects in place. The evidence clearly shows that these
goods are referred to as “anchors.” See, e.g., “Sand
Grabber Umbrella Anchor - Stops blow away beach umbrellas”
and “Beach Umbrella Anchor - The anchor has a wide handle
and broad threads making it easy to drive it into loose
sand.” It is also clear that these anchors are designed to
be used in the sand to keep items on the beach from blowing
Ser. No. 78871020
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away. The examining attorney asserts that the
identification of goods (removable plastic apparatus for
retaining tables, chairs, sunshades, umbrellas, volleyball
poles on a beach) “is the class or genus of the Applicant’s
goods.” Brief at unnumbered p. 5. We agree that is a
genus of the goods.
“Next, we must determine the relevant public for
applicant's goods.” In re Active Ankle Systems Inc., 83
USPQ2d 1532, 1536 (TTAB 2007). In this case, where the
goods are designed to be used in association with beach
umbrellas and similar items, the relevant public would be
the general public. The question now is whether members of
the relevant public would understand the term THE SAND
ANCHOR to refer to that genus. Marvin Ginn, 228 USPQ at
530. “Evidence of the public's understanding of the term
may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). When
we look at the evidence, it shows that the public would
understand the term SAND ANCHOR to be the name of a product
that anchors beach items in particular into the sand. See,
e.g., “Includes 2 backpack beach chairs, … umbrella and
Ser. No. 78871020
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sand anchor,” “Sand anchor stops umbrellas from blowing
away,” “Anchor Away Sand Anchor,” “Our Sand Anchor holds
your beach umbrella perfectly in place and at any angle,”
“Much larger than most beach umbrellas, includes a handy
backpack and sand anchor that screws into the sand” and
“Tote carrying bag and sand anchor/table sold separately.”
The public encountering the term “Sand Anchor” would
understand that it is a name for these items that restrain
objects from blowing away on the beach.
We add that the definite article “The” is not a
significant feature of applicant’s mark. GMT Productions,
L.P. v. Cablevision of New York City, Inc., 816 F. Supp.
207, 211 (S.D.N.Y. 1993)(“[U]se of the word ‘the’ before an
unprotectable mark does not convert an otherwise generic
term into a descriptive one”). See also In re G. D. Searle
& Co., 360 F.2d 650, 149 USPQ 619, 624 (CCPA 1966) (“[T]he
term ‘the pill’ here functions to identify the product to
the public rather than to identify and distinguish
appellant's goods from those of others”) and In re The
Computer Store, Inc., 211 USPQ 72, 75 (TTAB 1981) (“The
more likely impression conveyed by the initial ‘The,’ as
applicant has used it, is simply that of limiting the noun,
‘store’ to the application specified by the accompanying
Ser. No. 78871020
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adjective, ‘computer.’” THE COMPUTER STORE did not
distinguish applicant’s services).
We find that the evidence shows that the examining
attorney has made out a prima facie case that the term THE
SAND ANCHOR is generic for the identified goods. See In re
Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (When a proposed mark
is refused registration as generic, the examining attorney
has the burden of proving genericness by “clear evidence”).
We disagree with applicant’s argument that the examining
attorney has not presented clear evidence that the mark is
generic. While applicant argues that the examining
attorney “has largely relied on competitors’ advertisements
(Brief at 7), these references are relevant to the issue of
genericness. In re Reed Elsevier Properties Inc., 482 F.2d
1376, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007) (LAWYERS.COM
held generic):
Moreover, in determining what the relevant public
would understand LAWYERS.COM to mean, the board
considered eight websites containing “lawyer.com” or
“lawyers.com” in the domain name, e.g.,
www.massachusetts-lawyers.com, www.truckerlawyers.com,
and www.medialawyer.com. It discussed the services
provided by these websites in order to illuminate what
services the relevant public would understand a
website operating under Reed's mark to provide. These
websites are competent sources under In re Merrill
Lynch, 828 F.2d at 1570, and they provide substantial
evidence to support the board's finding.

