Rocket Racing, Inc.

Trademark Trial and Appeal Board

Mar 27, 2008

No. 78766033 (T.T.A.B. Mar. 27, 2008)

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
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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.