Syde Holdings LLCDownload PDFTrademark Trial and Appeal BoardMar 28, 2019EX (T.T.A.B. Mar. 28, 2019) Copy Citation Mailed: March 28, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Syde Holdings LLC _____ Serial No. 87737708 _____ Hillel I. Parness of Parness Law Firm, PLLC, for Syde Holdings, LLC. Midge F. Butler, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Mermelstein, Wolfson, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Syde Holdings LLC seeks registration on the Principal Register of the proposed mark CUVVR, in standard characters, for the following goods in International Class 9: Screen protectors comprised of glass adapted for use with portable electronic devices; protective cases adapted for use with portable electronic devices; devices comprised of plastic used to align screen protectors and portable electronic devices during the screen protector installation process.1 1 Application Serial No. 87737708 was filed on December 29, 2017, based on Applicant’s allegation of a bona fide intention to use the mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Applicant submitted an Amendment to Allege Use on This Opinion Is Not a Precedent of the TTAB Serial No. 87737708 - 2 - Registration has been refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that CUVVR is merely descriptive of Applicant’s goods. We affirm the refusal to register. I. 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 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 to protect or clean the screens of portable electronic devices – because of the manner of its use or intended use. Chamber of Commerce, 102 USPQ2d at 1219. August 16, 2018, which the Examining Attorney acknowledged and accepted in her Final Office Action on September 7, 2018. Assignment of the application from Syde LLC to Applicant as of January 1, 2018 was recorded as resubmitted with the PTO’s Assignment Branch on September 5, 2018 at Reel/Frame 6454/0790. The assignment does not state that Applicant is a successor to Syde LLC’s business pursuant to Trademark Act Section 10(a)(1), 15 USC § 1060(a)(1). However, in view of the Board’s decision, inquiry into the validity of the assignment at the time it was made is not necessary. Serial No. 87737708 - 3 - II. Descriptiveness Analysis Because the term Applicant seeks to register, CUVVR, is phonetically identical to “cover,” purchasers would perceive CUVVR as the equivalent of “cover.” We grant the Examining Attorney’s request to take judicial notice of a definition of “cover” meaning “to put one thing over another, in order to protect or hide it.”2 We find that “cover” immediately conveys knowledge about the function of Applicant’s identified screen protectors and protective cases, which are used to cover portable electronic devices and their screens in order to protect them. “Cover” therefore is merely descriptive of those goods. See, e.g., Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 458 (1911) (“The word [rubberoid] . . . is descriptive, not indicative of the origin or the ownership of the goods; and, being of that quality, we cannot admit that it loses such quality and becomes arbitrary by being misspelled [as ‘Ruberoid’].”); In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Despite its novel spelling, CUVVR thus also is merely descriptive of Applicant’s goods. See, e.g., In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 & n.9 (CCPA 1980) (affirming holding that QUIK-PRINT is merely descriptive of printing and photocopying services); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding URBANHOUZING merely descriptive of real estate services). 2 Submitted with Examiner’s Brief, 6 TTABVUE 11 (from macmillandictionary.com). Serial No. 87737708 - 4 - Applicant contends that CUVVR is not descriptive of its goods as amended during examination. The following chart lists the goods as originally identified in the application and as amended, with certain goods displayed in bold for emphasis: Original Identification Amended Identification Screen protectors comprised of glass adapted for use with portable electronic devices Screen protectors comprised of glass adapted for use with portable electronic devices [Unchanged] Protective display screen covers adapted for use with portable electronic devices Protective cases adapted for use with portable electronic devices Devices to attach screen protectors comprised of glass to portable electronic devices Devices comprised of plastic used to align screen protectors and portable electronic devices during the screen protector installation process Accessories to clean screens of portable electronic devices, namely, sprays, wipes, microfiber cloths and dust stickers [Deleted]3 Applicant argues that “the changes it has offered to make to the goods description – specifically narrowing the second set of goods to cases, rather