Rentalift, Inc.

Trademark Trial and Appeal Board

Sep 30, 2004

No. 76198802 (T.T.A.B. Sep. 30, 2004)

Mailed: Sept. 30, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rentalift, Inc.
________
Serial Nos. 76198801 and 76198802
_______
Stephen Cannavale of Hoffmann & Baron, LLP for Rentalift,
Inc.
Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Bucher and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Rentalift, Inc. has applied to register the marks
RENTALIFT, in typed form, (Serial No. 76198801) and
RENTALIFT and design, as shown below, (Serial No. 76198802)
for "rental of forklifts." Both applications were filed on
January 24, 2001, and both assert first use and first use
in commerce in January 1983.
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB
Ser Nos. 76198801 and 76198802
2
Registration has been finally refused with respect to
RENTALIFT in typed form pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that
the mark is merely descriptive of applicant's services;
with respect to the application for RENTALIFT and design,
the Examining Attorney has made final, pursuant to Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), a
requirement that applicant disclaim exclusive rights to
RENTALIFT. Applicant has asserted that RENTALIFT is
inherently distinctive, and has also argued, in the
alternative, that if the term is not inherently
distinctive, it has acquired distinctiveness.1 The
Examining Attorney has found that applicant's showing of
acquired distinctiveness is not persuasive.
Applicant filed notices of appeal in both
applications. Both applicant and the Examining Attorney
1 Although applicant did not specifically state that it was
seeking registration pursuant to Section 2(f) in the alternative,
it is clear from all of its papers that it continues to argue
that the mark is inherently distinctive.
Ser Nos. 76198801 and 76198802
3
have filed briefs, but applicant did not request an oral
hearing. Because both appeals involve substantially the
same record and the same issue, namely, whether RENTALIFT
is merely descriptive of the service of "rental of
forklift" or whether that term has acquired
distinctiveness, we decide both appeals in a single
opinion.
As a preliminary matter, we note that applicant has
submitted, with its brief, exhibits that had not previously
been made of record. The Examining Attorney has objected
to these exhibits as untimely. The Examining Attorney's
objection is well taken. See Trademark Rule 2.142(d) (the
record in the application should be complete prior to the
filing of an appeal). The Examining Attorney has also
objected to applicant's reference to certain third-party
registrations in its brief, because such registrations had
not been properly made of record. The Examining Attorney
is correct that applicant never properly made any third-
party registrations of record. See In re Duofold Inc., 184
USPQ 638 (TTAB 1974) (the submission of a list of
registrations is insufficient to make them of record).
However, applicant did list the registration in its
response to the second Office action, and the Examining
Attorney, in his final Office action, never advised
Ser Nos. 76198801 and 76198802
4
applicant as to any deficiency with the submission.
Accordingly, we will consider the listing of registrations
for whatever probative value it may have. However, because
applicant has literally only listed marks, without
indicating the registration number, the goods or services,
or whether they were registered on the Principal or
Supplemental Register or registered under the provisions of
Section 2(f), their probative value is virtually nil.
We turn now to the substantive issues in this appeal.
Section 2(e)(1) of the Trademark Act, inter alia,
prohibits the registration of a mark which, when used on or
in connection with the goods of the applicant, is merely
descriptive of them. Section 3 makes this provision
applicable to marks used in connection with services.
Section 6(a) provides that an applicant may be required to
disclaim an unregistrable component of a mark.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods or services with which it is used. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). The
determination is made not in a vacuum but in relation to
the goods on which, or the services in connection with
which, it is used. In re Venture Lending Associates, 226
USPQ 285 (TTAB 1985). See also, In re Abcor Development
Ser Nos. 76198801 and 76198802
5
Corporation, 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Moreover, mere misspelling does not add trademark
significance to an otherwise unregistrable merely
descriptive term. In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986).
Applicant does not dispute that RENTALIFT would be
perceived by consumers as the equivalent of "rent a lift."
In fact, applicant likens this term to registrations for
"Rent-A-Painter," "Rent-A-Laser-Die" and "Rent-A-Server."
