Plews, Inc.

Trademark Trial and Appeal Board

Jul 15, 2019

88134290 (T.T.A.B. Jul. 15, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Plews, Inc.
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Serial No. 88134290
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Nathan P. Koenig of Bay Area Technology Law Group PC,
for Plews, Inc.
Robert Clark, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Cataldo, Shaw, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Plews, Inc. (“Applicant”) seeks registration on the Principal Register of the
proposed mark HYBRID INFLATOR in standard characters for goods identified as
“automobile tire inflator sealers,” in International Class 1.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

1 Application Serial No. 88134290 was filed on September 27, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
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the mark is merely descriptive of the goods identified in the application. Applicant
appealed after the Examining Attorney made the refusal final. Applicant and the
Examining Attorney have filed briefs. We affirm the refusal to register.
I. Record on Appeal
The record on appeal consists of the following, all made of record by the Examining
Attorney: pages from Applicant’s website at plews-edelman.com;2 a definition of the
word “hybrid” from the MERRIAM-WEBSTER DICTIONARY (merriam-webster.com);3
third-party registrations of marks containing the word HYBRID on the Supplemental
Register;4 and third-party registrations of marks containing the initialism “EZ” on
the Supplemental Register.5
II. Mere Descriptiveness Refusal
A. Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the

2 January 8, 2019 Office Action at TSDR 2-4. All citations in this opinion to the application
record are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the
United States Patent and Trademark Office (“USPTO”).
3 Id. at TSDR 5-12.
4 January 23, 2019 Final Office Action at TSDR 2-21.
5 Id. at TSDR 22-46. The Examining Attorney made these registrations of record in response
to an argument made by Applicant during prosecution, and repeated on appeal, regarding
registration of various EZ-formative marks, January 17, 2019 Response to Office Action at
TSDR 1; 4 TTABVUE 2. Each application for registration must be considered on its own
merits, see, e.g., In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir.
2016); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), and
registrations of EZ-formative marks have no probative value with respect to the possible
mere descriptiveness of HYBRID INFLATOR.
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applicant is merely descriptive . . . of them,” unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
A mark is “merely descriptive” within the meaning of Section 2(e)(1) “if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark 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 the goods.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987)).
Whether a mark is merely descriptive is “evaluated ‘in relation to the particular
goods for which registration is sought, the context in which [the mark] is being used,
and the possible significance that the term would have to the average consumer
because of the manner of its use or intended use,’” In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting Bayer, 82
USPQ2d at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys,
118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978)). We ask “‘whether someone who knows what the goods and services are
will understand the mark to convey information about them.’” Real Foods Pty Ltd. v.
Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)
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(quoting DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012) (internal quotation omitted)).6
We “must consider the commercial impression of a mark as a whole,’ ‘viewed
through the eyes of a consumer.’” Real Foods, 128 USPQ2d at 1374 (quoting
DuoProSS, 103 USPQ2d at 1757 (citation omitted)). Applicant’s proposed mark
HYBRID INFLATOR consists of two words. “In considering [a] mark as a whole, [we]
‘may not dissect the mark into isolated elements,’ without ever ‘consider[ing] . . . the
entire mark,’” Real Foods, 128 USPQ2d at 1374 (quoting DuoProSS, 103 USPQ2d at
1757), but we “‘may weigh the individual components of the mark to determine the
overall impression or the descriptiveness of the mark and its various components.’”
Id. (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372
(Fed. Cir. 2004)). Indeed, we are “required to examine the meaning of each component
individually, and then determine whether the mark as a whole is merely descriptive.”
DuoProSS, 103 USPQ2d at 1758. If the words HYBRID and INFLATOR in the
proposed mark are individually descriptive of the identified goods, we must then
determine whether their combination “‘conveys any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.’” Fat Boys, 118
USPQ2d at 1515-16 (quoting Oppedahl & Larson, 71 USPQ2d at 1372). If each word
instead “retains its merely descriptive significance in relation to the goods, the
combination results in a composite that is itself merely descriptive.” Id. at 1516 (citing

6 A mark is suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach a
conclusion about their nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515.
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In re Tower Tech., Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)); see also In re Mecca
Grade Growers, LLC, 125 USPQ2d 1950, 1953-55 (TTAB 2018).
“‘Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listing in
dictionaries, trade journals, newspapers[,] and other publications.’” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
goods.’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200 USPQ at 218).
B. Applicant’s and the Examining Attorney’s Arguments
1. Applicant
Applicant’s argument on appeal is taken almost verbatim from its response to the
first Office Action. 4 TTABVUE; 6 TTABVUE.7 Applicant argues that the “fact that
Applicant has advertised its automobile tire inflator sealers as HYBRID INFLATORs
does not necessarily support the assumption that the mark is descriptive of the
identified goods.” 6 TTABVUE 2.8 Applicant “draws the Board’s attention [to] more

