SFS Intec Holding AG

Trademark Trial and Appeal Board

Nov 16, 2015

No. 79109409 (T.T.A.B. Nov. 16, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SFS Intec Holding AG
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Serial No. 79109409
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John J. O’Malley of Volpe & Koenig P.C.,
for SFS Intec Holding AG.
Rebecca A. Smith, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Lykos, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
SFS Intec Holding AG (“Applicant”) seeks registration on the Principal Register
of the mark SOL-R (in standard characters) for goods ultimately identified as
Common metals and their alloys; building materials of
metal, namely, metal hardware, namely, screws, rivets,
bolts; metal transportable buildings; articles of small
ironware, namely, bolts, nails, rivets, screws; metal goods,
namely, nuts, washers; fixed installations of metal,
namely, for solar installations; metal construction
materials for solar panels, namely, braces, supports, and
cladding; metal roof covering materials, namely, flashing,
panels, and tiles incorporating metal frames for solar
panels; retaining systems comprised of metal cable wires
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and metal cantilevered brackets for solar panels; ground
supports of metal for solar panels; steel rods for use with
solar panels in International Class 6,
Non-metallic building materials, namely, roofing
elements, non-metallic reinforcements for concrete and
wood building construction, namely, rods; non-metal roof
cladding and roofing elements for photovoltaic elements,
namely, non-metal roofing panels, tiles, and roof covering;
structural component parts of the aforementioned goods;
roofing, not of metal, incorporating solar cells in
International Class 19, and
Non-metal fasteners, namely, screws, rivets, and bolts in
International Class 20.1
The Trademark Examining Attorney has 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 Applicant’s mark is merely descriptive of the identified goods in all
three classes.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a
mark which, (1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A
term is merely descriptive of goods or services within the meaning of Section 2(e)(1)
“if it immediately conveys knowledge of a quality, feature, function, or characteristic

1 Application Serial No. 79109409 was filed on November 28, 2011, based upon a request
for extension of protection filed under Section 66(a) of the Trademark Act, 15 U.S.C.
§ 1141(f).
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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) (quoting In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538, 543 (1920) (“A
mark is merely descriptive if it ‘consist[s] merely of words descriptive of the
qualities, ingredients or characteristics of’ the goods or services related to the
mark.”)), cited with approval in In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574,
1575 (Fed. Cir. 2015).
The determination of whether a mark is merely descriptive must be made “in
relation to the particular goods for which registration is sought, the context in
which it is being used, and the possible significance that the term would have to the
average purchaser of the goods because of the manner of its use or intended use.”
Bayer Aktiengesellschaft, 82 USPQ2d at 1831 (citing In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978)). In other words, the question is not whether
someone presented only with the mark could guess the goods listed in the
identification of goods. Rather, the question is whether someone who knows what
the goods are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012); Abcor Dev. Corp., 200 USPQ at 218. In addition, it is
not necessary, in order to find a mark merely descriptive, that the mark describe
each feature of the goods, only that it describe a single, significant ingredient,
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quality, characteristic, function, feature, purpose or use of the goods. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d
1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)); In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
II. Evidence and Argument
The Examining Attorney asserts that SOL-R simply is a novel spelling of the
word “solar.” The Examining Attorney relies on the following dictionary definition of
the word “solar: “[o]f, relating to, or proceeding from the sun: solar rays; solar
physics.”2 As the identification of goods in the application features products that are
used specifically with solar installations and solar panels, and roofing that
incorporates solar cells, the Examining Attorney contends that the proposed mark
describes a significant feature of the identified goods.
In addition, the Examining Attorney introduced excerpts from two third-party
websites showing that others use “sol-r” as an alternate spelling of the term “solar”
for other solar products ( sells SOL-R-FLOR “active solar water
heaters,”3 and sells SOL-R-THERM “solar thermal domestic hot
water heating” systems4), and a third-party registration that issued on the
Supplemental Register for the mark SOL-R-WASH for “cleaning and maintenance
of solar panels, solar tubes, solar troughs and solar mirrors.”5