Applicant's principal argument on the issue of whether
RENTALIFT is merely descriptive is that there are over 30
definitions for the word "lift," with "a machine or device
designed to pick up, raise, or carry something"2 being the
closest to a fork lift. Applicant also notes that there
are three definitions for the word "rent." As a result,
applicant contends that with "over 30 definitions that a
consumer may associate with the trademark sought to be
registered," "such a multitude of definitions … is unlikely
to lead to a consumer seeing the mark as merely
descriptive." Brief, p. 4.3 Applicant does not, however,
point to any definitions for these words that would convey
2 The American Heritage Dictionary of the English Language, 3d
ed. ©1992.
3 Because the records in each application are virtually
identical, cites to Office actions and briefs refer to papers in
each application.
Ser Nos. 76198801 and 76198802
6
a meaning other than the rental of the type of equipment
known as a lift.
As noted above, the determination of whether a mark is
merely descriptive is made in relation to the goods or
services with which it is used. Thus, we must consider the
impression of RENTALIFT as it is used in connection with
the service of "rental of forklifts." When used with such
services, consumers would immediately understand the word
"lift" in applicant's mark to refer to the equipment, and
not to such other definitions as "an elevation of the
spirits" or "a rise or an elevation in the level of the
ground" or "one of the layers of leather, rubber, or other
material making up the heel of a shoe." Although the most
apt definition of "lift" for applicant's services does not
limit a lift to a "forklift," a forklift, which is defined
as "a small industrial vehicle with a power-operated
pronged platform that can be raised and lowered for
insertion under a load to be lifted and moved,"4 would
certainly fall within the meaning of a "lift."
Accordingly we find that RENTALIFT, when used in
connection with the rental of forklifts, directly conveys,
4 The Examining Attorney submitted definitions, taken from The
American Heritage Dictionary of the English Language, 3d ed. ©
1992, for "lift," "forklift" and "rent."
Ser Nos. 76198801 and 76198802
7
without any need for the exercise of imagination or
thought, that applicant offers consumers the opportunity to
rent a lift, including a forklift.
The fact that applicant previously owned a
registration for the identical mark for identical services
does not change this determination.5 That registration was
cancelled in 1994, and no longer has any effect. In re
National Retail Hardware Association, 219 USPQ 851, 854
(TTAB 1983). As the Board stated in In re BankAmerica
Corp., 229 USPQ 852, 853-854 (TTAB 1986):
The Act requires the Board to decide an
appeal from a final refusal to
register. Our responsibility is to
make such a decision based on the
record before us. We are not bound by
the judgment of the Examining Attorney
who passed applicant's previous
application to publication. In re
Calzaturificie Munari, 197 USPQ 564
(TTAB 1977), and In re Dayco Corp., 193
USPQ 379 (TTAB 1976).
See also, TMEP §1216.01 and cases cited therein.
We next consider whether applicant's mark RENTALIFT, or
the term RENTALIFT in applicant's RENTALIFT and design mark,
has acquired distinctiveness. During the course of
prosecution, applicant stated that "the trademark sought be
5 Registration No. 1458715, issued September 22, 1987. This
registration was cancelled on March 28, 1994 for failure to file
a Section 8 affidavit of use.
Ser Nos. 76198801 and 76198802
8
to registered has been in substantially exclusive and
continuous use since 1983 in all manner of advertisements
and identification." Response dated January 31, 2003.
However, despite the Examining Attorney's advising
applicant, in both the Office actions mailed July 31, 2002
and July 28, 2003 that applicant would need to supply an
affidavit or declaration attesting to substantially
exclusive and continuous use since 1983, applicant chose not
to submit such support.
Trademark Rule 2.41 discusses proof of distinctiveness
under Section 2(f):
(a) When registration is sought of a
mark which would be unregistrable by
reason of §2(e) of the Act but which is
said by applicant to have become
distinctive in commerce of the goods or
services set forth in the application,
applicant may, in support of
registrability, submit with the
application, or in response to a request
for evidence or to a refusal to
register, affidavits, or declarations in
accordance with §2.20, depositions, or
other appropriate evidence showing
duration, extent and nature of use in
commerce and advertising expenditures in
connection therewith (identifying types
of media and attaching typical
advertisements), and affidavits, or
declarations in accordance with §2.20,
letters or statements from the trade or
public, or both, or other appropriate
evidence tending to show that the mark
distinguishes such goods.
Ser Nos. 76198801 and 76198802
9
(b) In appropriate cases, ownership of
one or more prior registrations on the
Principal Register or under the Act of
1905 of the same mark may be accepted as
prima facie evidence of distinctiveness.
