88135006 (T.T.A.B. Jan. 24, 2020)

Michael Greene

Trademark Trial and Appeal BoardJan 24, 2020

88135006 (T.T.A.B. Jan. 24, 2020)

Mailed: January 24, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Michael Greene _____ Serial No. 88135006 _____ Mark Terry of Mark Terry PA for Michael Greene. Christopher M. Nunley, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Bergsman, Wolfson and Heasley, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Michael Greene (Applicant) seeks registration on the Principal Register of the mark PYKRETE, in standard character form, for “building construction services,” in Class 37.1 The Examining Attorney refused to register Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark PYKRETE is merely descriptive because pykrete is a material used in the 1 Application Serial No. 88135006, filed September 27, 2018, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce. This Opinion Is Not a Precedent of the TTAB Serial No. 88135006 - 2 - construction of ice structures and, therefore, the word “pykrete” describes a key aspect of Applicant’s building construction services (i.e., Applicant may use pykrete in rendering its services). Section 2(e)(1) of the Trademark Act precludes registration of a mark on the Principal Register that, when used in connection with an applicant’s goods or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). We “must consider the mark as a whole and do so in the context of the goods or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (emphasis added); In re Calphalon, 122 USPQ2d 1153, 1162 (TTAB 2017). Indeed, “[t]he question is 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, 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). “The major reasons for not protecting such [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus Serial No. 88135006 - 3 - avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir. 2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)). It is the examining attorney’s burden to show that a term is merely descriptive of an applicant’s goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts to Applicant. Id. The Examining Attorney submitted the evidence summarized below to show that pykrete is a characteristic or key aspect of Applicant’s building construction services: 1. MERRIAM-WEBSTER.com defines “pykrete” as “a frozen mixture of water and wood pulp that gives a tough resistant product used experimentally in artic military structures.”2 2 The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Applicant submitted the lack of an entry, for the term “Pykrete” from the ENCYCLOPAEDIA BRITANNICA as attachment to its brief. 5 TTABVUE 11. The Examining Attorney objected to the encyclopedia evidence on the ground that Applicant did not timely file it. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). We overrule the objection because the Board may take judicial notice of information or, in this case, the lack of information from encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011); In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works). Serial No. 88135006 - 4 - 2. “Pykrete” entry posted on Wikipedia.org3 Pykrete is a frozen composite material, originally made of approximately 14 percent sawdust or some other form of wood pulp (such as paper) and 86 percent ice by weight (6 to 1 by weight). During World War II, Geoffrey Pyke proposed it as a candidate material for a supersized aircraft carrier for the British Royal Navy. Pykrete features unusual properties, including a relatively slow melting rate due to its low thermal conductivity, as well as a vastly improved strength and toughness compared to ordinary ice. These physical properties can make the material comparable to concrete, as long as the material is kept frozen. 3. StructuralIce.com/pykret-dome.html4 PYKRETE DOME By realizing the Pykrete Dome project in January 2014, the world record for building the largest ice dome was set. … DESIGN The shape of the ice structure is based on a geodesic dome, because this shape will only cause very little tensile forces in structure. Ice has very low tensile strength, but with this shape very thin ice structures are still possible. Structural analyses of the dome indicated that the largest forces occur at the bottom and around the entrance of the dome. For those reasons pykrete is applied only in the lower part of the dome. In the upper part plain ice is sufficient. 4. New Atlas website (newatlas.com/pykrete-basilica/32447/)5 Dutch university plans on building a church out of ice and saw dust 3 January 9, 2019 Office Action (TSDR 4). All citations to documents contained in the Trademark Status & Document Retrieval (TSDR) database are to the downloadable .pdf versions of the documents. 4 March 3, 2019 Office Action (TSDR 5). 5 March 3, 2018 Office Action (TSDR 6). Serial No. 88135006 - 5 - How do you top building the world’s largest ice dome? Well, if you’re the Eindhoven University of Technology, you build a 40-meter (131-ft)-high model of Barcelona’s Sagrada Familia basilica … and you build it out of “pykrete.” * * * The construction process will involve setting up inflatable molds, spraying a layer of snow over them, followed by a layer of water containing 10 percent sawdust. That water/sawdust mix will soak into the snow and freeze, forming a material known as pykrete. The wood fiber content in pykrete results in its being three times stronger than pure ice. 5. The National Academies of Science, Engineering and Medicine website (trid.trb.org/view/1429256)6 Ice Composites as Construction Materials in Projects of Ice Structures It is known the application of ice as a building material has some limitations. … An overview of all existing construction methods, which involve ice structures, is provided in the paper. At present time only three types of ice composite such as pykrete (pykrete is a frozen composite material made of the mix of sawdust or some other form of wood pulp and water or sea water), cryogel ice-soil composite and ice reinforced by geomaterials, have 6 March 3, 2019 Office Action (TSDR 9). Serial No. 88135006 - 6 - been applied successfully in engineering of structure in the various projects. 