Michael Starr

Trademark Trial and Appeal Board

Sep 10, 2015

No. 85971474 (T.T.A.B. Sep. 10, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Michael Starr
_____

Serial Nos. 85969016 and 85971474
_____

Howard David Leib of Howard Leib PC,
for Michael Starr.
Brian Pino, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Cataldo, Wellington and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Michael Starr (“Applicant”) seeks registration on the Principal Register of the
marks VAPOR CUP1 and WEVAPS VAPOR CUP2 (both in standard characters)
identifying the following goods:

1 Application Serial No. 85969016 was filed on June 25, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.

2 Application Serial No. 85971474 was filed on June 27, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial Nos. 85969016 and 85971474
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Electrically-powered handheld vaporizers for vaporizing vaporizable constituents
of herbal and plant matter for creating an aroma in International Class 11.
The Trademark Examining Attorney has refused registration of Applicant’s
VAPOR CUP mark under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on
the ground that Applicant’s mark merely describes a function, feature or
characteristic of the identified goods.
The Examining Attorney has refused registration of Applicant’s WEVAPS
VAPOR CUP mark in the absence of a disclaimer of VAPOR CUP under Trademark
Act Section 6(a), 15 U.S.C. § 1056(a), because this wording merely describes a
function, feature or characteristic of the identified goods and constitutes an
unregistrable component of the mark.
In both applications, the Examining Attorney required Applicant under
Trademark Rule 2.61(b), 37 CFR § 2.61(b), to provide additional information about
the terms VAPOR and CUP, and the identified goods. Applicant’s asserted failure to
comply with this requirement is an additional basis for refusal of registration.
When the refusals were made final, Applicant appealed and requested remand.
After the Board granted Applicant’s requests for remand and the Examining
Attorney was not persuaded thereby to withdraw the refusals of registration, the
appeals were resumed.3

3 On March 20, 2015, prior to the filing of the Examining Attorney’s appeal brief, Applicant
filed a paper titled “Applicant’s Reply to Examiner’s Denial of Reconsideration” rearguing
points raised in his original request for remand. Inasmuch as there is no provision in the
Trademark Rules for the filing of such a paper, and also because the arguments therein are
essentially repeated in Applicant’s reply brief, the March 20, 2015 communication will be
given no consideration.
Serial Nos. 85969016 and 85971474
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I. Proceedings Consolidated
When, as here, Applicant has filed ex parte appeals to the Board in two co-
pending applications, and the cases involve common issues of law or fact, the Board,
upon request by the Applicant or Examining Attorney or upon its own initiative,
may order the consolidation of the appeals for purposes of briefing, oral hearing, or
final decision. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012)
(Board sua sponte consolidated two appeals); In re Country Music Association, Inc.,
100 USPQ2d 1824, 1827 (TTAB 2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d
1031, 1033 (TTAB 1997) (Board sua sponte considered appeals in five applications
in a single opinion). See also TBMP § 1214 (2015) and authorities cited therein.
In this case, the involved applications present closely related marks and
identical goods, refusals of registration directed toward the same wording in both
marks, and highly similar records. Accordingly, the Board consolidates these
appeals. References to the briefs and record refer to Application Serial No.
85969016 unless otherwise indicated.4
II. Evidentiary Issue
Before proceeding to the merits of the refusals to register, we address an
evidentiary matter in both applications. In his brief, the Examining Attorney raises
the following objection to evidence submitted by Applicant:
The applicant submitted a list of alleged third party registrations in the
April 4, 2014, response. However, the applicant never made the alleged
registrations of record prior to appeal even though the applicant was

4 Evidence cited in this decision was introduced into the record in both involved
applications.
Serial Nos. 85969016 and 85971474
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advised in footnote No. 1 of the April 24, 2014, final Office action, that
to make third party registrations part of the record, an applicant must
submit copies of the registrations, or the complete electronic equivalent
from the USPTO’s automated systems, prior to appeal. Because the
applicant did not make the registrations properly of record prior to
appeal, the examining attorney objects to consideration of the
applicant’s alleged registration evidence.5