than the broader ‘covers’ – eliminates any potential remaining concern that CUVVR is merely descriptive of the goods at issue.” Appeal Brief at 8-9, 4 TTABVUE 12-13. We are not persuaded by Applicant’s argument. The amendment to the second type of identified goods from “protective display screen covers” to “protective cases” eliminates the word “cover” from the identification of goods, but does not change the 3 We acknowledge the discrepancy between Applicant’s August 16, 2018 Amendment to Allege Use, by which the goods were deleted, and its Response to Office Action filed the same day, in which Applicant purports to both delete and retain these goods as amended, although Applicant now appears to agree that they were deleted. Appeal Brief at 2, 6, 4 TTABVUE 6, 10. Because the goods have been deleted, the purported amendment is ineffective, and in any event, would otherwise be immaterial to the outcome. Serial No. 87737708 - 5 - function of the described goods. The following excerpt from the first page of Applicant’s specimen of use demonstrates that the function of Applicant’s goods is to cover portable electronic devices to protect them: The “About the product” section of the same page of the specimen states that the screen protector “fully covers the entire Nintendo Switch display.” We also deny Applicant’s request to make an affirmative clarifying finding that the mere descriptiveness assessment was only ever rendered by the Examining Attorney in connection with type (ii) of the applied-for goods (goods that protect mobile devices), and that it was not rendered, and does not serve to block, registration on the Principal Register for types (i) and (iii), namely devices that protect mobile device screens and devices used to align and install such screens to mobile devices. Serial No. 87737708 - 6 - Appeal Brief at 9-10, 4 TTABVUE 13-14. A mark need not describe all identified goods to be refused registration under Section 2(e)(1). We have found that CUVVR is merely descriptive of at least the first and second type of goods identified, i.e., screen protectors and protective cases for use with portable electronic devices. It is therefore unregistrable for the entire class. See, e.g., Quik-Print, 205 USPQ at 507 (“Registration will be denied if a mark is merely descriptive of any of the goods or services for which registration is sought.”); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) (“If the Board affirms a refusal of an entire class based on the descriptiveness of the mark for one or more goods in the class, then the entire class will fail.”). III. Applicant’s Offer to Disclaim “Cover” Finally, the Examining Attorney advised Applicant in the Final Office Action that, if the application were amended to the Supplemental Register, Applicant would be required to disclaim “cover” because it appears to be generic in the context of Applicant’s goods. Applicant did not amend the application to the Supplemental Register. In its appeal brief, however, Applicant “requests that the Board reverse the Examining Attorney’s insistence on a disclaimer of the word ‘COVER,’ but agrees to adopt this disclaimer if the Board feels it is needed in order to reverse the finding of mere descriptiveness.” Appeal Brief at 9, 4 TTABVUE 13. Because Applicant did not enter the disclaimer during examination, its consent to entry is not properly before us. When the Board affirms a disclaimer requirement which was made final prior to appeal, the Board may allow an applicant time in which to submit the required disclaimer. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g). We Serial No. 87737708 - 7 - do not do so here because the Examining Attorney never issued a requirement (let alone a final requirement) for a disclaimer. She simply advised Applicant that if it were to amend its application to the Supplemental Register and that amendment were otherwise acceptable, a disclaimer would be required nonetheless. As mentioned, Applicant did not amend to the Supplemental Register, and the issue of whether Applicant’s mark would be registrable on the Principal Register with a disclaimer was not raised prior to Applicant’s brief on appeal. That question would require a reopening of examination, which is inappropriate after a decision is rendered. Trademark Rule 2.142(g). IV. Conclusion Based on the record in its entirety, we find that a consumer of Applicant’s goods would immediately understand CUVVR to convey information about those goods, that is, that they are used to cover portable electronic devices and their screens in order to protect them. Because the proposed mark immediately conveys knowledge about the function of Applicant’s goods, it is merely descriptive under Trademark Act Section 2(e)(1). Decision: The refusal to register under Section 2(e)(1) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation