Keith RobertsDownload PDFTrademark Trial and Appeal BoardApr 3, 2009No. 76670534 (T.T.A.B. Apr. 3, 2009) Copy Citation Mailed: 3 April 2009 AD UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Keith Roberts Serial No. 76670534 _______ Carl L. Johnson of Jacobson & Johnson for Keith Roberts. Verna Beth Ririe, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Drost, Mermelstein, and Bergsman, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On December 19, 2006, applicant Keith Roberts applied under the intent to use provisions of the Trademark Act to register the mark EVENING SYSTEM (in standard character form) for a “device for maintaining continuous positive pressure to the airways of a person while sleeping” in Class 10. Serial No. 76670534. The examining attorney refused registration under Section 2(e)(1) of the Trademark Act on the ground that the mark EVENING SYSTEM is merely descriptive of applicant’s THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 76670534 2 goods. 15 U.S.C. § 1052(2)(e)(1). When the examining attorney made the refusal to register final, this appeal followed. The question in this case is whether EVENING SYSTEM is merely descriptive of applicant’s device for maintaining continuous positive pressure to the airways of a person while sleeping. A mark is merely descriptive if it immediately conveys “knowledge of a quality, feature, function, or characteristics of the goods or services.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Quik- Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). To be “merely descriptive,” a term need only describe a single significant quality or property of the goods. Gyulay, 3 USPQ2d at 1009 (Fed. Cir. 1987) and Mechanize Metal Corp. v. International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). Mere descriptiveness of a mark is not considered in the abstract, but in relation to the particular goods or services for which registration is sought. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). In support of the merely descriptive refusal, the examining attorney made of record dictionary definitions of Ser. No. 76670534 3 the terms “evening” and “system.” The most pertinent definitions are: Evening – The period of decreasing daylight between afternoon and night. System – A group of interacting, interrelated, or interdependent elements forming a complex whole. First Office Action, attachments. The examining attorney has also asked that we take judicial notice of the definition of “continuous positive airway pressure” or CPAP, which is “a technique of respiratory therapy for individuals with or without mechanical assistance in which airway pressure is maintained above atmospheric pressure throughout the respiratory cycle by pressurization of the ventilatory circuit.” American Heritage® Stedman’s Medical Dictionary (2002). We take judicial notice of this definition. 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’s position is: It appears that applicant intends to provide a device to assist an individual’s breathing utilizing the CPAP respiratory therapy technique. Regardless of whether or not this is the applicant’s intent, the applicant’s device is defined within its own identification of goods as being for use while a person is sleeping. In order for this device to be used while a person sleeps, it must necessarily be put on before bedtime, or, as the dictionary defines, in the time period Ser. No. 76670534 4 commonly referred to as the “evening.” The term “evening” thus describes the time of day when the device will most commonly be utilized. The term “system” merely describes the CPAP device as being made up of a group of interacting mechanical or electrical components. The term provides no source- identifying distinction between the applicant’s device and any other device made up of a group of components. Brief at unnumbered pp. 3-4. Applicant maintains that a “search of the term ‘evening system’ through the internet search engine www.google.com … although yielding a plethora of results, failed to [yield] the ‘evening system’ as describing the same or related goods to that of the present application.” Brief at 4 (parenthetical omitted). We note that Google and other truncated search results are entitled to little weight. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine results — which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link — may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations”). See also In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002)(“The examining attorney's print-out of the results of an Internet search by the Yahoo search engine are of little probative value, largely because insufficient text is Ser. No. 76670534 5 available to determine the nature of the information and, thus, its relevance”). In addition, applicant argues that its “device is not specific for use in the evening as stated by the Examiner but is a product that is used at nighttime when the user is asleep or any other time of the day or night that the user sleeps, which could include also naps during the morning, noon, and afternoon.” Brief at 9. It is often said that the “line between descriptive and suggestive marks can be difficult to draw.” Nautilus Group Inc. v. ICON Health and Fitness Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1181 (Fed. Cir. 2004). In this case, the examining attorney has relied on definitions of the common words “Evening” and “System.” While we also “may look to use by competitors of the same term, because if there are numerous synonyms for a common trademarked word, others will have less need to use the trademarked term” (Nautilus Group, 71 USPQ2d at 1181), there is no evidence that the term “evening” is used in association with applicant’s goods to describe the fact that these goods are used while sleeping. Also, as applicant points out, there are numerous other terms that are equally or even better suited