Ser. No. 78871020
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Applicant also argues that it has continuously and
exclusively used the term for more than 13 years (Brief at
4), but even a novel way of describing a product was held
to be generic. Clairol, Inc. v. Roux Distributing Co., 280
F.2d 863, 126 USPQ 397, 398 (CCPA 1960)(HAIR COLOR BATH
generic for a liquid for hair coloring) and In re Central
Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (“We agree
with the Examining Attorney that if a purchaser were
seeking to buy sprinklers for an attic, it would be
reasonable to refer to such products as ‘attic’ sprinklers.
The fact that applicant may be the first or the only one
using ATTIC in connection with sprinklers is not
dispositive”). See also In re Helena Rubinstein, Inc., 410
F.2d 438, 161 USPQ 606, 609 (CCPA 1969).
Therefore, we conclude that the examining attorney has
shown that the term THE SAND ANCHOR is generic for the
identified goods.
Acquired Distinctiveness
It has long been held that if a term is generic, no
amount of evidence of acquired distinctiveness can
establish that the mark is registrable. In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 964
(Fed. Cir. 1985). If applicant’s term is only highly
descriptive, we will consider applicant’s evidence that it
Ser. No. 78871020
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submitted to determine if its mark has acquired
distinctiveness. Here, applicant has the burden of proving
that its mark has acquired distinctiveness. In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha Int’l, 6 USPQ2d at 1008.
Applicant’s witness reports that it has been using the
mark for more than thirteen years, but an allegation of
long use of the term does not convert a generic term into a
non-generic term. The witness also reports that it has
sold approximately 250,000 units and spent approximately
$140,000 on advertising over that period. These sales and
advertising figures are relatively modest and we point out
that there is no context for the these figures. Target
Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007
(“The sales figures for 14 years, standing alone and
without any context in the trade, are not so impressive as
to elevate applicant's highly descriptive designation to
the status of a distinctive mark”). Even if these sales
and advertising figures were more significant, the board
has recently pointed out that:
Ser. No. 78871020
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Applicant's long use and revenues suggest that
applicant has enjoyed a degree of business success.
Nonetheless, this evidence demonstrates only the
popularity of applicant's services, not that the
relevant customers of such services have come to view
the designation LENS as applicant's source-identifying
service mark. See In re Bongrain International Corp.,
894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In
re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).

In re Lens.com Inc., 83 USPQ2d 1444, 1448 (TTAB 2007).
Finally, we add that the fact that applicant at one
time owned a now-expired registration for the same mark for
nearly identical goods does not show that its mark has
acquired distinctiveness. In re Phillips-Van Heusen Corp.,
63 USPQ2d 1047, 1048 n.2 (TTAB 2002):
Thus, applicant's expired registration merely
constitutes evidence that the registration issued,
see, e.g., Sunnen Products Co. v. Sunex Int'l Inc., 1
USPQ2d 1744, 1747 (TTAB 1987), but any benefits
conferred by the registration, including the
evidentiary presumptions afforded by Section 7(b) of
the Trademark Act, 15 U.S.C. §1057(b), were lost when
the registration expired.

Accord In re Piano Factory Group Inc., 85 USPQ2d 1522, 1527
(TTAB 2006) (parenthetical omitted) (“Furthermore, the fact
that the mark “VOSE & SONS” was at one time registered on
the Principal Register does not justify registration in
light of the substantial evidence herein as to the primary
significance of the term “VOSE” as a surname”).
Therefore, we conclude that applicant’s evidence falls
far short of demonstrating that its mark has acquired
Ser. No. 78871020
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distinctiveness, even if the mark were ultimately
determined to be merely descriptive for applicant’s goods.
Conclusion
Applicant’s term THE SAND ANCHOR is generic for the
goods recited in the application and, in the event that the
term is not generic, applicant has not demonstrated that
its mark has acquired distinctiveness.
Decision: The refusal to register is affirmed.