Applicant’s list of asserted registrations includes the registration numbers,
marks, goods and, where applicable, disclaimers of terms comprising the marks.6
The list also includes screenshots from Internet websites showing photographs of
certain goods, purportedly showing use of the marks in the listed registrations.7 As
the Examining Attorney made clear in his April 24, 2014 Office Action,8 to make a
third-party registration of record, a copy of the registration, either a copy of the
paper USPTO record, or a copy taken from the electronic records of the Office,
should be submitted. See In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73
(TTAB 2006); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). See also generally
Trademark Board Manual of Procedure (“TBMP”) § 1208.02 (2015) and authorities
cited therein. Applicant did not provide copies of the listed registrations as
instructed. Inasmuch as Applicant was warned of the evidentiary failing at a time
when he could correct the deficiency, and still failed to correct it, the list of

5 11 TTABVUE 3. Record citations are to TTABVUE, the Trademark Trial and Appeal
Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
Citations to the examination record refer to the Trademark Office’s online Trademark
Status and Document Retrieval system (TSDR), by date and page number.

6 Applicant’s April 4, 2014 communication p. 6-10.

7 Id. at 12-19.

8 April 24, 2014 Office Action at 7, FN 1.
Serial Nos. 85969016 and 85971474
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registrations will not be considered. The screenshots of photographs of goods
accompanying Applicant’s list of registrations will be considered for such probative
value as they may possess.
We observe nonetheless that even if we had considered the list, our decision
would be the same inasmuch as the goods in the listed registrations are dissimilar
from the ones at issue herein and none of the involved marks include both the terms
“vapor” and “cup.” Further, any expired registrations among those asserted are also
of no value. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide
constructive notice of anything.”).
III. Requirement for Additional Information
The Examining Attorney required Applicant to submit the following information
about the goods in his first Office Action:9
1. Does VAPOR, CUP, or VAPOR CUP have any significance as
applied to the goods and/or services other than trademark and/or
service mark significance?

2. Does VAPOR, CUP, or VAPOR CUP have any significance in the
relevant trade or industry other than trademark and/or service mark
significance?

3. If available, the applicant will provide a website address at which
the goods and/or services are offered and/or the mark is used. If no
website is available, then the applicant will state this fact for the
record.

9 October 10, 2013 Office Action at 4-5.
The Examining Attorney issued an identical requirement for additional information in
application Serial No. 85971474 with the exception of question 12 below which was omitted.
We observe that request for information No. 12 appears to be inappropriate inasmuch as it
calls for a legal conclusion rather than information regarding the nature of the mark or
goods.
Serial Nos. 85969016 and 85971474
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4. [NOTE: Providing a website address or patent information does not
obviate this requirement.] To permit proper examination of the
application, applicant must submit additional product information
about the goods. See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67
USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested
product information should include fact sheets, instruction manuals,
and/or advertisements. If these materials are unavailable, applicant
should submit similar documentation for goods of the same type,
explaining how its own product will differ. If the goods feature new
technology and no competing goods are available, applicant must
provide a detailed description of the goods.
The submitted factual information must make clear how the goods
operate, their salient features, and their prospective customers and
channels of trade. Conclusory statements regarding the goods will not
satisfy this requirement.

5. Applicant must provide copies of any patent and/or patent
application documentation relating to the goods.

6. Will the goods look like or be shaped like a cup?

7. Will the goods function as a cup?

8. Will the goods incorporate a cup or be used with a cup?

9. Will the goods produce vapor?

10. Will the goods regulate or process vapor?

11. Will the goods deliver vapor to the user?

12. Is VAPOR CUP the apt name for the goods?

13. Is vaporcup.com shown in the attached evidence the applicant’s
website?

In response, Applicant submitted the following statements:10

10 Applicant’s April 4, 2014 communication at 7-8, 10.
Serial Nos. 85969016 and 85971474
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Applicant submitted with his response drawings from his design patent application.
The following drawing is illustrative:11

11 Id. at 20-24.
Serial Nos. 85969016 and 85971474
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The Examining Attorney addressed Applicant’s response and required further
information about the goods in his final Office Action:12
The information requested below is necessary to the examination of
the application because it will provide a more in-depth understanding
of the mark and/or issue(s) at hand. The applicant’s response seems to
have ignored some of the questions and requirements presented. The
applicant must directly respond to the questions posed and provide
the required information. The applicant should also note that a partial
submission of the patent information requested is not acceptable and
does not meet the requirement for information; the applicant must
provide all of the available patent information. Moreover, the
information will help to determine whether the proposed mark is
generic, generic as to certain terms, or allowable on the Supplemental

12 April 24, 2014 Office Action at 5.
Serial Nos. 85969016 and 85971474
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Register. As a consequence, the information requirement is
maintained and made FINAL. …

The applicant must directly answer the following question(s) and/or
provide the information requested:

1. Do VAPOR, CUP, or VAPOR CUP have any significance as applied
to the goods and/or services other than trademark and/or service mark
significance?

2. Do VAPOR, CUP, or VAPOR CUP have any significance in the
relevant trade or industry other than trademark and/or service mark
significance?

3. To permit proper examination of the application, applicant must
submit additional product information about the goods. See 37 C.F.R.
§2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In
re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re
DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
The requested product information should include fact sheets,
instruction manuals, and/or advertisements. If these materials are
unavailable, applicant should submit similar documentation for goods
of the same type, explaining how its own product will differ. If the
goods feature new technology and no competing goods are available,
applicant must provide a detailed description of the goods.
The submitted factual information must make clear how the goods
operate, their salient features, and their prospective customers and
channels of trade. Conclusory statements regarding the goods will
not satisfy this requirement.

4. Applicant must provide copies of any (meaning all) patent and/or
patent application documentation relating to the goods.

5. Will the goods produce vapor?

6. Will the goods deliver vapor to the user?

Applicant did not file a request for reconsideration other than the request for
remand submitted as part of his appeal brief. In his brief, Applicant argues as
follows:
Serial Nos. 85969016 and 85971474
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The examiner also stated that the applications were refused for the
requirement of information, but all information requested in both the
First and Second Office actions were responded to by Applicant in his
response to the First Office Action and all documentation then
available had already been supplied to the examiner.13

Applicant further argues that he “also submitted a copy of his patent application
relating to goods to be sold under the “Vapor Cup” and “WeVaps Vapor Cup”
marks.”14
In his brief, the Examining Attorney argues as follows:
[T]he applicant never provided a response to whether the wording
VAPOR or CUP, as individual terms, has any significance as applied to
the goods other than trademark significance. The applicant never
provided a response to whether the wording VAPOR or CUP, as
individual terms, has any significance in the relevant trade or
industry. Nor did the applicant provide additional product information
about the goods even though the existence of the applicant’s website
makes it seem as though such information may be available.
Furthermore, the applicant only submitted drawings for the
applicant’s patent information but did not submit the remainder of the
patent information that presumably describes the claims in the patent
(which may have a direct bearing on the merely descriptive refusal
requirement if the patent claims describe a vapor function and/or cup
feature or function). Nor did the applicant respond to the questions
regarding whether the goods will produce vapor or deliver vapor to the
user.15

The aforementioned information is reasonably necessary to the
examination of the intent-to-use application because it has a direct
bearing on the merely descriptive refusal. For example, if the terms
VAPOR and/or CUP have non-trademark significance as applied to the
goods and/or in the relevant trade or industry, then that information
will reinforce the refusal. Furthermore, the information will give
additional information on which to consider whether the proposed

13 4 TTABVUE 2, FN 1.

14 Id. at 11.

15 11 TTABVUE 11.

Serial Nos. 85969016 and 85971474
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mark is generic as a whole or whether certain parts of the proposed
mark are generic. The same can be said of the additional information,
particularly the applicant’s patent information in which claims
regarding the goods will be described.16

Because the applicant did not provide the reasonably necessary
information, the applicant has robbed the Office of the opportunity to
have pertinent information on which to maintain or withdraw the
refusal and/or issue an additional refusal or requirement. As a result,
the applicant’s failure to provide the information requested should
result in the refusal of the application as a whole on this basis alone.17

The Examining Attorney also makes the following acknowledgment:
The applicant’s April 4, 2014, response at TICRS page 3 does state that
the wording VAPOR CUP has no significance as applied to the goods or
in the relevant trade or industry. The examining attorney therefore
withdraws the information requirement as in final information
requirement questions Nos. 1 and 2 to the wording VAPOR CUP as a
whole.18