6. The Journal of the American Institute of Architects (architectmagazine.com/technology/a_promising_future_for_ice_architecture_ o)7 A Promising Future for Ice Architecture Colder winters and 3D manufacturing technology could mean a new market for building design Ice architecture – think frozen hotels, igloos, and winter festivals – seems quite the novelty in the context of a hotter planet … * * * The latter material example is called Pykrete, a composite developed in 1942 by a British military scientist who proposed the construction of aircraft carriers out of 86 percent ice and 14 percent sawdust. … Reinforced ice composites like Pykrete offer four benefits over plain ice structures: increased tensile strength, reduced creep rate, accelerated construction due to more ductile material behavior, and reduced weight due to less volume of required material. 7. College of Engineering and Mines website (cem.uaf.edu/news/2013-ice-srch.aspx)8 Close to Completion – 2013 Ice Arch The architectural brain behind this year’s structure is co- captain of the ice arch team Ryan Cudo. Inspired by the idea of his classmate Pat Brandon, Cudo decided to use a rather interesting composite material for building: pykrete. Pykrete is mixture of saw dust [sic] and water, 7 May 3, 2019 Office Action (TSDR 5). 8 May 3, 2019 Office Action (TSDR 8). Serial No. 88135006 - 7 - that, when kept frozen, exhibits the structural strength and durability of concrete. 8. Gizmodo.com website9 A Bizarre WWII-Era Supermaterial Made of Ice Is Making a Comeback Steel was in short supply during the height of World War II, and there was nothing to be done but invent a replacement. One proposal was called Pykrete, a mixture of ice and sawdust that melted incredibly slowly. The above-noted evidence shows that pykrete is a building material comprising wood pulp and ice. As such, Applicant could use pykrete in rendering his building construction services. This would be of particular interest to potential purchasers in cold climates, as well as competitors, who could consider the use of such building materials. Thus, pykrete identifies a potential characteristic, feature, or component of the broadly identified “building construction services.” See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1781 (Fed. Cir. 2003) (“MONTANA SERIES and PHILADELPHIA CARD are merely descriptive of a significant feature or characteristic of the affinity credit card services, i.e., feeling of pride in identification with the specific regional location.”); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE is merely descriptive of potpourri because it conveys the key characteristic of the product, its scent); Beef & Brew, Inc. v. Beer & Brew, Inc., 389 F. Supp. 190, 185 USPQ 531, 534 (D. Or. 1974) (“A name that tells the diner what his dinner will be is descriptive.”); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953 (TTAB 2018) (MECHANICALLY FLOOR-MALTED describes a 9 May 3, 2019 Office Action (TSDR 10). Serial No. 88135006 - 8 - characteristic of applicant’s services because it is “an adverbial phrase that immediately conveys how the ‘[p]rocessing of agricultural grain’ is performed.”); In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012) (COLUMBIANA COFFEE HOUSE is merely descriptive for restaurant services because “consumers encountering applicant's mark … will immediately understand the term COLUMBIANO as describing a particular type of coffee that will be served in the coffee house, that is, coffee having certain characteristics that are associated with authentic Columbia coffee.”); In re Vehicle Info. Network Inc., 32 USPQ2d 1542, 1543 (TTAB 1994) (THE NATION’S LOCAL ELECTRONIC CLASSIFIEDS is merely descriptive of “computer services namely, information storage and retrieval in the field of vehicles available for sale by dealers and private parties" because it indicates the nature of applicant’s services). We have often found that terms descriptive or generic for goods are at least descriptive of the services involving those goods. We agree with applicant that the sale of pencils is not the central characteristic of applicant’s services. Nevertheless, pencils are significant stationery/office supply items that are typically sold in a store of applicant’s type, that is, a stationery and office supply. While applicant’s stores may carry a variety of products, pencils are one of those products, and, the term "pencils" is merely descriptive as applied to retail stationery and office supply stores. In re Pencils, Inc., 9 USPQ2d 1410, 1411 (TTAB 1988). See also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (CHURRASCOS, a typed of cooked meat, is the generic term for a restaurant featuring that churrascos steak); In re Lens.com, Inc., 83 USPQ2d 1444, 1447 (TTAB 2007) (“Because ‘lens’ is a Serial No. 88135006 - 9 - name for the contact eyewear which comprises the subject matter of applicant’s services, the term is likewise a generic name for the retail Internet store services themselves.’); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 (TTAB 2003) (applicant’s mark, the Euro symbol (€), is merely descriptive for, inter alia, online financial services because the Euro is a feature of applicant’s services); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791 (TTAB 2020) (BONDS.COM is generic for “providing information regarding financial products and services via a global computer network, namely, investment research, subscription services, market commentary, portfolio analysis, debt instrument conversion, yield performance, and pricing analysis, with respect to taxable and tax exempt debt instruments, and other related investment products and services, namely, investment securities.”); Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1287 (TTAB 1998) (“the words ‘beer’ and ‘brewski’ as applied to bar services (the services set forth in petitioner’s pleaded registration) are highly descriptive of said services.”); In re Putman Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (FOOD & BEVERAGE ONLINE is merely descriptive for “a news and information service updated daily for the food processing industry, contained in a database” because it “directly conveys information about the nature of the services, namely the subject matter of the computer-accessed news and information service.”). Thus, potential consumers will perceive pykrete as, and competitors have a right to use pykrete to designate pykrete as, a potential building material. Serial No. 88135006 - 10 - “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. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Thus, it is not necessary, in this instance, that a prospective client of Applicant’s building construction services be immediately apprised of the full panoply of building materials at Applicant’s disposal for the term pykrete to be merely descriptive. In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2001). Applicant offers several reasons PYKRETE is not merely descriptive. First, Applicant argues that because pykrete is a “frozen composite material used to make things,” “the consumer’s mind would evoke thoughts of frozen composite material,” that is “quite different from Applicant’s services.”10 However, as discussed above, our case law holds that if a mark is descriptive of a characteristic, feature or component of the services, it is descriptive of the services. In this regard, Applicant’s description of services, building construction services, is broad enough to include the construction of ice-related structures using pykrete. “Trademark cases must be decided on the basis of the identification of goods as set forth in the application.” In re Allen Elec. and Equip. Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972) (“Since the goods are described merely as “antennas” and that term is broad enough to encompass “scanning antennas,” the mark SCANNER as applied to the goods is merely 10 Applicant’s Brief (5 TTABVUE 3). Serial No. 88135006 - 11 - descriptive.”); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1463 (TTAB 2014) (“The question of registrability must be determined, in proceedings before the Board, on the basis of the services as set forth in the registrations, rather than in reference to the precise nature of the services on or in connection with which the marks are actually used or intended to be used.”); In re Vehicle Info. Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994) (same). Cf. CyberFinancial.Net, 65 USPQ2d at 1791 (BONDS.NET is generic for, financial services including, inter alia, “taxable and tax exempt debt instruments” because “taxable and tax exempt debt instruments encompass bonds). Second, Applicant contends that the USPTO has a “policy” of registering marks identifying construction materials for construction services.11 Applicant cites three registrations and one application. Pending applications are evidence only that the applications were filed on a certain date and thus have no probative value. See Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992). Applicant submitted excerpts from the three registrations listed below:12 1. Registration No. 5344150 for the mark STICKS AND BRICKS, in standard character form, for “building construction,” in Class 37; 11 Applicant’s Brief (5 TTABVUE 4-5). 12 February 13, 2019 Response to Office Action (TSDR 8-9). Because the Examining Attorney has not objected to the introduction of these excerpts and has treated them as of record in his brief, we deem them to be admissible. Serial No. 88135006 - 12 - 2. Registration No. 4963879 for the mark GREEN BRICK PARTNERS, in standard character form, for, inter alia, “construction services, namely, planning, laying out and custom construction of residential communities,” in Class 37; and 3. Registration No. 2871466 for the mark BUILDER’S BLOC, in typed drawing form, for, inter alia, “residential and commercial building construction,” in Class 37. Three registrations that share some similarities with Applicant’s mark hardly constitute a USPTO policy. Moreover, even if some prior registrations had some characteristics similar to Applicant’s mark, the USPTO’s allowance of such prior registrations does not bind the Board. See In re Nett Designs, Inc., 236 F. 3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977) (“third-party registrations are not conclusive on the question of descriptiveness.”). As the Board explained in Scholastic Testing Serv., “we are not so much concerned with what has been registered, but rather what should or should not be registered.” Id. Third, Applicant cites the “competitors’ need” test and argues that the registration of the mark PYKRETE for “building construction services” will not remove a descriptive characterization from trade repertoire.13 However, as noted at the beginning of this decision, the test for mere descriptiveness is whether a term “immediately conveys knowledge of a quality, feature, function, or characteristic of 13 Applicant’s Brief (5 TTABVUE 8-9). Serial No. 88135006 - 13 - the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.2d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing Gyulay, 3 USPQ2d at 1009). “There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.” In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009). See also In re BetaBatt, Inc., 89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985). Finally, as to Applicant’s contention that any doubt as to the question of descriptiveness should be resolved in Applicant’s favor,14 we merely state that after a careful review of the facts as set forth in the record of the present case, we do not entertain any doubts pertaining to the issue of descriptiveness of the mark involved in this appeal, and are firmly of the opinion that Applicant’s mark PYKRETE proposed for use in connection with “building construction services” is merely descriptive. Decision: The refusal to register Applicant’s mark PYKRETE is affirmed. 14 Applicant’s Brief (5 TTABVUE 9).