2 attached to March 14, 2012 Office Action.
3 Attached to October 8, 2012 Office Action.
4 Attached to October 8, 2012 Office Action.
5 Reg. No. 3942459 registered on April 5, 2011.
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Based on this evidence, it is the Examining Attorney’s position that the word
“solar” is merely descriptive of solar products such as those identified in the
application, and Applicant’s proposed mark SOL-R also is merely descriptive
because SOL-R is the equivalent of the word “solar.”
In traversing the refusal, Applicant argues that consumers who view SOL-R
alone would not immediately know that Applicant’s goods are used with solar
panels and installations, and therefore the proposed mark is suggestive rather than
descriptive. However, this is not the standard. As noted above, we must consider the
context in which the mark is used in connection with the goods identified in the
application, and understand the significance that the mark would have to the
average purchaser of the goods in the marketplace. See DuoProSS Meditech Corp.,
103 USPQ2d at 1757. As discussed below, purchasers seeking Applicant’s solar
products would immediately understand Applicant’s proposed mark SOL-R to mean
that Applicant’s products are used with solar installations and solar panels, and
roofing that incorporates solar cells.
In a similar vein, Applicant also argues that SOL-R “by itself does not
immediately convey the word ‘solar,’” and even if “SOL-R indicates some
relationship to ‘solar’ or even the sun, there is nothing about the mark or the
identification of goods that definitely indicates the products’ function,
characteristics, or use with specificity.”6 However, Applicant’s use of the term
“solar” throughout Applicant’s identification of goods belies this contention. Again,

6 27 TTABVUE 16.
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the test is not whether a purchaser who views Applicant’s proposed mark SOL-R in
a vacuum could guess what Applicant’s products are. See Chamber of Commerce of
the U.S., 102 USPQ2d at 1219.
On this record, we find that SOL-R is an alternative spelling of the word “solar”
and would be perceived as such, and that SOL-R would be pronounced as “solar.”7
We further find, and Applicant does not dispute, that Applicant’s goods are used on
or in connection with solar panels and installations, and roofing that incorporates
solar cells.8
Based on the identification of goods and the excerpts from the third-party
websites mentioned above, we find that the proposed mark SOL-R is merely
descriptive of a significant feature or characteristic of Applicant’s identified goods.
No imagination is required by a purchaser or user to discern that the mark, when
applied to the identified goods, describes products that are used on or in connection
with solar panels and installations, and roofing that incorporates solar cells. A
slight misspelling of a merely descriptive word, such as “sol-r,” generally does not
turn the descriptive word into an inherently distinctive trademark. The Supreme
Court has held that:
The word, therefore, is descriptive, not indicative of the
origin or ownership of the goods; and, being of that
quality, we cannot admit that it loses such quality and

7 Applicant has proposed no alternative pronunciation for the term SOL-R, and we are
aware of none.
8 Applicant does not argue that the “[n]on-metal fasteners, namely, screws, rivets, and
bolts” identified in Class 20 should be treated differently from the goods identified in
Classes 6 and 19, some of which are specifically limited to solar applications, nor has
Applicant sought to divide out the Class 20 goods from the application.
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becomes arbitrary by being misspelled. Bad orthography
has not yet become so rare or so easily detected as to
make a word the arbitrary sign of something else than its
conventional meaning ….
Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 455 (1911). See also
Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU
held equivalent of “new” in the mark NU-ENAMEL); In re Quik-Print Copy Shop,
Inc., 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (holding QUIK-PRINT
descriptive: “There is no legally significant difference here between ‘quik’ and
‘quick.’”); The Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA
1962) (“TINTZ [is] a phonetic spelling of ‘tints’”); King-Kup Candies, Inc. v. King
Candy Co., 288 F.2d 944, 129 USPQ 272, 273 (CCPA 1961) (“It is clear, therefore,
that the syllable ‘Kup,’ which is a full equivalent of the word ‘cup,’ is descriptive.”);
Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97,
99 (CCPA 1947) (“the term ‘KWIXTART’ is but a phonetic spelling of the term ‘quick
start’ and was intended to describe merely that appellant’s battery would start a
motor or engine quickly.”); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009)
(URBANHOUZING found to have same meaning as URBAN HOUSING).
Thus, Applicant’s proposed mark SOL-R does not become an inherently
distinctive mark by the slight misspelling of the commonly used and understood
descriptive term “solar.” An ordinary consumer encountering Applicant’s proposed
mark SOL-R in connection with Applicant’s products, which are used on or in
connection with solar panels and installations, and roofing that incorporates solar
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cells, would immediately perceive the misspelled term as the phonetic equivalent of
the merely descriptive term “solar.”
We also have considered the Examining Attorney’s evidence of one third-party
registration issued on the Supplemental Register for SOL-R-WASH as showing that
the USPTO has treated the term SOL-R-WASH as merely descriptive for “cleaning
and maintenance of solar panels, solar tubes, solar troughs and solar mirrors.”
Although this evidence is entitled to some probative value, it is not conclusive on
the issue of mere descriptiveness of the term SOL-R. Each case must stand on its
own merits. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
We conclude that Applicant’s proposed mark SOL-R, when applied to the goods
identified in the application, is merely descriptive thereof under Section 2(e)(1).
Decision: The refusal to register Applicant’s proposed mark SOL-R is affirmed.