Myron Stuart Hurwitz

Trademark Trial and Appeal Board

Sep 14, 2004

No. 78017859 (T.T.A.B. Sep. 14, 2004)

Hearing:
June 24, 2004 Mailed: 9/14/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Myron Stuart Hurwitz
________
Serial Nos. 78017859 and 78017877
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Myron Stuart Hurwitz, pro se.
Nancy Clarke, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications were filed to register the marks EDGING
CONTROL and EDGING FRICTION CONTROL for “in-line skates and
skateboards, and downhill in-line skates and skateboards,
all featuring slow-down and braking wheel assemblies.”1
The trademark examining attorney refused registration
in each application under Section 2(e)(1) of the Trademark
1 Application Serial Nos. 78017859 and 78017877, respectively.
Both applications were filed on July 21, 2000, and each is based
on applicant’s allegation of a bona fide intention to use the
mark in commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser Nos. 78017859 and 78017877
2
Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s
mark, when applied to the goods, would be merely
descriptive of them.
When the refusal was made final, applicant filed a
request for reconsideration and a notice of appeal. The
request for reconsideration was denied, and the appeal
proceeded. Applicant and the examining attorney filed
briefs.2 An oral hearing was held before the Board.3
The Board, in an order dated October 7, 2003, granted
applicant’s request to consolidate the appeals, indicating
that the appeals involve common issues of law and fact.
Accordingly, the Board will issue a single opinion in these
consolidated appeals.
The examining attorney maintains that the marks sought
to be registered are merely descriptive of a feature or
function of the goods. According to the examining
attorney, skate wheels have edges and, further, the term
2 Applicant’s request for an extension of time to file his reply
brief is granted, and the reply brief is considered timely filed.
The reply brief, at thirty-five pages in length, exceeds the
twenty-five page limit set forth in Trademark Rule 2.142(b)(2).
If an applicant files a brief that exceeds this limit without
prior leave of the Board, the brief will not be considered. TBMP
§ 1203.01 (2d ed. rev. 2004). In the present case, however, the
Board is exercising its discretion, and applicant’s reply brief
has been considered.
3 The examining attorney who argued the case at the oral hearing
was Cheryl Clayton. Applicant represented himself at the oral
hearing.
Ser Nos. 78017859 and 78017877
3
“edging” is commonly used in connection with in-line
skating to refer to a type of tilting movement that can be
used by a skater to control speed. Thus, the examining
attorney argues, applicant’s goods allow skaters to control
their movement by using an edging maneuver, resulting in
friction of the wheels against a friction band surface,
thereby slowing down the skater’s forward momentum. In
support of the refusals, the examining attorney submitted
dictionary definitions, and several excerpts of articles
taken from the Internet and from printed publications
retrieved from the NEXIS database.
Applicant contends that his marks are “totally
incongruous” and only suggestive of the methodology of his
goods. Rather than paraphrase or summarize applicant’s
theory of why the refusal should be reversed, we
specifically refer to his argument:
Using the terms “edge,” “edging” and
“friction control” in reference to
controlling and braking function for
recreational In-Line Skates (suggestive
of the control methodology used in
skiing and ice skating) is not only
unprecedented it is totally
incongruous. In-Line recreational
state-of-the-art skate wheels do not
have an edge nor is there an edging
friction component within the skate
boot or frame. To imply an EDGING
CONTROL [or EDGING FRICTION CONTROL]
braking feature in reference to In-Line
Skates would be bewildering to anyone
Ser Nos. 78017859 and 78017877
4
familiar with those skates....Using the
term “edge” to turn on In-Line Skates
is a metaphor that is used instead of
the more literal term of “angling” or
“canting” the skates to “turn” one way
or the other. When instructors use the
metaphorical terms of edge or edging to
turn one way or the other on In-Line
Skates, they are using those teaching
terms descriptively. There is nothing
in the use of those descriptive terms
that in any way implies an
unprecedented functional control and
braking mechanism. (Brief, p. 10).
Applicant has submitted a variety of exhibits, including
his issued patent covering the involved goods, in
connection with his arguments.
Before turning to the merits of this appeal, an
additional comment is in order relating to applicant’s
evidence. The record in the application should be complete
prior to the filing of an appeal. Trademark Rule 2.142(d).
Both applicant’s appeal brief and reply brief are
accompanied by several exhibits. Exhibits attached to a
brief that were not made of record during examination are
untimely, and generally will not be considered. See In re
Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n. 2 (TTAB 2002).
To the extent that any of these exhibits were not made of
Ser Nos. 78017859 and 78017877
5
record during examination, they have not been considered in
our determination of the merits of the appeals.4
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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,
217-18 (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).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
4 We note that the examining attorney, in her brief, specifically
objected to exhibits A and F attached to applicant’s appeal brief
as untimely under Trademark Rule 2.142(d).
