NFE, Inc.

Trademark Trial and Appeal Board

Jun 21, 2005

No. 76477087 (T.T.A.B. Jun. 21, 2005)

Mailed: 6/21/05

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NFE, Inc.
________

Serial No. 76477087
_______

Arthur G. Yeager for applicant.

Zachary R. Bello, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by NFE, Inc. to register the
mark GLASSPAD for “fiberglass foundations for supporting
enclosures for covering, securing, and otherwise protecting
exterior plumbing assemblies.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, when applied to applicant’s goods,

1 Application Serial No. 76477087, filed December 19, 2002,
alleging first use anywhere and first use in commerce on October
25, 2002.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76477087
2
is merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant argues that its mark is only suggestive,
pointing to other possible meanings of “glass,” and third-
party uses of “glass pad” having nothing to do with the
type of applicant’s goods. Even assuming arguendo the
individual words comprising its mark are descriptive,
applicant contends that the combination of the two words
results in a unitary mark that is just suggestive.
Applicant states that while it may use the word “pad” as a
noun, this does not detract from the use of the composite
mark GLASSPAD as a trademark. (Response filed August 16,
2004).2 In support of its position, applicant submitted
portions of web pages retrieved from searches of “glass
pad” in databases on the Internet, including GOOGLE, AOL
and YAHOO. Applicant contends that the searches show the
term “glass pad” has many different meanings and uses for
various goods unrelated to applicant’s goods.

2 Applicant earlier proposed a disclaimer of the term “glass.”
(Response filed November 24, 2003). The examining attorney
declined to accept the disclaimer, indicating that disclaimers
are impermissible in the case of compound word marks. TMEP
§1213.05(a) (4th ed. rev. April 2005).
Ser No. 76477087
3
The examining attorney maintains that the mark merely
describes “the features of material compositions of the
goods, i.e., fiberglass, and its padding function or
purpose.” (Brief. p. 3)(emphasis in original). The
examining attorney submitted dictionary definitions of the
terms “glass,” “pad,” and “fiberglass”; a printout of a
search report showing five hits for the term “glass pad”
retrieved from the GOOGLE database; and portions of
applicant’s website dealing with applicant’s involved
goods.3
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

3 We agree with applicant’s criticism of the one third-party
registration, relied upon by the examining attorney, that
includes a disclaimer of “pad.” The goods in the registration
appear to be completely unrelated to applicant’s goods.
Likewise, the examining attorney’s reliance on the website of
Foam Seal, Inc. is misplaced given that the goods listed therein
appear to be unrelated to applicant’s goods.
Ser No. 76477087
4
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
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:
....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 No. 76477087
5
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].
Applicant offers the following description of its
goods (Brief, p. 2):
[A]pplicant’s GLASSPAD foundations are
rigid upside down pans (like a dish pan
with outwardly extending flanges
adjacent the open top edge, protruding
horizontally). The pans are buried in
the ground with the flanges being about
three (3) inches below ground and the
pan bottom being thereabove at or near
ground level. The enclosures of
Ser No. 76477087
6
applicant are then mounted onto the
foundation, i.e., the foundation
supports the enclosure and the
enclosure protects exterior plumbing
all as set forth in the identification
of goods.

The term “glass” is defined as “any of a large class
of materials with highly variable mechanical and optical
properties that solidify from the molten state without
crystallization, are typically made by silicates fusing
with boric oxide, aluminum oxide, or phosphorous pentoxide,
are generally hard and brittle, and transparent or
translucent, and are considered supercooled liquids rather
than true solids.” The term “pad” means “a thin,
cushionlike mass of soft material used to fill, to give
shape, or to protect against jarring, scraping, or other
injury.” The term “fiberglass” is defined as “a material
consisting of extremely fine glass fibers, used in making
various products, such as yarns, fabrics, insulators, and
structural objects or parts.” All of these definitions
were taken from The American Heritage Dictionary of the
English Language (3rd ed. 1992). In addition to the above
definitions, we take judicial notice of the definition of
“fiberglass” appearing in Webster’s Third New International
Dictionary (unabridged ed. 1993): “glass in fibrous form
Ser No. 76477087
7
used in making various products; called also fibrous glass,
spun glass.”
The specimens show applicant’s use of the words
“Artificial Pad” immediately below the mark. Applicant, on
its website, promotes its goods in the following manner:
“GLASS PAD Fiberglass mounting pads sized for HOT BOX®
enclosures that take the guess work out of pad size and
allows for true one stop installation of valves, pad and
enclosure.” Other portions of applicant’s website reveal
similar descriptions of the involved goods: “Fiberglass
mounting pads available for most standard fiberglass flip-
top and HOT ROK® products”; and “Fiberglass Mounting Pads
For Backflow Enclosures. For the simplest installation
possible, try our new GLASS PAD designed for use with a
specific fiberglass enclosures [sic], the GLASS PAD can
reduce installation time significantly. GLASS PADS are
currently available for all molded fiberglass flip-top
models.” The website also includes a chart listing “Pad
Model #,” “Pad Dimensions” and “Pad Ship Weight.”
Applicant’s website goes on to list additional information
about its goods sold under the involved mark:
Fiberglass pads designed for use in
lieu of formed in place concrete pads

Ser No. 76477087
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Pads designed for “One Trip” valve &
enclosure installations--no returns

Pads are 4” deep with flange on bottom
for direct burial

Pads are fiberglass, finished with gray
(concrete) gel coat

Pads feature centers removed for inlet
& outlet of BFP piping

Based on the evidence of record, we conclude that the
term “glass” is broad enough to encompass “fiberglass.”
Indeed, the dictionary definition of “fiberglass” defines
it in terms of “glass in fibrous form.” Further, the term
“pad” is used generically by applicant in describing its
goods and, indeed, the goods function as a pad. The terms
“glass” and “pad” are at least merely descriptive terms
when applied to applicant’s goods that are, in applicant’s
own words, “fiberglass pads” (“Fiberglass pads designed for
use in lieu of formed in place concrete pads”). The
combined term GLASSPAD also is as descriptive as the
individual terms. When the proposed mark GLASSPAD is
viewed in the context of applicant’s goods, the term
immediately informs prospective customers of the fact that
applicant’s pads are constructed of fiberglass and, as
such, it describes a significant characteristic of the
goods.
Ser No. 76477087
9
The fact that the terms comprising applicant’s mark
may have other meanings in different contexts is not
persuasive. In re Polo International Inc., 51 USPQ2d 1061
(TTAB 1999). Further, the fact that applicant uses a “TM”
after GLASSPAD is unavailing.
Decision: The refusal to register is affirmed.