In his reply brief, Applicant argues as follows:
Contrary to the statements made by the Examiner in his brief,
Applicant has fully responded to each and every one of the information
requirements demanded by the Examiner. Also contrary to the
Examiner’s statements, not all of these requirements demanded
“reasonably necessary” information. As the information demanded in
the Second Office Action are an identical subset of the information
demanded in the First Office Action, and as the omission of items from
the First Office Action on the Second Office Action is a clear indication
that even the Examiner deemed those items responded to, we will
address only the demands identified in the Second Office Actions.

a. Items 1 and 2, Significance of VAPOR, CUP or VAPOR CUP as
applied to the goods and in the relevant trade or industry.
Although the Examiner listed this as a continuing demand in the
Second Office Action, and lists it in his Brief in such a manner as to
make it appear that these items were never responded to, the
Examiner, hidden away in footnote 3 to his brief, acknowledges these

16 Id. at 11-12.
17 Id. at 13.
18 Id. at 11, FN 3.
Serial Nos. 85969016 and 85971474
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were, in fact, responded to. The Examiner’s repeating them in the
Second Office Action was, therefore, an error on his part. For the
avoidance of confusion, and to be abundantly clear, neither “Cup” nor
“Vapor Cup” have [sic] any significance as applied to the goods or
relevancy in the trade or industry. As has been repeatedly
acknowledged, the Vapor Cup vaporizer does produce vapor.

b. Item 3 - Additional Product Information about the Goods.
As was stated in Applicant’s Initial Brief, any and all available
information was submitted with the response to the First Office
Action. As of April 4, 2014, there was no additional material to submit.

c. Item 4 - Patent Application Information
This information was supplied. The Examiner’s statements concerning
potential negative impact based on a review of claims is disingenuous.
As Examiner is aware, this item relates to a design patent application.
The drawings submitted are the claims.

d. Items 5 and 6 - “Will the goods produce vapor?” and “Will the goods
deliver vapor to the user?”
These items were fully responded to in Applicant’s response to the
First Office Action. In that response, the following two statements
were made: “The product is a device which converts herbs into a form
in which they may be inhaled. The device is not made of vapor and
does not, as its primary function, contain vapor. Its primary function is
the conversion of solid to a gaseous form, and it is that function, not
the gas itself, that the consumer will associate with the device.”
Response to First Office Action at pages 7-8 and “As a vaporizer, the
goods are anticipated to transform a particular substance from solid to
gas form for users to inhale, however the device does not regulate or
process vapor.” Response to First Office Action at pages 10 These
statements answer both questions. Further, the Examiner clearly has
no doubt that, as Applicant has acknowledged, vapor is produced by
the goods. His claim that his review of this application was in any way
hindered by virtue of his belief that Applicant did not respond to items
5 and/or 6 is disingenuous.19

