EX (T.T.A.B. Mar. 30, 2019)

Sbyke USA LLC

Trademark Trial and Appeal BoardMar 30, 2019

EX (T.T.A.B. Mar. 30, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: March 30, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sbyke USA LLC _____ Serial No. 87433911 _____ Kit M. Stetina of Stetina Brunda Garred & Brucker, for Sbyke USA LLC. Katherine S. Chang, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Kuhlke, Taylor, and Pologeorgis, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Sbyke USA LLC (“Applicant”) seeks registration on the Principal Register of the term DRIFTBOARD (in standard characters) as a mark for the following goods (as amended): Electronically powered motor scooters; electronically motorized skateboards”, in International Class 12; and Skateboard trucks, in International Class 28.1 1 Application Serial No. 87433911 was filed on May 2, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87433911 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s applied-for mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the term DRIFTBOARD is merely descriptive of the identified goods. When the refusal was made final, Applicant appealed. The appeal is fully briefed. We affirm the refusal to register. I. Issues on Appeal Before proceeding to the merits of the refusal, we clarify the issues on appeal. Applicant, in its brief, addresses both the issues of whether its applied-for mark DRIFTBOARD is merely descriptive of and generic for its identified goods. A review of the prosecution history of the application confirms that the Examining Attorney never issued a genericness refusal (let alone a final one). She simply advised Applicant that the proposed mark may also be generic. Because the genericness issue is not before us, Applicant’s arguments directed solely to that issue will not be considered. To be clear, the sole issue on appeal is whether the term DRIFTBOARD is merely descriptive of Applicant’s identified goods. II. Descriptiveness Analysis A. Applicable Law In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act precludes registration of a mark on the Principal Register which, when used in connection with the applicant’s goods, is merely descriptive of them. “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or Serial No. 87433911 - 3 - characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Whether a term is merely descriptive is determined in relation to the goods or services for which registration is sought, the context in which the term is used, and the possible significance the term would have to a potential purchaser – here, a person seeking electric skateboards and scooters and skateboard trucks (i.e., skateboard parts). Chamber of Commerce, 102 USPQ2d at 1219. Evidence that a term is merely descriptive to the relevant purchasing public “may be obtained from any competent source, such as dictionaries, newspapers, or surveys,” In re Bayer Aktiengesellschaft, 488 F.2d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007), as well as “labels, packages, or in advertising material directed to the goods.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). It may also be obtained from websites and publications, and an applicant’s own specimen of use and any explanatory text included therein. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001). B. Arguments and Evidence The Examining Attorney maintains that the term DRIFTBOARD is merely descriptive of the identified goods because it is “commonly used by third parties to describe skateboards, scooters and similar goods.”2 The Examining Attorney further 2 Examining Attorney’s Appeal Brief, p.2; 6 TTABVUE 3. Serial No. 87433911 - 4 - explains that “[a] driftboard is a type of skateboard, scooter or similar wheeled product used for transportation and recreation,”3 as demonstrated by the following: 1. Internet materials from third-party websites using the term DRIFTBOARD or DRIFT BOARD to describe electric skateboards and scooters.4 • Amazon advertises a Sport Drift Board Drift Skate Board Skateboard (currently unavailable): (https://www.amazon.com) 3 Id. 4 August 3, 2017 Office Action; TSDR pp. 4-7 and February 23, 2018 Final Office Action; TSDR pp. 4-28. We find no meaningful difference between the terms DRIFTBOARD and DRIFT BOARD. See In re Omaha Nat. Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming the Board's finding that FirsTier is the phonetic equivalent of “first tier”); Armstrong Mfg. Co. v. Ridge Tool Co., 132 F.2d 158, 56 USPQ 165, 166 (CCPA 1942) (“Vistand” is the equivalent of “vise stand”); Seaguard Corp. v. Seaward Int'l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEAGUARD and SEA GUARD “are, in contemplation of law, identical”). Serial No. 87433911 - 5 - • AliExpress Mobile App compares various Drift Board Skateboards: (www.aliexpress.com) • DH Gate advertises various electric scooters: (www.dhgate.com) Serial No. 87433911 - 6 - • Bang good.com advertises a Sport Drift Board Drift Skate Board Skateboard (www.banggood.com) • An article from Best Balance Scooter entitled “3 Electric Drift Board Reviews You Should Read” states in part: “If you’re planning to get yourself an electric drift board soon, you should take care to do some research first. It’s tempting to think that all of the drift boards on the market are really just the same, but some are still better than others.” Excerpts from the reviews follow. ... Hausbell Self-balancing Smart Scooter The self-balancing electric drift board is also called a smart scooter by Hausbell. ... Vokul Self-Balancing Electric Scooter Vokuls’s electric drift board is a 13kg unit made of high-durability ABS plastic that renders it impact-and-scratch-resistant. … CoolReall Self-balancing Scooter The CoolReall is a two-wheeled drift board with a 500 motor at its core. (bestbalancescooter.com) Serial No. 87433911 - 7 - • The website SEGWAY NO HANDLES features the “HKCUBE TWO WHEEL SELF BALANCING SCOOTER REVIEW Self balancing drift boards have quite literally taken the world by storm. It is hardly surprising to see a large number of acclaimed celebrities as well as ordinary individuals eagerly embracing these ingenious means of transportation. (www.segwaynohandles.com) • An announcement under the heading ELECTRIC UNICYCLES touts the BEST SPORT DRIFT BOARD WITH QUALITY AND PERFORMANCE GUARANTEED, stating: “Today, I am going to introduce you [sic] the best sport drift board, which has quality and performance guaranteed.” (www.skateonroad.com) • Sky for less offer a Chrome Gold 6.5 Inch Hoverboard Driftboard Self Balancing Scooter Electric Scooter for $199.95 (www.skyforless.com) • Zeox offers a 2272 Hoverboard unicycle 2 wheels self balancing electric scooter white for $199.99 and states: “At Zeox, we are committed to improve hoverboards to meet the highest standard and safety target for our customers that will allow riders [sic] enjoy this ecofriendly smart electric self balancing scooter driftboard with ease.” (www.zeoxhoverboard.com) 2. The definition of “skateboard,” of which we take judicial notice, is defined in the online MERRIAM-WEBSTER DICTIONARY, in part, as “a short board mounted on small wheels that is used for coasting and for performing athletic stunts.”5 In traversing the refusal of registration, Applicant questions the probative value of the Examining Attorney’s evidence, argues that the term DRIFTBOARD is 5 www.merriam-webster.com. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 87433911 - 8 - suggestive of its identified goods, and asserts that any doubt as to descriptiveness must be resolved in its favor. Applicant has supported its position with the following: 1. Various definitions of the word “skateboard, of which we take judicial notice, for example: a short narrow board with two small wheels fixed to the bottom of either end, on which (as a recreation or sport) a person can ride in a standing or crouching position, propelling themselves by occasionally pushing one foot against the ground;6 a usually short, narrow board having a set of four wheels mounted under it, ridden in a standing or crouching position and often used to perform stunts;7 a narrow board mounted on roller-skate wheels, usually ridden while standing up;8 and a device consisting of an oblong board mounted on large roller-skate wheels and supporting a rider.9 2. Internet materials showing use of the term DRIFT BOARD in connection with goods other than those of the types identified in Applicant’s application, such as a wooden picture frames from Missouri Nature Art (http://www.theperfectimagesof stlouis.com/), paddle boards from Realtree (www.all4shooters.com) and snow products from Drift in the nature of snow shoes and skis (DRIFT www.drift- products.com).10 6 www.google.com. 8 TTABVUE 10. 7 www.thefreedictionary.com. 8 TTABVUE 13. 8 Id. 9 Id. 10 February 1, 2018 Response to Office Action; TSDR pp. 10-23. Serial No. 87433911 - 9 - C. Discussion Contrary to Applicant’s assertion, the evidence of record clearly demonstrates that the term DRIFTBOARD (DRIFT BOARD) is an overarching term used to describe electronically-powered motor scooters and skateboards and, by extension, the identified “skateboard trucks,” which, as characterized by the Examining Attorney and not disputed by Applicant, are simply parts of the electronically motorized skateboard. While quantitatively there is more evidence supporting the refusal with respect to the identified electronically-powered motor scooters, we nonetheless find the webpages from Amazon, AliExpress and Banggood.com sufficient to show that these entities use the term DRIFT BOARD