to describe the fact that applicant’s products are to be used Ser. No. 76670534 6 while sleeping, such as “bedtime,” “sleep,” “night,” or “p.m.” The examining attorney’s own definition indicates that evening is the period of decreasing daylight between afternoon and night. This is not necessarily the most common sleeping period, which would appear to be night. While a mark can have more than one descriptive or even generic term associated with it, this does not mean that any term that some consumers may understand to refer to a feature of the product is necessarily descriptive of the goods. See In re Electro-Nite Co., 167 USPQ 127 (TTAB 1970) (THE MAYDAY PROTECTION SYSTEM not merely descriptive of an electro-mechanical alarm system adapted for connection to telephone lines in homes and other buildings for requesting emergency assistance from a preselected source by way of a prerecorded message) and In re Air-Beep Corp., 185 USPQ 191, 191 (TTAB 1974) (BEEP and AIR BEEP “equally suggestive of a radio paging system”). We are reluctant to conclude that the term “evening” is synonymous with “sleeping” or that it is descriptive of any goods that are used immediately prior to sleeping. The Federal Circuit’s binding precedent recognizes that descriptive marks must “immediately convey knowledge” of a quality, feature, function, or characteristics of the goods. Bayer, 82 USPQ2d at 1831. See also In re MBNA Ser. No. 76670534 7 America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). With the limited evidence of record, we admit that we have our doubts that consumers will conclude that the term EVENING SYSTEM immediately describes the goods. “It is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork.” Remacle, 66 USPQ2d at 1224. In this case, there is no evidence that the word “evening,” much less the term “evening system” is used to describe a device for maintaining continuous positive pressure to the airways of a person while sleeping. Also, it has not been shown that the term “evening” is used to describe medically-related products that are used at bedtime. Therefore, we are left with little but guesswork if we were to conclude that the mark is merely descriptive. We find that the case of In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972), provides guidance on the issue in this case. It has been recognized by this and other tribunals that there is no easy applicable objective test to determine whether or not a particular mark, as applied to specific goods, is merely descriptive or merely suggestive. The distinction between marks which are “merely descriptive” and marks which are “suggestive” is so nebulous that more often than not it is determined largely on a subjective basis with any doubt in the matter being resolved in applicant’s behalf on the theory that any person who believes that he would be damaged by the registration will have an Ser. No. 76670534 8 opportunity under Section 13 to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that effect. It is believed that a borderline situation exists herein in determining whether or not “THE LONG ONE” is merely descriptive [or] just suggestive of the nature and character of applicant's bread. But, since it has not been shown that the notation “THE LONG ONE”, as distinguished from “the long loaf” or “the longer bread”, has been commonly used or is necessary to be used in the bakery trade; the term “THE LONG ONE” does not with any degree of particularity describe the nature of applicant’s bread even as to length; the term “THE LONG ONE” is being used on applicant’s wrappers as the trademark for its goods; and the registration sought by applicant will not inhibit anyone in the trade from properly describing the length of its bread loaf, it is concluded that the mark should be published in accordance with Section 12(a) for opposition purposes. Our decision here is based on the record created by the examining attorney and applicant. Because a review of the record has not resolved our doubts as to whether applicant’s mark is merely descriptive, as we are required to do, we resolve those doubts in applicant’s favor. In re Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981) (The Board's practice is “to resolve doubts in applicant's favor and publish the mark for opposition”). See also Remacle, 66 USPQ2d at 1224. However, we do find that the term “system” is merely descriptive of applicant’s goods. A “device for maintaining continuous positive pressure to the airways of Ser. No. 76670534 9 a person while sleeping” could consist of “a group of interacting, interrelated, or interdependent elements forming a complex whole.” Accord In re Biesseci S.p.A., 12 USPQ2d 1149, 1150 (TTAB 1989) (“[I]f applicant’s goods came from the United States, ‘AMERICAN SYSTEM’ and design would be seen as nothing more than a primarily geographically descriptive term as applied to applicant’s goods”). The term “system” would immediately describe devices that would have interacting elements forming a complex whole, even if the interacting or interrelated parts are enclosed within a single device. Therefore, a disclaimer of this term is required. Decision: The refusal to register on the ground that applicant’s mark EVENING SYSTEM, as a whole, is merely descriptive is reversed, but, in view of our finding that the word SYSTEM is merely descriptive of applicant’s goods, the mark may not be registered absent a disclaimer of that word under Section 6 of the Trademark Act. If applicant submits a disclaimer of the word SYSTEM within 30 days, the disclaimer will be entered and the application will be forwarded for publication of the mark for opposition. If applicant fails to submit the required disclaimer within 30 days, the board will enter a decision affirming the refusal Ser. No. 76670534 10 of registration based on the applicant’s failure to enter the disclaimer. 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