19 12 TTABVUE 5-7.
Serial Nos. 85969016 and 85971474
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“The Office may require the applicant to furnish such information ... as may be
reasonably necessary to the proper examination of the application.” Trademark
Rule 2.61(b). As the Board noted recently:
Failure to comply with a request for information is
grounds for refusal of registration. In re Cheezwhse.com
Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI
Partnership LLP, 67 USPQ2d 1699, 1701(TTAB 2003);
TMEP § 814. In view of applicant’s equivocal responses
(not to mention its complete silence on this point in its
brief), we find that applicant has not complied with the
requirement for more specific information.
In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013).
A request for information must be clear, and the information requested must be
“reasonably necessary” for examination, see In re SPX Corp., 63 USPQ2d 1592, 1597
(TTAB 2002) (affirming requirement under Trademark Rule 2.61(b) “because … the
request for information was reasonable”). An examining attorney generally has
considerable discretion in deciding whether and what information should be
requested pursuant to Trademark Rule 2.61(b). An examining attorney’s ability to
determine the registrability of a trademark is impaired without a clear
understanding of the identified goods and services or of the meaning of the mark,
and the applicant is often in the best position to supply that information. This is
particularly the case where, as here, the applications at issue are based upon an
assertion of a bona fide intent to use the mark in commerce, and there are no
specimens of record or other evidence of use of the applied-for marks. Finally, it is
settled that the failure to comply with a Trademark Rule 2.61(b) requirement is
itself a proper ground for refusal of registration, even if it is the only outstanding
Serial Nos. 85969016 and 85971474
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refusal or requirement. In re DTI P’ship LLP, 67 USPQ2d 1699 (TTAB 2003)
(affirming refusal to register under Trademark Rule 2.61 without reaching refusal
under Trademark Act § 2(e)(1)).
In this case, and as discussed above, the Examining Attorney has acknowledged
that Applicant’s responses in its April 4, 2014 communication are sufficient to
answer the outstanding request Nos. 1 and 2 as to VAPOR CUP as a whole, and the
Examining Attorney has withdrawn the information requirement with regard
thereto.
While not explicitly stated, the requirement for information in request Nos. 1
and 2 appear to remain outstanding as to the individual terms VAPOR and CUP.
The Examining Attorney’s six outstanding requests for information – Nos. 1 and 2
as limited above and Nos. 3-6 – all deal with the terms VAPOR and/or CUP and
their significance to the identified goods. Applicant was required to submit
additional product information, if available, and “similar documentation” regarding
related goods if not; provide copies of all “patent application documentation relating
to the goods”; and answer whether VAPOR or CUP possess any significance as used
in connection with the goods and in the relevant trade, and whether the goods
produce vapor or deliver vapor to the user.
The information required by the Examining Attorney was “reasonably
necessary to the proper examination of the application.” Trademark Rule 2.61(b).
Product information and patent application documentation relating to the goods
clearly assist the Examining Attorney in determining, e.g., whether VAPOR CUP
Serial Nos. 85969016 and 85971474
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was merely descriptive of some or all of the recited goods. Similarly, the questions
regarding the significance of VAPOR and CUP as well as whether the goods produce
vapor or deliver vapor to a user are directed toward the issue of whether the term
VAPOR or CUP merely describes the goods.
In his brief and reply brief, Applicant asserts that all available product
information was submitted with his April 4, 2014 communication. Also, in his reply
brief, Applicant asserts that the drawings from his design patent application
submitted with his April 4, 2014 communication comprise the entirety of his patent
claims and that no other patent application materials are available. Applicant
further asserts in his reply brief that “[a]s has been repeatedly acknowledged, the
Vapor Cup vaporizer does produce vapor” and “[a]s a vaporizer, the goods are
anticipated to transform a particular substance from solid to gas form for users to
inhale.” Thus, Applicant argues that he has complied with all outstanding requests
for information.
We observe, however, that Applicant did not directly answer the six outstanding
requests for information in their entirety during prosecution, but rather only
answered them for the first time in his brief (No. 3) and reply brief (Nos. 4-6). With
regard to request Nos. 1 and 2, Applicant provided partial responses as to VAPOR
CUP during prosecution and CUP in his reply brief, and does not appear to have
responded with regard to the term VAPOR. It would have been a simple matter to
directly state during prosecution in response to information request Nos. 3 and 4
that no other documentation exists and that the drawings submitted comprised the
Serial Nos. 85969016 and 85971474
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entirety of his design patent claims. Similarly, questions Nos. 1, 2, 5 and 6 appear
to require little or nothing more than “yes” or “no” answers or at most, a very brief
explanation. Nonetheless, Applicant never directly answered the Examining
Attorney’s outstanding questions during prosecution of its involved applications,
but rather only provided hints as to the answers thereto. We further observe that
the information provided by Applicant during prosecution may have been sufficient
to answer many of the Examining Attorney’s questions; however, the Examining
Attorney was not obligated to so infer direct answers from Applicant’s responses
when it would have been a simple matter for Applicant to directly answer the
questions posed. It was within the Examining Attorney’s discretion to ask such
questions and to refuse registration when the requirement went unsatisfied.
As a result, we find that Applicant failed to comply with the Examining
Attorney’s information request Nos. 1-6 as posed in his final Office Action.
IV. Mere Descriptiveness of VAPOR CUP
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. §
1056(a). Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1) and, therefore, are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer requirement is grounds
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
Serial Nos. 85969016 and 85971474
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46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977);
In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is 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 thereof. In re Chamber of Commerce
of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark (or terms comprising part of a mark that are subject to a
disclaimer requirement) is merely descriptive is determined in relation to the goods
for which registration is sought and the context in which the term is used, not in the
abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A
term need not immediately convey an idea of each and every specific feature of the
goods in order to be considered merely descriptive; it is enough if it describes one
significant attribute, function or property of them. See In re Gyulay, 3 USPQ2d at
1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180
USPQ 338 (TTAB 1973). This requires consideration of the context in which the
mark is used or intended to be used in connection with those goods, and the possible
significance that the mark would have to the average purchaser of the goods in the
relevant marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at
1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir.
Serial Nos. 85969016 and 85971474
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2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226
USPQ 285 (TTAB 1985).
In other words, the question is whether someone who knows what the goods or
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753,
1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002); In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
“On the other hand, if one must exercise mature thought or follow a multi-stage
reasoning process in order to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely descriptive.” Coach Servs.
Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1616 (TTAB 2010) (quoting In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978)), vacated-in-part on
other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).
Where marks are comprised of multiple words, it is generally held that if the
individual components of a mark retain their descriptive meaning in relation to the
goods, the combination results in a composite mark that is itself descriptive and not
registrable. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012). See
also, e.g., In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006)
(holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses,
box springs, and pillows where the evidence showed that the term “BREATHABLE”
retained its ordinary dictionary meaning when combined with the term
“MATTRESS” and the resulting combination was used in the relevant industry in a
Serial Nos. 85969016 and 85971474
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descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB
1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket
sales services, because such wording “is nothing more than a combination of the two
common descriptive terms most applicable to applicant’s services which in
combination achieve no different status but remain a common descriptive compound
expression”).
Only where the combination of descriptive terms creates a unitary mark with a
unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is
the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551,
157 USPQ 382, 384 (CCPA 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-
63 (TTAB 2013).
In support of the refusal to register, the Examining Attorney made of record
with his October 10, 2013 Office Action, the following definitions of the terms
“vapor” and “cup” provided by Houghton Mifflin from the Internet website
education.yahoo.com/reference/dictionary (2009):
vapor – barely visible or cloudy diffused matter, such as mist, fumes, or
smoke, suspended in the air;
the vaporized form of a substance for use in industrial, military, or
medical processes;
cup – a small open container, usually with a flat bottom and a handle, used
for drinking;
such a container and its contents;
Serial Nos. 85969016 and 85971474
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a cuplike object.
In addition, the Examining Attorney made of record with his October 10, 2013
Office Action the following definition from the same reference source:
vaporizer – one that vaporizes, especially a device used to vaporize medicine
for inhalation. In the same Office Action, the Examining Attorney made of record
copies of pages from informational and commercial Internet websites displaying
various herbal vaporizers. The following examples are illustrative:

