Rocket Racing, Inc.Download PDFTrademark Trial and Appeal BoardMar 27, 2008No. 78766033 (T.T.A.B. Mar. 27, 2008) Copy Citation Mailed: March 27, 2008 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Rocket Racing, Inc. ________ Serial No. 78766033 (Filed December 2, 2005) _______ Deborah A. Peacock and Vidal Oaxaca of Peacock Myers, P.C. for Rocket Racing, Inc. Megan K. Whitney, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney) _______ Before Quinn, Rogers and Cataldo, Administrative Trademark Judges. Opinion by Rogers, Administrative Trademark Judge: Applicant Rocket Racing, Inc. has applied to register the words VERTICAL DRAG RACING in standard character form, on the Principal Register, as a trademark for "rocket- powered aircraft and spacecraft," in Class 12.1 The 1 The identification reflects amendment during prosecution from the original listing of "rocket powered vehicles used in competition, exhibition and education events," in Class 41. The examining attorney's statement in her appeal brief (p. 2) that the original identification was "aircraft and spacecraft" is in error. There was no error, however, in the examining attorney's This Opinion is Not a Precedent of the TTAB Ser No. 78766033 2 application is based on applicant's stated intention to use the proposed mark in commerce. The examining attorney noted in the final refusal of registration that, if applicant filed an amendment to allege use of the proposed mark, amendment of the application to seek registration on the Supplemental Register would be an appropriate response to the refusal of registration (discussed below). Applicant did not, however, file an amendment to allege use in commerce. The only issue presented by the current appeal is the question whether VERTICAL DRAG RACING is descriptive for the identified goods, and therefore barred from registration on the Principal Register. Other issues raised during prosecution of the application have been resolved. The examining attorney denied applicant's request for reconsideration of the final refusal of registration. Applicant and the examining attorney then filed briefs addressing the issue. The briefing of the issue on appeal resulted in one preliminary issue requiring attention. Applicant attached to its appeal brief various items of evidence. One item to amendment of the class of goods after the identification was amended. While an applicant may indicate what class it believes is appropriate for identified goods or services, ultimately, classification is the prerogative of the Office. Ser No. 78766033 3 which the examining attorney has objected is a reprint of an article from Air & Space Magazine posted on applicant's website. While applicant argues that the evidence was not previously available, that is only one factor to consider in deciding whether to draw an exception to Trademark Rule 2.142(d), which dictates that the record for an application being considered on appeal should be complete prior to the filing of the appeal. Moreover, it is insufficient to merely submit the new evidence with an appeal brief and argue therein (or, as here, in a reply brief) that the evidence was not previously available. Rather, the proper procedure, not followed by applicant, is to request a suspension of the appeal and remand for consideration of the evidence. Accordingly, the examining attorney's objection is entirely correct and is sustained.2 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 2 As applicant notes in its reply brief, at p. 3, arguments presented in applicant's appeal brief "regarding the nature of the services [sic]" are nevertheless supported by material previously made of record. Ser No. 78766033 4 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 that the term would have to the average purchaser of the goods or services because of the manner of its use or intended use. 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). It is with regard to this latter point that applicant's analysis of the issue presented by this appeal goes astray. Applicant, because it knows what its "Rocket Ser No. 78766033 5 Racing League" is all about,3 consistently has argued, during prosecution of the application and in briefing the appeal, that its racing aircraft move vertically only in segments or legs of Rocket Racing League races ("vertical flight is but a small subset of the overall flight pattern involved with Applicant's races," brief, p. 7) and that drag racing is historically and almost exclusively a type of race for cars, not aircraft, on horizontal surfaces ("mental steps are required to equate 'drag racing' with rocket propelled aircraft given that 'drag racing' is correctly associated with land vehicles," brief, p. 8). Thus, applicant concludes, VERTICAL DRAG RACING is primarily incongruous when considered in conjunction with applicant's goods: "Drag racing, by definition, proceeds in a roughly horizontal manner, on land, so that adding 'vertical' adds incongruity to the overall mark at issue." Brief, p. 8. We must be concerned, however, not with the particular aircraft utilized in the particular races run by the Rocket Racing League but, rather, with any and all forms of "rocket-powered aircraft and spacecraft" and any possible 3 See material (from www.rocketracingleague.com) appended to applicant's November 27, 2006 response to the examining attorney's initial refusal of registration. See also, the summary presented at pages 7-8 of applicant's main appeal brief. Ser No. 78766033 6 uses of such a broad range of rocket-powered craft. If the mark is descriptive of any of the goods which may fall within this identification, it is proper to refuse registration. See Tower Tech, supra, 64 USPQ2d at 1318 ("Further, applicant's broad identification of goods encompasses both cooling towers that are controlled by computers and cooling towers, if there are any, that are not controlled by such technology."); Cf. In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988) ("registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought"), aff'd without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989). Applicant may not view itself as seeking registration of VERTICAL DRAG RACING for rocket- powered aircraft or spacecraft that are suitable for such drag racing, but because its identification does not exclude such goods, we must view the identification as encompassing such goods. The record created by applicant and the examining attorney clearly establishes, through submission of numerous dictionary definitions and article excerpts retrieved from the NEXIS database, that "drag racing" has historically been an event for land vehicles racing on paved or other relatively straight and smooth surfaces. Ser No. 78766033 7 Nonetheless, seven4 article excerpts introduced by the examining attorney include references to "[d]rag races between a P-51 Mustang airplane and racing cars" (The San Diego Union-Tribune, June 25, 2005), drag races "between a Ferrari and a fighter jet" (Charlotte Observer (North Carolina) December 12, 2003), and references to drag racing of airplanes in the Albuquerque Journal (October 10, 2005), The Roanoke Times (Virginia) (April 25, 2005) and The Oklahoman (Oklahoma City, OK) (December 16, 2003). We find this evidence sufficient to establish that "drag races" and "drag racing" are not terms confined to use as descriptors of land-based vehicle racing. Thus, while we do not disagree with applicant's contention, in essence, that drag racing is a term primarily or historically associated with racing of land-based vehicles, its use in conjunction with races involving aircraft is not unusual. 