Shane Williams

Trademark Trial and Appeal Board

Aug 12, 2002

No. 75942409 (T.T.A.B. Aug. 12, 2002)

Mailed: August 12, 2002
Paper No. 13
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Shane Williams, dba Public Safety Publications
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Serial No. 75/942,409
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Eugene J. Rath III of Price, Heneveld, Cooper, DeWitt &
Litton for Shane Williams, dba Public Safety Publications.
Brian A. Rupp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Shane Williams, dba Public Safety Publications
(applicant) has appealed from the final refusal of the
Trademark Examining Attorney to register the mark FIRE
TRADER for “buying, selling, trading and advertising of new
and used fire safety and fire safety-related products and
services via a computerized global network and via printed
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/942,409
2
publication.”1 Applicant and Examining Attorney have
submitted briefs but no oral argument was requested.
There are two issues in this appeal--mere
descriptiveness under Section 2(e)(1) of the Act and the
sufficiency of applicant’s description of services.
Mere Descriptiveness
Based upon dictionary definitions and excerpts from
applicant’s specimens and Web site, the Examining Attorney
argues that the mark FIRE TRADER is merely descriptive of
applicant’s services.2 While in his first Office Action the
Examining Attorney argued that “FIRE” refers to “flammable
items,” in a subsequent refusal and his brief he argued
that “FIRE” in applicant’s mark refers to applicant’s fire
safety-related goods and services. Coupled with the word
“TRADER,” which the Examining Attorney contends is a common
term used to describe activities of those involved in
buying, selling and trading, the word FIRE in applicant’s
mark describes a purpose, characteristic, function, feature
or use of applicant’s services--that of trading fire-
related items or trading “fire materials.” The Examining