(bingj.com/vaporizer+herbal+vapor);

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(everyonedoesit.com/online_headshop/vaporisers)

Serial Nos. 85969016 and 85971474
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(Id.);
Serial Nos. 85969016 and 85971474
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(thevaporshop.com/vape-or-smoke).

Serial Nos. 85969016 and 85971474
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The Examining Attorney further made of record with his April 24, 2014 Office
Action additional Internet webpages, of which the following are illustrative:

(bingj.comvapor+vaporizer); and
Serial Nos. 85969016 and 85971474
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(Id.). With both Office Actions, the Examining Attorney also made of record copies
of two third-party registrations consisting of marks including the term “vapor(s)”
with said term disclaimed, and reciting various goods including vaporizers.
As noted above, the Examining Attorney’s evidence and Applicant’s
acknowledgements establish, inter alia, the following:
a “cup” is a small container used for drinking or an object so shaped;
“vapor” is cloudy, diffused smoke or vaporized matter used for various purposes;
a “vaporizer” is a device that vaporizes substances for inhalation;
Applicant’s goods are shaped like a drinking cup;
Applicant’s goods produce vapor; and
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Applicant’s goods convert herbs into a form in which they may be inhaled.
Based upon the record evidence and acknowledgments, we find that VAPOR CUP
merely describes a cup-shaped vaporizer that converts herbs into a vapor form in
which they may be inhaled. As a result, we find that VAPOR CUP immediately
describes a function, feature or characteristic of Applicant’s electrically-powered
handheld vaporizers for vaporizing vaporizable constituents of herbal and plant
matter for creating an aroma. In other words, consumers familiar with Applicant’s
vaporizers will understand his mark to immediately convey, without the need for
multi-stage reasoning, that VAPOR CUP is a vaporizer shaped like a cup that
produces vapor for inhalation. See, e.g., DuoProSS, 103 USPQ2d at 1757. Cf. Coach
Servs., 96 USPQ2d at 1616. The individual terms VAPOR and CUP, when
combined, retain their descriptive meaning in relation to Applicant’s vaporizers,
resulting in a composite mark, VAPOR CUP, which merely describes a function,
feature or characteristic of Applicant’s goods. In re Phoseon Tech., Inc., 103 USPQ2d
at 1823.
We further note that, in addition to the evidence discussed above, as a
consequence of Applicant’s failure to provide the required information, we may
presume, unfavorably to Applicant, that VAPOR and CUP have significance as
applied to his goods, and that his goods will produce vapor and deliver vapor to
users thereof. See In re Cheezwhse.com Inc., 85 USPQ2d 1917 (TTAB 2008). Such
presumptions are consistent with the evidence made of record by the Examining
Attorney and the acknowledgements made by Applicant in his briefs.
Serial Nos. 85969016 and 85971474
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Applicant points to the absence of evidence in the record of third parties using
VAPOR CUP to identify similar goods. However, even if Applicant is the first and/or
presently the only user of the term VAPOR CUP in connection with vaporizers, it is
well settled that such does not entitle Applicant to the registration thereof where,
as here, the term has been shown to immediately convey only a merely descriptive
significance in the context of Applicant’s goods. See, e.g., In re National Shooting
Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); In re Mark A. Gould,
M.D., 173 USPQ 243, 245 (TTAB 1972).
Applicant argues that his goods are not a cup, and cannot be used as one.
However, there is no question on this record that Applicant’s goods are shaped like
a cup, i.e., a vaporizer placed in a housing that resembles a drinking cup which
allows users to discretely inhale vaporized herbal and plant matter. Applicant
further argues that the definitions of “cup” relied upon by the Examining Attorney
are picked from among a dozen possible definitions. This argument similarly is
unavailing. If a term has a primary significance that is descriptive in relation to at
least one of the recited goods or services, and does not create any double entendre or
incongruity, then the term is merely descriptive. The fact that VAPOR CUP or its
component terms may have different meanings in different contexts is not
controlling. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012); In re
Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
Serial Nos. 85969016 and 85971474
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Finally, Applicant vigorously argues that a third-party application for the mark
VAPOCUP for Tobacco pipes; Tobacco cups; Smoking pipes; Smoking cups; Smoking
paraphernalia, namely, smoking pipes and smoking cups for smoking tobacco and
herbs, while suspended pending the outcome of the applications involved herein,
was not subject to a refusal to register based upon mere descriptiveness.20 However,
we note that the goods identified in this third-party application include various
smoking articles but do not include Applicant’s goods, namely, vaporizers.
Furthermore, as is often noted by the Board and the Courts, each case must be
decided on its own merits. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). See also, In re Kent-Gamebore Corp., 59 USPQ2d 1373
(TTAB 2001); In re Wilson, 57 USPQ2d 1863 (TTAB 2001). While consistent
treatment of pending applications is a laudable goal, this tribunal is not bound by
the actions of Examining Attorneys with regard to other applications.
In summary, based upon the totality of the evidence of record, including any
evidence not specifically discussed herein, we find that VAPOR CUP merely
describes a function, feature or characteristic of the recited goods.
Decision: The refusal to register Applicant’s mark VAPOR CUP in application
Serial No. 85696016, on the ground that the mark is merely descriptive of the goods
under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), is affirmed.
The refusal to register Applicant’s mark WEVAPS VAPOR CUP in application
Serial No. 85971474 in the absence of a disclaimer of VAPOR CUP, on the ground

20 Application Serial No. 86226640.
Serial Nos. 85969016 and 85971474
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that VAPOR CUP is merely descriptive of the goods under Trademark Act Section
6(a), is affirmed.
The refusal to register the marks in both subject application Serial Nos.
85696016 and 85971474 as a consequence of Applicant’s failure to directly respond
to the Examining Attorney’s request for information under Trademark Rule 2.61(b),
37 CFR §2.61(b), is affirmed.21

21 With regard to application Serial No. 85971474, because Applicant’s failure to respond to
the Examining Attorney’s request for information is a second basis for refusal of
registration, Applicant may not overcome the refusal to register under Section 2(e)(1) by
providing a disclaimer of VAPOR CUP. See generally TBMP § 1218 (2015) and authorities
cited therein.