Teknor Apex Co.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 76330586 (T.T.A.B. Aug. 29, 2003)

Mailed: August 29, 2003
Paper No. 11
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Teknor Apex Company
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Serial No. 76/330,586
_______
Robert S. Salter of Salter & Michaelson for Teknor Apex
Company.
Wanda Kay Price, Trademark Examining Attorney, Law Office
103 (Craig Taylor, Managing Attorney).
_______
Before Hohein, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Teknor Apex Company filed an application to register
SOIL SOAKER as a trademark for “garden hose.” The
application (Serial No. 76/330,586) was filed on October
26, 2001, and it claims dates of first use of September 11,
1989.
The application, as filed, sought registration under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), as a
result of the mark becoming distinctive because of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/330,586
2
substantially exclusive and continuous use of the mark in
commerce for more than five years preceding the filing date
of the application. In addition, applicant claimed
ownership of Registration No. 1,668,098, which issued on
the Supplemental Register for the mark SOIL SOAKER for
garden hose (expired).
The Examining Attorney initially refused registration
on the ground that applicant’s mark was highly descriptive
and that applicant’s claim of five years use was not
sufficient to establish that the mark had become
distinctive when applied to the goods. Applicant responded
to the refusal by pointing to its ownership of Registration
No. 1,668,098 and its use of the mark for over 12 years,
and by submitting evidence of distinctiveness.
In the second Office action, the Examining Attorney
advised applicant that a claim of distinctiveness may not
be based on ownership of a prior registration on the
Supplemental Register. In addition, she made final the
refusal to register SOIL SOAKER on the ground of mere
descriptiveness. Shortly thereafter, the Examining
Attorney issued a supplemental Office action wherein she
made final the refusal to register SOIL SOAKER on the
ground that the evidence of acquired distinctiveness was
insufficient and continued the final refusal to register on
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the ground of mere descriptiveness. With this supplemental
Office action, the Examining Attorney made of record
numerous printouts from the NEXIS database, which contain
references to “soil soaker(s).”
In response to these final refusals, applicant filed a
notice of appeal, followed by an appeal brief. With its
appeal brief, applicant submitted additional evidence of
distinctiveness. The Examining Attorney then filed her
appeal brief, wherein she objects to the additional
evidence on the ground that it is untimely. However, the
Examining Attorney requested remand of the application for
consideration of the evidence if the Board determines that
the evidence should be considered.
Applicant then filed its reply brief wherein it states
that it was unable to obtain the evidence at the time of
the filing the appeal, and that the evidence merely
supplements the evidence properly made of record.
Under Trademark Rule 2.142(d), material submitted for
the first time with a brief on appeal is normally
considered by the Board to be untimely and therefore given
no consideration. If applicant desired to have this
evidence considered, the proper procedure was to request a
remand to the Examining Attorney for this purpose.
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In view of the foregoing, the Examining Attorney’s
objection is well-taken and we have not considered the
additional evidence. The Examining Attorney’s request for
remand is moot.
At the outset, we note that applicant filed its
application under the provisions of Section 2(f) of the
Trademark Act. Filing under Section 2(f) is an admission
that the mark is merely descriptive. Thus, having conceded
that its mark is not inherently distinctive, the issue in
this case in whether SOIL SOAKER has acquired
distinctiveness under the provisions of Section 2(f).
Although the Examining Attorney has made several
statements concerning genericness, our review of the record
indicates that the Examining Attorney only refused
registration based on the mark being descriptive and not
having acquired distinctiveness. Nonetheless, the evidence
that the Examining Attorney has submitted is relevant to
the issue of acquired distinctiveness because the more
descriptive the mark, the greater the evidence needed to
establish acquired distinctiveness. Yamaha International
Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001,
1008 (Fed. Cir. 1998).[“[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”]
Applicant was on notice from the first Office action that
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the Examining Attorney considered the mark to be “highly
descriptive.” (First Office action, p. 2).
Thus, to the extent that the evidence submitted by the
Examining Attorney suggests that SOIL SOAKER may be the
name of the goods, this evidence indicates the difficulty
applicant faces in trying to demonstrate that the mark has
acquired distinctiveness.
In support of its Section 2(f) claim, applicant
properly submitted product catalogs for each year beginning
in 1994 through 2002; an information sheet showing sales of
approximately 8 million dollars since 1996; and packaging
for the goods used each year beginning in 1996 though 2002.