7 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear.
8 In support of this argument, and others made in its brief, Applicant cites and discusses
cases from regional circuit courts, Cal. Cooler, Inc. v. Loretto Winery Ltd., 774 F.2d 1451 (9th
Cir. 1985), Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694 (2d Cir. 1961), and
W.G. Reardon Labs., Inc. v. B & B Exterminators, Inc., 71 F.2d 515 (4th Cir. 1934). 6
TTABVUE 2-3. These cases are not helpful because we must follow and apply the law set
forth by our primary reviewing court, the Court of Appeals for the Federal Circuit.
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examples of registered marks that could be construed to describe the identified
goods,” id., citing registrations of E-Z CLIP for “clips for fastening decorations and
ornaments to Christmas trees and E-Z SPROUT for a “plastic spout fitted into an
opening in a can to pour out the contents of the can.” Id. Applicant “submits that
there is no evidence to establish that the general public would understand or identify
the term ‘hybrid’ with relation to the identified goods,” but that “the fact that ‘hybrid’
means something that is formed by combining two or more things tells one virtually
nothing about Applicant’s automobile tire inflator sealers, their attributes or
construction.” Id. at 2-3.
Applicant also contends that its “concatenation of HYBRID and INFLATOR can
create a commercial impression greater than the mere sum of those term’s [sic]
separate definitions.” Id. at 3. Applicant argues that HYBRID INFLATOR “could
convey a number of suggestive meanings to consumers such [as] that Applicant’s
goods could be used in hybrid vehicles or that these goods employ complementary
technologies to accomplish a specific task.” Id. at 4. Finally, Applicant offers to
disclaim INFLATOR “if in doing so the determination is reached that the mark is
capable of registration.” Id.
2. The Examining Attorney
The Examining Attorney argues that each component of the proposed mark is
descriptive: “[T]he term ‘hybrid’ is defined by the online Merriam-Webster Dictionary
as something that is formed by combining two or more things and something that is
of mixed origin or composition,” 8 TTABVUE 6, while the word “INFLATOR will
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immediately be understood by consumers as describing a purpose of the goods”
because “Applicant has explicitly stated in the identification [of goods] that
applicant’s goods are inflator sealers.” Id. at 5.9
According to the Examining Attorney:
Applicant’s goods are a hybrid that does two things, it seals
and inflates. As used in the applied-for mark, each term
retains its descriptive significance in relation to the goods
for which registration is sought because consumers will
immediately understand the wording HYBRID
INFLATOR as referencing a feature of applicant’s goods in
that the goods will feature an inflator that both inflates
and seals. This interpretation is consistent with applicant’s
own description of the goods as automobile tire inflator
sealers.
Id. at 6.
The Examining Attorney also responds specifically to several of Applicant’s
arguments. The Examining Attorney rejects Applicant’s argument that HYBRID
INFLATOR is suggestive because it could convey multiple meanings as inconsistent
both with the meaning of the word “hybrid” and Applicant’s own description of the
benefits of use of its HYBRID INFLATOR “automobile tire inflator sealers.” The
Examining Attorney cites a page from Applicant’s website, which we reproduce below:

9 We grant the Examining Attorney’s request, 8 TTABVUE 6 n.1, that we take judicial notice
of a definition of the word “inflator” from dictionary.com as a noun form of the verb “inflate,”
which means, among other things, “to cause to expand or distend with air or gas.” Id. at 13-
15. See generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
Section 1208.04 (June 2019) and cases cited therein (discussing Board’s ability to take
judicial notice of dictionary definitions, including on appeal).
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10
The Examining Attorney rejects Applicant’s reliance on third-party registrations
of EZ-formative marks as “not conclusive on the issue of descriptiveness,” id. at 8,
because “each case must be decided on its own facts and the [Board] is not bound by
prior decisions involving different records,” id. at 9, and because registrations of EZ-
formative marks exist on the Supplemental Register. The Examining Attorney also
cites registrations of HYBRID-formative marks on the Supplemental Register as
evidence of the descriptiveness of that word in Applicant’s mark. Id.11 The Examining

10 January 8, 2019 Office Action at TSDR 2.
11 January 23, 2019 Final Office Action at TSDR 2-21. Only one of them, a registration of
HYBRID SEAL (SEAL disclaimed) for “mechanical seals used in general industrial
machines, namely, pumps, mixers, and hoppers,” id. at 2, covers goods that serve a function
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Attorney rejects Applicant’s offer to disclaim INFLATOR because “the entire mark is
merely descriptive and a mere disclaimer of ‘INFLATOR’ is not acceptable.” Id. at 11.
C. Analysis of Applicant’s Proposed Mark
As noted above, in assessing whether HYBRID INFLATOR is merely descriptive,
we must “examine the meaning of each component individually, and then determine
whether the mark as a whole is merely descriptive.” DuoProSS, 103 USPQ2d at 1758.
The word INFLATOR, which appears in Applicant’s identification of goods,12 is at
least merely descriptive of, if not generic for, “automobile tire inflator sealers,”
because INFLATOR immediately conveys one significant function of the goods,
namely (in the words of Applicant’s website), “inflating the tire to the correct
pressure.”13
The word HYBRID is similarly descriptive of “automobile tire inflator sealers.” In
the adjective form in which it is used in the proposed mark, “hybrid” means “having
or produced by a combination of two or more distinct elements.”14 By definition,
“automobile tire inflator sealers” function “by a combination of two . . . distinct
elements,” namely, an inflator and a sealer.