to describe a type of motorized skateboard. The additional terms used in the product descriptions do not diminish the probative value of the evidence. Applicant’s attempt to limit the definition of “skateboard” by claiming that it must be “elongated in the direction of travel,” is unavailing. Not only are there multiple definitions in the record, at least one of which that does not include the limitation claimed by Applicant, the marketplace evidence reflects a variety of products that come under the rubric of a skateboard. As the Examining Attorney point out, “due to the somewhat new and hybrid nature of driftboards [drift boards], they are interchangeably referred to as skateboards and scooters.”11 Applicant’s contention that the proposed mark is suggestive at most because the term “might convey the general feeling of smoothly or effortlessly moving along, i.e., 11 Examining Attorney’s Appeal Brief, p. 5; 6 TTABVUE 6. Serial No. 87433911 - 10 - drifting or gliding”12 is likewise unavailing. The flaw in this argument is that it is defined in a vacuum instead of in relation to Applicant’s goods. The question is not whether someone presented only with the mark could guess what the goods are, but “whether someone who knows what the goods and services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1754, 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). Further, the fact that the term DRIFTBOARD (DRIFT BOARD) is also used to refer to items such as wooden picture frames, paddle boards and snow shoes does not detract from its descriptive significance in relation to the electronically powered motor scooters, electronically motorized skateboards and trucks for skateboards. “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). In sum, Applicant’s “electronically powered motor scooters and electronically motorized skateboards” are commonly referred to as “drift boards” or “driftboards,” and its “skateboard trucks” are component parts of the electronically-motorized skateboards. Given the present descriptive use of the term, Applicant cannot now 12 Applicant’s Appeal Brief, p. 12; 4 TTABVUE 13. Serial No. 87433911 - 11 - monopolize the term for its own exclusive use. In re Abcor Dev. Corp., 200 USPQ at 217. Businesses and competitors should be free to use descriptive language when describing their own goods to the public. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001). Finally, while Applicant correctly states the general principle that all doubts as to descriptiveness must be resolved in its favor, based on the evidentiary record in this case, we have no doubt that the designation DRIFTBOARD is merely descriptive of Applicant’s identified goods. D. Conclusion After careful consideration of all of the evidence and arguments presented, including evidence and arguments not specifically discussed herein, we conclude that the term DRIFTBOARD is commonly used by third-parties to identify powered scooters and skateboards and, accordingly, immediately describes, without any multi- step thought process, the “electronically powered motor scooters and electronically motorized skateboards” and “skateboard trucks” (parts) identified in Applicant’s application. Serial No. 87433911 - 12 - Decision: The refusal to register Applicant’s applied-for mark DRIFTBOARD under Section 2(e)(1) of the Trademark Act on the ground that the designation is merely descriptive of Applicant’s identified goods is affirmed as to both Classes 12 and 28.13 13 Applicant’s request that, in the event its applied-for mark is not passed to publication, “the Board grant permission to enter evidence under Section 2(f) to show acquired distinctiveness” is denied. “[A]n application that has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Trademark Act of 1946.” Trademark Rule 2.142(g); 37 C.F.R. § 2.142(g). Applicant also contends that the Examining Attorney’s “refusal to recommend an amendment to the Supplemental Register” ‘is inappropriate and cannot be sustained.” Applicant’s Reply Brief, p. 16; 8 TTABVUE 17. In fact, the Examining Attorney advised that she could not recommend such an amendment because the applied-for term appears to be generic. As noted above, this is not a refusal, merely an advisory. Applicant is mistaken in its apparent contention that the Examining Attorney’s discretion to not “recommend” an action that Applicant could have taken (if appropriate) unilaterally is a matter for appeal. Even so, as stated above, a reopening of examination is inappropriate after a decision is rendered. We further note that during examination, Applicant did not file an amendment to allege use, to submit evidence of acquired distinctiveness or to request an amendment of its application to seek registration of its applied-for mark on the Supplemental Register.