In addition, applicant states that it has used the mark for
over 12 years. We are not persuaded by this evidence that
applicant’s mark has become distinctive when applied to
applicant’s goods.
Applicant has hardly demonstrated that its own use of
the term would clearly be recognized by prospective
purchasers as a trademark. For example, on page 19 of
applicant’s 1998 catalog, there is a list of applicant’s
“specialty” hoses which are designated as “Boat & Camper,”
“Soil Soaker,” and “Sprinkler Hose.” Also, on pages 4-5 of
applicant’s 2002 catalog, there are pictures of five of
applicant’s garden hoses with the following wording on the
Ser No. 76/330,586
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respective hoses: APEX® COMMERCIAL; APEX® HEAVY DUTY;
APEX® MEDIUM DUTY; APEX® SOIL SOAKER; and APEX® LIGHT DUTY.
When prospective purchasers see applicant’s use of the term
in this manner, it is not clear why they would understand
that the term SOIL SOAKER is a trademark, rather than a
type of garden hose.
Further, applicant’s sales and its use of the term on
packaging for its goods hardly establish acquired
distinctiveness. As noted by the Court in In re Bongrain
International, 894 F.2d 1316, 13 USPQ2d 1727, 1728-29 (Fed.
Cir. 1990), sales “may indicate the popularity of the
product itself rather than the recognition of the mark.”
The Court also noted that sales may indicate acceptance of
the other trademark associated with the product. Here,
applicant almost always uses SOIL SOAKER with the mark APEX
which is usually shown with a registration symbol. It is
likely therefore that prospective purchasers would
recognize APEX rather than SOIL SOAKER as the trademark for
applicant’s goods.
In response to this evidence the Examining Attorney
submitted twenty-four excerpts from the NEXIS database that
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make reference to “soil soaker(s). The following are
representative examples:
Drip-irrigation or soil soaker hoses are
best because they deliver water directly to
the roots and not to the foliage.
(Kansas City Star, August 6, 1999);
Use of soil soakers and automatic watering
devices where feasible frees gardeners to
go about their jobs while watering.
(Chicago Tribune, June 30, 1991);
Deeply soak conifers, flowering and fruit
trees, shrubs and other ornamentals; use a
canvas soil soaker or attach a metal or
plastic bubbler to the end of a garden
hose; . . .
(The New York Times; August 14, 1998);
. . . a slow trickle from the hose and set
it in a shallow soil basin or attach a canvas
tube (soil soaker) to a garden hose.
(The New York Times, June 1, 1986);
Canvas soil soakers or perforated plastic hoses
are highly efficient as they allow water to
trickle slowly into the ground.
(The New York Times; July 24, 1980); and
Water with a soil soaker rather than with a
sprinkler.
(The Washington Post, June 24, 1979)
The Examining Attorney maintains that this evidence
demonstrates the “genericness/descriptiveness” of the term
“soil soaker” as applied to applicant’s goods. Applicant,
on the other hand, maintains that the Examining Attorney’s
evidence does not show use of the term “soil soaker” in
connection with a garden hose, but rather “shows the
Ser No. 76/330,586
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wording SOIL SOAKER used to describe a canvas attachment to
a garden hose for allowing water to seep through
perforations along the length of the canvas attachment.”
(Brief, p. 3).
Many of the NEXIS excerpts show use of the term “soil
soaker” in connection with a canvas attachment to a garden
hose, rather than a garden hose itself. In others, it is
simply not clear whether the term is being used to refer to
a canvas attachment or a garden hose. However, one of the
excerpts does show use of “soil soaker” as the generic name
of a type of garden hose. Moreover, very little of
applicant’s evidence even suggests that potential
purchasers would recognize SOIL SOAKER as a trademark for
applicant’s goods. Consequently, the record establishes
that SOIL SOAKER is highly descriptive of applicant’s
goods, in that it describes the primary function thereof
which is to soak the soil, and the evidence offered by
applicant is insufficient to establish that such a highly
descriptive term as “soil soaker” has acquired
distinctiveness.
In sum, applicant has not met its burden of showing
that the mark has acquired distinctiveness. We find
therefore that SOIL SOAKER is merely descriptive of a
garden hose and applicant has failed to submit sufficient
Ser No. 76/330,586
9
evidence of acquired distinctiveness to warrant
registration under Section 2(f) of the Trademark Act.
Decision: The refusal to register is affirmed.