similar to the goods identified in the involved application. We do not find these registrations
to be probative of the mere descriptiveness of HYBRID INFLATOR for the goods identified
in the application.
12 As noted above, Applicant has offered to disclaim the exclusive right to use INFLATOR,
but we agree with the Examining Attorney that such a disclaimer is futile if the mark as a
whole is unregistrable as merely descriptive.
13 January 8, 2019 Office Action at TSDR 2.
14 Id. at 5 (MERRIAM-WEBSTER DICTIONARY (merriam-webster.com)).
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When HYBRID and INFLATOR are combined in Applicant’s proposed mark, “the
combination results in a composite that is itself merely descriptive.” Fat Boys, 118
USPQ2d at 1516. As Applicant’s website puts it, the goods sold under the proposed
HYBRID INFLATOR mark are “one unit [that] does the work of both sealing the tire
using most any aerosol sealer and inflating the tire to the correct pressure”:
15
As in N.C. Lottery, 123 USPQ2d at 1710 “the explanatory text accompanying the
mark” is not complicated, as it uses the words in the mark together with language
that “describes the relevant feature or characteristic” of the goods, id., namely, that
“[t]he Hybrid Inflator” performs the function of “both sealing the tire using most any
aerosol sealant on the market and inflating the tire to the correct pressure.”
The text also belies Applicant’s argument that “the HYBRID INFLATOR mark
should be deemed suggestive rather than descriptive” because it “could convey a
number of suggestive meanings to consumers,” including “that Applicant’s goods
could be used on hybrid vehicles . . . .” 6 TTABVUE 4.16 “The commercial context here

15 Id. at TSDR 2.
16 A second suggestive meaning offered by Applicant, that the mark conveys to consumers
that the goods “employ complementary technologies to accomplish a specific task,” 6
TTABVUE 4, appears instead to be another possible descriptive meaning of HYBRID
INFLATOR for “automobile tire inflator sealers.” Applicant’s website explains that its goods
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demonstrates that a consumer would immediately understand the intended meaning
of [HYBRID INFLATOR].” N.C. Lottery, 123 USPQ2d at 1710. “[T]he evidence shows
that the mark is less an identifier of the source of the goods . . . and more a description
of a feature or characteristic of those goods . . . .” Id.
In support of its argument that HYBRID INFLATOR is suggestive, Applicant cites
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001) and In re Reynolds Metal Co., 480 F.2d 902, 178 USPQ 296 (CCPA 1973). 6
TTABVUE 3-4. On this record, these cases do not aid Applicant. Dial-A-Mattress
reversed the Board’s finding that 1-888-M-A-T-R-E-S-S was generic for “telephone
shop-at-home retail services in the field of mattresses,” but affirmed the Board’s
finding that the mark was merely descriptive of those services because “it
immediately convey[ed] the impression that a service relating to mattresses is
available by calling the telephone number.” 57 USPQ2d at 1812. The applicant there
prevailed because it had shown that the mark had acquired distinctiveness, id. at
1813, something that Applicant has not attempted here.
In Reynolds Metal, the Court of Customs and Patent Appeals reversed the Board’s
finding that BROWN-IN-BAG was merely descriptive of “transparent plastic film
bags.” The court found that “the mark is suggestive of one purpose to which the goods
may be put, i.e. to brown meals in an oven,” 178 USPQ at 297, but that the record
showed “that browning is not the sole purpose or function of the bags” because the

combine complementary technologies to seal and inflate tires to “get you off the side of the
road faster and easier.” January 8, 2019 Office Action at TSDR 2.
Serial No. 88134290
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applicant’s advertising also explained how to use the bags to cook foods that were not
ordinarily browned. Id. The court also found significant the fact that the applicant
“appears to believe it necessary to advertise, inter alia, that meats may be browned
in its bags,” which “may indicate its unwillingness to rely on the mark alone even to
suggest that function.” Id.
Here, there are no multiple functions of the “automobile tire inflator sealers” sold
under the HYBRID INFLATOR mark, and no ambiguity regarding the motives for
Applicant’s explanation on its website of the function of its goods. It is enough to
support a finding of mere descriptiveness that a mark “describes one significant
attribute, function or property of the goods,” Fat Boys, 118 USPQ2d at 1513, but, as
the Examining Attorney puts it, “the sole purpose or function of the applicant’s goods
is to inflate and seal tires,” 8 TTABVUE 10 (emphasis added), and the HYBRID
INFLATOR mark immediately describes that function. Applicant’s website simply
elaborates on how that sole function is achieved without suggesting that the goods
have another one.
A consumer who knows that the goods are “automobile tire inflator sealers” would
understand HYBRID INFLATOR to immediately convey information about those
goods, namely, that they “both seal[ ] the tire using most any aerosol sealant on the
market and inflat[e] the tire to the correct pressure.”17 Applicant’s proposed mark is
thus merely descriptive of the identified goods, and it is ineligible for registration on
the Principal Register in the absence of a showing of acquired distinctiveness.

17 January 8, 2019 Office Action at TSDR 2.
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Decision: The refusal to register is affirmed.