4 One of the seven article excerpts is from an Australian publication but the examining attorney has argued that it should be considered. Compare In re Wilcher Corp., 40 USPQ2d 1929, 1931 (TTAB 1996) (in absence of evidence establishing substantial circulation of foreign publications in the United States, they are not competent to show significance of term to American public) with In re Remacle, 66 USPQ2d 1222 (TTAB 2002) (internet web pages from sources outside the United States may, in appropriate circumstances, be given weight as evidence). We have considered the excerpt, because applicant did not object to it as emanating from a foreign publication and actually discussed the excerpt in its reply brief, at p. 5. However, this excerpt alone is not critical to our decision and we would not alter our decision if this excerpt were entirely discounted. Ser No. 78766033 8 Because drag racing is a term that can be used to describe races involving aircraft, and therefore is a descriptive term for aircraft that can be so raced, we must next consider whether "vertical" is also a descriptive term for such aircraft, as well as whether the combination of "vertical" and "drag racing" results in a registrable mark even if the two components, separately, would only be descriptive. Applicant's Rocket Racing League web page describes the "three-dimensional track" that its racers traverse as "planned to extend one mile vertically, two miles down-track and one half-mile in the cross-plane direction." Applicant argues that its "rocket powered aircraft and spacecraft … race along computer generated courses" within the three-dimensional track based on "coordinates that are not strictly vertical in nature but have many twists and turns." Brief, p. 7. The examining attorney, in contrast, argues that vertical is descriptive of applicant's aircraft because "a substantial portion of the distance applicant's rocket-powered aircraft and spacecraft travel while racing requires vertical movement." Brief, p. 4. Further, the examining attorney argues that even if "vertical" describes "any portion … of the movement of applicant's goods [it] is sufficient to deem the term descriptive of a characteristic of applicant's goods." Id. Ser No. 78766033 9 Both applicant and the examining attorney, however, miss the point. As noted earlier, we cannot restrict our analysis to the type of rocket-powered aircraft that may race in applicant's Rocket Racing League. Applicant's racers appear to be the kind of racers that are referred to in part of the NEXIS excerpt from the Albuquerque Journal ("Sunday's event was a precursor to the X Prize Cup, the first of which will be held next year in New Mexico. It will feature NASCAR-style races between rocket-powered planes….").5 The identification of goods, however, is not limited to aircraft that can fly NASCAR-style races or that can fly races involving many twists and turns in a three- dimensional track of the type described on applicant's web page. The identification is broad enough to encompass rocket-powered aircraft that can race in primarily vertical fashion. The Albuquerque Journal article excerpt mentions this type of race, specifically, "'drag' races between vertical-launch rockets." Applicant's web page also mentions that its Rocket Racing League may expand its vision of racing: "Later, the race zone is planned to 5 Applicant's Rocket Racing League web page mentions the league "will exist as the primary race support and hosting element of the X PRIZE Cup." The web page discusses the October 9, 2005 "Countdown to the X PRIZE Cup" in Las Cruces, New Mexico; and the Albuquerque Journal article discusses an event from that date. Thus, the article appears to be referring to applicant's 2005 countdown event and an initial round of racing in 2006. Ser No. 78766033 10 contain a more expansive volume of airspace stretching to sub-orbital altitudes." Clearly, if the racing of rocket- powered aircraft and spacecraft is a new field, new and different types of races may be developed over time. Such races could include primarily vertical drag races. Aircraft used in such races would be clearly and unambiguously described as "vertical drag racing" aircraft, and are encompassed by the broad scope of applicant's identification. It matters not that applicant does not now plan to produce or race such aircraft.6 What matters is that prospective producers of aircraft that could be used for vertical drag racing must be free to describe their aircraft as suitable for such racing. We are not persuaded that VERTICAL DRAG RACING is registrable by applicant's argument that there is no present competitive need for others to use the designation. See In re International Game Technology Inc., 1 USPQ2d 1587, 1589 (TTAB 1986) ("A merely descriptive term used first or only by one party is no less descriptive because of its limited use, nor is it registrable as long as the 6 It is not entirely clear from the Rocket Racing League web page and other information provided by applicant whether it anticipates being a manufacturer and vendor of rocket-powered aircraft or merely running a racing league for such aircraft. However, the accuracy of applicant's identification is not an issue before us in this appeal. Ser No. 78766033 11 relevant public perceives of the term as describing the goods."), and In re MBAssociates, supra, 180 USPQ at 339. Moreover, it is not necessary that a term be in common usage in the particular industry before it can be found merely descriptive. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). Likewise, we are not persuaded that the designation should be registered because the combination of "vertical" and "drag racing" is incongruous. See In re IBP, Inc., 228 USPQ 303 (TTAB 1985) ("If the juxtaposition of the two words does not convey a commercial impression which is different from that of the two words taken separately, then the combination is also merely descriptive."). See also, In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001). Decision: The refusal of registration under Section 2(e)(1) on the ground that the proposed mark is descriptive of the identified goods is affirmed. Copy with citationCopy as parenthetical citation