Ser Nos. 78017859 and 78017877
6
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that
“[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.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002); see also In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corporation, 226 USPQ 365 (TTAB
1985). Stated another way, as the Board has explained:
....the question of whether a mark is merely
descriptive must be determined not in the
abstract, that is, not by asking whether one
can guess, from the mark itself, considered in
a vacuum, what the goods or services are, but
rather in relation to the goods or services for
which registration is sought, that is, by
asking whether, when the mark is seen on the
goods or services, it immediately conveys
information about their nature.
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
Ser Nos. 78017859 and 78017877
7
descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial
impression. If each component retains its descriptive
significance in relation to the goods or services, the
combination results in a composite that is itself
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs]; In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) [FOOD &
BEVERAGE ONLINE merely descriptive of news information
services for the food processing industry]; and In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) [SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays].
In order to more fully understand the nature of
applicant’s goods, we first look to applicant’s issued
patent (captioned “Generation of in-line skates and skate-
boards with safety ‘edging friction control.TM.’”) covering
the goods listed in the applications. The abstract of
Patent No. 6,637,827 B2 reads, in its entirety, as follows:
Ser Nos. 78017859 and 78017877
8
The frame of an in-line skate supports
a wheel, allowing a skater to
effectively slow down and stop, using
an athletic stance that skiers and ice
skaters on ice use. The wheel has a
hub, allowing a wheel to rotate around
the axle vertically and at an
inclination. The hub has axle roller
bearings. The wheel includes friction
band surfaces on the sides of the
wheel. When rotating at an inclination
the wheel’s friction surface contacts a
friction surface, inside the wheel well
or an axle friction surface or a
combination thereof to slow or brake
the wheel. The wheel assembly includes
self-aligning springs. Individual
parts can be technically designed to
allow various model solutions that will
satisfy the abilities of a beginner to
an expert. The wheel assembly frame
can be attached to an in-line skate, an
in-line skateboard, a downhill in-line
ski and a downhill in-line skateboard.
In the patent, applicant sets forth four initial,
fundamental concepts of his invention. These concepts, as
partially set forth in applicant’s patent, include the
following:
The in-line skate wheels not only had
to conventionally rotate vertically
around a fixed axle, but also had to
rotate at an inclined angle around the
fixed axle, to cause friction contact
(“EDGING CONTROL”) within the wheel-
wells of the skate frame. That
interactive contact by
friction....would in essence be
comparable to ice skate edges “scoring”
ice and ski edges “scoring” ice and
snow to effectively control speed or to
abruptly stop....Once EDGING force was
applied, (as in a side to side
Ser Nos. 78017859 and 78017877
9
“striding” motion) and then released,
would the wheel(s) return to the
vertical axis plane (“coasting”)
position?
While we have consulted applicant’s patent covering the
goods identified in these applications, we also look to
applicant’s own description of his invention.
To fully understand the totally
suggestive trademarks of “EDGING
CONTROL” and “EDGING FRICTION CONTROL”
in reference to a PATENTED control and
braking system for In-Line Skates; as
opposed to the descriptive terms of
“edge” or “edging” (figuratively
meaning “cant” or “angle”) In-Line
Skate boots to turn to the right or
left: a detailed explanation of the
Patented control and braking system for
In-Line Skates is warranted.
The applicant’s invention (now
patented) relates to a specific
classification of “roller type” skates
identified as “In-Line Skates”
generally having 4-5 wheels in tandem,
held [in] place by a wheel frame to
which a boot is attached.
The state-of–the-art method of control
and braking for In-Line Skates is by a
rubber heel pad typically attached to
the back of either the right or left
boot and wheel frame. This difficult
method of slowing down or braking
control is initiated by leaning back
and extending one leg forward with the
skate toe raised, applying heel
pressure to engage the rear rubber
brake pad against a concrete or asphalt
surface. Moving forward and leaning
back with one leg extended forward with
the boot toe up is not only an awkward,
unbalanced position; it is also an
Ser Nos. 78017859 and 78017877
10
ineffective (one skate) method of
braking control and the prime cause for
frequent injuries.
The applicant’s invention resolves
[sic] an uncomplicated novel means
(realistically) adhering to prior art
dimensions and parts, which is
activated by assuming a more natural
physical and method of control and
braking, comparable to the method and
stance that skiers and ice skaters use
to edge skis and ice skate blades into
snow and ice.
The essence of the invention is: a) to
use a modified standard size In-Line
Skate wheel that has a two element
dynamic core (instead of a static
state-of-the-art core, which core
contains two prior art, roller ball
bearings (for minimal friction
rotation); and, b) the wheel having a
plastic hub (aluminum hub for the
prototype) that has a moderate concave
recess on each side of the wheel hub,
housing an ultra thin rubberized,
radial “spring.” (Brief, pp. 8-9)
(emphasis in original).
As shown by the dictionary definitions, the term
“edging” has a specific meaning relative to the sport of
skiing: “to tilt (a ski or both skis) in such a way that
an edge or both edges bite into the snow.” The American
Heritage Dictionary of the English Language (3d ed. 1992).5
Likewise, there is no question but that edging is a control
5 The examining attorney also introduced a third-party
registration of the mark PERIMETER EDGE CONTROL for snow skis, in
which the words “Edge Control” are disclaimed.
Ser Nos. 78017859 and 78017877
11
maneuver performed on in-line skates and skateboards.
Thus, contrary to applicant’s remarks, there is nothing
incongruous or bizarre or unique about the use of the term
“edging” in connection with in-line skating. A review of
representative articles and web sites, retrieved from the
NEXIS database and the Internet, respectively, introduced
by the examining attorney makes this clear.
Like skis, skate wheels have an inside
and an outside edge. Many of the
skills common to both sports, such as
steering, edging, crossing over, and
upper-body control, are directly
transferable from pavement to snow.
(Skiing, March 1994)
With in-line skate practice, they will
be more fit and also have had edging
practice.
(STN, Skiing Trade News, August 1990)
Technique: Discover the Skater’s Edge.
Edging is one of the four fundamentals
of inline skating, along with pressure,
balance and rotation. Edging is based
on the concept that your skates each
have three sets of wheel “edges” on
which you roll. An instructor’s
reference to using the “inside edge”
indicates one or both skates are tipped
inward toward the center of the body.
Reference to the “outside edge” means
the skate is tipped away from the
midline. The “center edge” is in play
when the wheels are upright....Extreme
edging combined with the proper
balance, timing and angle actually
results in the hockey stop you see on
the ice....learn corresponding edge
turning.
(www.getrolling.com)
Ser Nos. 78017859 and 78017877
12
Edging becomes effortless! The ultra-
low profile noticeably reduces ankle
and foot fatigue and provides for
exceptional and instant edge control.
(www.miller-sports.com)
The better you learn to edge, the
better you skate.
(www.parabolics.com)
The term “control” is defined, in relevant part, as
“to exercise authoritative or dominating influence over;
direct.” The term “friction” means “the rubbing of one
object or surface against another.” The American Heritage
Dictionary of the English Language (3d ed. 1992).
Applicant himself has stated that “[w]hen the wheel is
canted (in the friction edging position) and the edging
force is released, the urethane ‘spring’ return the wheel
back to the vertical spinning position.” (Brief, p. 6)
(Emphasis in original). And, applicant also has asserted
that “any method of ‘braking’ from time immemorial relies
on friction” and “[m]y invention is no exception.”
(Response, April 6, 2001, p. 3).
Based on the record before us, we find that the
proposed marks, EDGING CONTROL and EDGING FRICTION CONTROL,
are merely descriptive as applied to “in-line skates and
skateboards including downhill in-line skates and
skateboards, all featuring slowdown and braking
Ser Nos. 78017859 and 78017877
13
assemblies.” That is to say, each mark merely describes a
feature or function of the goods. Nothing in the marks is
incongruous, ambiguous or suggestive, nor is there anything
which would require the exercise of imagination, cogitation
or mental processing or necessitate the gathering of
further information in order for the merely descriptive
significance of the marks to be readily apparent to
consumers of applicant’s goods.
Based upon the totality of this record, it appears
likely that the in-line skater having applicant’s invention
installed in his or her in-line skates would be able more
easily to slow down or stop completely by “edging” than
would be the case with conventional in-line skates.
Nonetheless, when our trademark precedent on the question
of mere descriptiveness is applied to the specific facts of
this case, this difference in degree is not determinative
of a different result on the trademark issues herein.
EDGING CONTROL merely describes the fact that
applicant’s in-line skates and skateboards have an assembly
allowing a skater to control his or her speed by performing
a skating maneuver called “edging.” Thus, the mark EDGING
CONTROL immediately informs, without speculation or
conjecture, prospective customers that applicant’s goods
Ser Nos. 78017859 and 78017877
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have a feature allowing for control by edging, that is,
“edging control.”
Likewise, EDGING FRICTION CONTROL merely describes the
fact that the speed of applicant’s in-line skates and
skateboards is controlled by edging which results in
friction; a skater edges, resulting in friction, thereby
controlling speed.
The combination of the three descriptive words EDGING
FRICTION CONTROL, just as in the case of the combination of
the two words EDGING CONTROL, does not result in a new and
unique commercial impression of the mark. Rather, each
individual component, “edging,” “control” and “friction”
retains its descriptive significance in relation to
applicant’s goods, and the combinations result in composite
marks which are themselves descriptive.
The fact that applicant may be the first and only user
of the merely descriptive terms herein does not justify
registrations thereof on the Principal Register. In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983). Further, the fact that applicant’s invention
is novel enough to be the subject of an issued patent is
irrelevant to the question of whether applicant’s applied-
for trademarks are registrable under the Trademark Act.
Ser Nos. 78017859 and 78017877
15
Decision: The refusal to register is affirmed in each
application.