1 Application Serial No. 75/942,409, filed March 13, 2000, based upon
allegations of use since June 1, 1998. Pursuant to request, applicant
submitted a disclaimer of the word “TRADER.”
2 The American Heritage Dictionary of the English Language Third Edition
(1992) defines “fire” as, among other things, “A rapid, persistent
chemical change that releases heat and light and is accompanied by
flame…”, and “trader” as “One that trades; a dealer: a gold trader; a
trader in bonds.”
Serial No. 75/942,409
3
Attorney contends that no imagination is required to
understand the nature of applicant’s services--that
applicant is a trader “in all things related to fire.”
In his brief, the Examining Attorney refers to the
following excerpts from applicant’s specimens as well as
applicant’s Web site:
“Fire Trader specializes in new and
used fire apparatus, and equipment.”
“FIRE TRADER has ‘one of the Largest
Selections of Fire…related Books and
Equipment on the Web!’”
“FIRE TRADER provides information from
thousands of paid Fire Departments.”
“FIRE TRADER buys equipment from fire
departments.”
“FIRE TRADER offers firefighting
equipment, firefighter badges, and
firefighting books and videos.”
In conclusion, the Examining Attorney argues that, like the
term “Fire Insurer” used to describe an underwriter of fire
insurance policies, the asserted mark FIRE TRADER is a
combination of two descriptive words immediately describing
the nature and purpose of applicant’s services.
Applicant, on the other hand, maintains that his mark
does not immediately convey information concerning his
services and is, at most, only suggestive of them.
Applicant contends that “FIRE” is not a significant
Serial No. 75/942,409
4
function or attribute of his goods or services. Contrary
to the Examining Attorney’s position, applicant argues that
the word “FIRE” in his mark does not conjure up an image of
equipment such as fire engines, fire suits, oxygen tanks,
etc., but instead could refer to a number of different
things such as campfires, fireplaces, blazing infernos,
fireworks, fire-starting substances or other fire-related
goods or services. Applicant does not trade fire,
applicant maintains. Because a multi-stage reasoning
process or degree of imagination is necessary to determine
the nature of applicant’s services, applicant argues that
his mark is not merely descriptive. Finally, applicant
states that competitors do not need to use these words in
describing their services.
A mark is merely descriptive if it immediately
describes the ingredients, qualities or characteristics of
the goods or services, or if it conveys information
regarding a function, purpose or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). A term may be descriptive even
if it only describes one of the qualities or properties of
the goods or services. In re Gyulay, 820 F.2d 1216, 1217,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987). We must look at the
mark in relation to the goods or services and the context
Serial No. 75/942,409
5
in which it is used, and not in the abstract, when we
consider whether the mark is merely descriptive. Abcor,
200 USPQ at 218.
A term which is suggestive, however, is registrable.
A suggestive term is one that suggests, rather than
describes, characteristics or attributes of a product, such
that imagination, thought or perception is required to
reach a conclusion about the nature of the goods or
services. In re Gyulay, supra. There is often a fine line
of distinction between a suggestive and a merely
descriptive term, and it is sometimes difficult to
determine when a term moves from the realm of
suggestiveness into the sphere of impermissible
descriptiveness. In re Recovery, Inc., 196 USPQ 830 (TTAB
1977). It is well settled, however, that where there is
doubt on this issue, the doubt must be resolved in
applicant’s behalf and the mark should be published for
opposition. See In re Rank Organization Ltd., 222 USPQ
324, 326 (TTAB 1984) and cases cited therein.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with applicant that
the combination of the words “FIRE” and “TRADER” creates a
new non-descriptive mark with a separate and distinct
commercial impression and meaning. Even when considered
Serial No. 75/942,409
6
with respect to applicant’s specific services, the mark
FIRE TRADER requires some degree of imagination or thought
in order to determine the nature of applicant’s services.
That is because the words in applicant’s mark literally
mean that applicant is trading “fire,” which is not, of
course, the case. Nor do we believe that this case is
analogous to the clearly generic expression “fire insurer.”
Unlike that expression, there is simply no evidence that
FIRE TRADER is or has been used by others. Furthermore,
applicant’s own use of the mark FIRE TRADER in his
specimens and on his Web site appears to reflect proper
service mark (or trade name) use. Finally, to the extent
there is doubt on this issue, that doubt is resolved in
favor of publication.
The Description of Services
In his final refusal, the Examining Attorney repeated
a requirement that applicant submit an amended
identification of services. He indicated that applicant’s
description of services is indefinite and that applicant
must specify the common commercial name of the services, or
the industry or field in which the services are used. The
Examining Attorney suggested the following description, if
accurate: “Computerized on-line retail services in the
field of fire safety products; providing trade information
Serial No. 75/942,409
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about fire services and fire safety products; dissemination
of fire related advertising for others via an on-line
electronic communications network.”
In his appeal brief, the Examining Attorney stated
that applicant’s description is “indefinite because selling
and sales are not services under the US Trademark Act or
the Nice Agreement since the primary beneficiary of selling
or sales is the seller. The Trademark Act requires an
applicant to specify the services in an explicit manner,
setting forth common names and using terminology which is
generally understood… The recitation of services should be
clear, accurate, and as concise as possible… The applicant
has not complied with these requirements.” In applicant’s
reply brief, applicant’s attorney simply argued that the
recitation of services is definite but that applicant would
be willing to modify the description, if necessary, if the
Examining Attorney’s descriptiveness refusal is reversed.3
We believe that the current description of services--
buying, selling, trading and advertising of new and used
fire safety and fire safety-related products and services
via a computerized global network and via printed
publication—-is sufficiently clear and definite to inform

3 Applicant may not defer compliance with a requirement until after the
Board’s decision on the merits. All requirements not the subject of an
appeal must be complied with prior to the filing of an appeal. See
TBMP §§1201.02 and 1217.
Serial No. 75/942,409
8
others of the specific nature of applicant’s services.
Further, the indication that applicant is buying, selling
and trading fire-safety products and services makes it
clear that these are not applicant’s own products and
services which are being bought, sold and traded under the
mark FIRE TRADER. Accordingly, we find that the current
identification is sufficiently definite and need not be
amended.
Decision: The refusal to register under Section
2(e)(1) of the Act is reversed; the requirement with
respect to applicant’s description of services is also
reversed.