Also, if the mark is said to have become
distinctive of applicant’s goods by
reason of substantially exclusive and
continuous use in commerce thereof by
applicant for the five years before the
date on which the claim of
distinctiveness is made, a showing by
way of statements which are verified or
which include declarations in accordance
with §2.20, in the application may, in
appropriate cases, be accepted as prima
facie evidence of distinctiveness. In
each of these situations, however,
further evidence may be required.
Applicant did not submit the required affidavit or
declaration supporting the statement that it has used its
mark since 1983, or has made substantially continuous and
exclusive use in commerce for the five years before the
claim of distinctiveness was made. Accordingly, we give no
consideration to its attorney's statements regarding use.
Further, applicant has not made of record any evidence
as to its advertising or other promotion of its mark. As
noted previously, the untimely submissions of a telephone
directory advertisement and Internet materials submitted
with applicant's brief have not been considered.
Applicant also seeks to rely on its cancelled
registration for RENTALIFT for rental of forklifts as
evidence of acquired distinctiveness. As the quoted
Ser Nos. 76198801 and 76198802
10
language indicates, ownership of a prior registration on
the Principal Register of the same mark may be accepted as
prima facie evidence of distinctiveness. However, citing,
TMEP §1212.04(d), which in turn cites In re BankAmerica
Corp., supra, the Examining Attorney contends that a claim
of acquired distinctiveness cannot be based on a
registration that is cancelled or expired.
Applicant asserts that the Board in the BankAmerica
decision "did not consider nor hold that a claim of
acquired distinctiveness cannot be based on a registration
that is cancelled or expired." Brief, p. 7. Applicant
points to the following language of the Board, found at
page 853 of that decision:
If the issue were whether the term
sought to be registered had become
distinctive within the meaning of
Section 2(f), a subsisting registration
might be accepted as prima facie
evidence of distinctiveness, but here
we are presented with neither a
subsisting registration nor the issue
of registrability under Section 2(f).
The BankAmerica case bears many similarities to the
present situation, in that registration was refused on the
ground that the mark was merely descriptive, and the
applicant in that case also claimed ownership of a
registration for the same mark for the same services which
registration was cancelled under Section 8 of the Act.
Ser Nos. 76198801 and 76198802
11
However, in that case the applicant did not claim in the
alternative that its mark had acquired distinctiveness.
Although the Board noted that both applicant and the
Examining Attorney had made arguments as to whether the
mark had acquired distinctiveness, the Board stated that,
because the applicant had specifically declined to formally
enter such a claim, the issue of whether the mark had
acquired distinctiveness was not before it. In this sense,
the Board's statement regarding the need for a subsisting
registration as a basis for a Section 2(f) claim was dicta.
However, there is no ambiguity in the Board's view that, in
order to base a Section 2(f) claim on a prior registration,
that registration had to be subsisting. That principle has
been repeated in other Board decisions. See In re Dial A
Mattress Operating Corp., 52 USPQ2d 1910, n. 16 (TTAB
1999), rev'd on other grounds, 240 F.3d 1341, 57 USPQ2d
1807 (Fed. Cir. 2001). Although a subsisting registration
may be evidence that distinctiveness shown by that
registration has transferred to the mark for the goods and
services in an application, a cancelled or expired
registration is not evidence of any distinctiveness
whatsoever. That basis for that principle is especially
evident in the present situation, where applicant's prior
registration was cancelled more than ten years ago. We
Ser Nos. 76198801 and 76198802
12
cannot assume that any distinctiveness that might have
existed with respect to applicant's mark ten years ago has
transferred to applicant's mark today.
Accordingly, we find that applicant has failed to
demonstrate that RENTALIFT has acquired distinctiveness.
Decision: The refusal to register the application for
RENTALIFT in typed form, Serial No. 76198801, on the ground
that applicant's mark is merely descriptive is affirmed.
We further find that applicant has failed to show that its
mark has acquired distinctiveness, and therefore it is not
entitled to registration under the provisions of Section
2(f) of the Trademark Act. Similarly, because the term
RENTALIFT is merely descriptive and has not been shown to
have acquired distinctiveness, the requirement for a
disclaimer of RENTALIFT in Application Serial No. 76198802
is also affirmed. However, if applicant submits the
required disclaimer within thirty days, Application Serial
No. 76198802 will be forwarded for publication.