TLV Co., Ltd

Trademark Trial and Appeal Board

Feb 27, 2017

No. 86721008 (T.T.A.B. Feb. 27, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re TLV Co., Ltd
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Serial No. 86721008
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Stewart J. Bellus of Collard & Roe, P.C.,
for TLV Co., Ltd.
Kristin Williams, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
_____

Before Zervas, Greenbaum and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
TLV Co., Ltd. (“Applicant”) seeks registration on the Principal Register of the
mark PLANTNAVIGATOR (in standard characters) for “handheld digital electronic
devices that provide inspection information related to industrial facilities; handheld
digital electronic devices to identify equipment locations for traps, valves, rotating
Serial No. 86721008
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equipment and machinery in industrial facilities using RFID technology” in
International Class 9.1
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
it is merely descriptive of Applicant’s identified goods.
After the Trademark Examining Attorney made the refusal 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. Analysis
The Lanham Act precludes registration of a term that is merely descriptive of an
Applicant’s goods. 15 USC § 1052(e)(1). A mark 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 United
States of America, 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));
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB 2016).
Applicant suggests that its applied-for mark, PLANTNAVIGATOR, does not
immediately convey a trait of the goods; rather, “some measure of imagination and
mental pause” is required to grasp the characteristic of the goods to which the mark

1 Application Serial No. 86721008 was filed on August 11, 2015, 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. 86721008
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refers.2 In several Board decisions, Applicant argues, the applied-for marks combined
elements that had dictionary definitions, but the resulting combination did not
immediately advise consumers about a trait of the goods, and thus were not
descriptive. See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE not descriptive
of a snow removal hand tool, even though the mark’s significance would become clear
upon contemplation); In re George Weston Ltd., 228 USPQ 57 (TTAB 1985) (SPEEDI
BAKE only vaguely suggests frozen dough that can be baked quickly); In re Geo. A.
Hormel & Co., 218 USPQ 286 (TTAB 1984) (FAST‘N EASY suggests that pre-cooked
meats can be prepared quickly and easily). “Why is PLANTNAVIGATOR different?”
Applicant asks, “Elements of Applicant’s mark may suggest a positive aspect of the
goods, but the combination would not immediately convey a trait of those goods.”3
Ultimately, the determination of whether a mark is merely descriptive must be
made, not in the abstract, but “in relation to the 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, 218 (CCPA 1978)).
Here, based on evidence adduced by the Examining Attorney, we find that the
mark PLANTNAVIGATOR immediately describes a function of the goods, which are
handheld digital electronic devices that help users plan and find routes to locations

2 Applicant’s brief, 8 TTABVUE 3-4. Applicant is reminded that briefs on appeal to the Board
must be double-spaced. 37 CFR § 2.126(a)(1); TBMP § 1203.01.
3 Applicant’s brief, 8 TTABVUE 4.
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in industrial plants. A “plant,” as used in this context, is “A place where an industrial
or manufacturing process takes place.”4 A “navigator” is “A device (such as a
computer) that is used to plan or find the route to a place.”5 Applicant admits that
“the handheld digital devices are used in a ‘plant’, and to some degree help users
identify locations of various items in the plant.”6 This function is consistent with the
identification of goods: “handheld digital electronic devices that provide inspection
information related to industrial facilities; handheld digital electronic devices to
identify equipment locations for traps, valves, rotating equipment and machinery in
industrial facilities using RFID technology.” Thus, the mark PLANTNAVIGATOR
immediately describes a function of Applicant’s handheld digital goods.
This distinguishes it from the prior decisions on which Applicant relies. In re
Shutts, for example, expressly observed that the notion of a “snow rake,” suggested
by the mark SNO-RAKE, was incongruous, as one does not usually “rake” snow: “We
believe that it would be rare (indeed, close to non-existent) in contemporary usage to
request someone to ‘rake snow’ from either a large or small surface or to refer to any
long or short-handled snow removal tool (e.g., an auto windshield scraper) as a ‘rake’
and evoke an understanding of this as a natural language usage.” 217 USPQ at 364.
Similarly, SPEEDI BAKE “only vaguely suggests a desirable characteristic of frozen

4 Oxford Dictionaries, OxfordDictionaries.com/us/definition/American_English/plant,
9/17/2015, Sept. 17, 2015 Office Action p. 7 pdf.
5 Merriam-Webster Dictionary, Merriam-Webster.com/dictionary/navigator
Sept. 17, 2015 Office Action p. 11 pdf.
6 Applicant’s response to Examining Attorney’s request for information under Rule 2.61(b),
Request for Reconsideration, 4 TTABVUE 7.
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dough,” In re George Weston, 228 USPQ at 58, and FAST ‘N EASY required “analysis
… on the part of the purchaser or prospective purchaser to understand the terms’
significance in relation to the product,” pre-cooked meats. In re Geo. A. Hormel, 218
USPQ at 287. None of those marks immediately described a function of the product,
as does the subject mark.
Applicant maintains that if its applied-for mark, PLANTNAVIGATOR, is read in
its entirety, instead of being dissected, it is not descriptive.7 Citing, e.g., In re
Remacle, 66 USPQ2d 1222 (TTAB 2002). Theoretically, it is true that if a combination
of terms creates a non-descriptive or incongruous meaning, the composite mark is
registrable. See generally In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d
1370, 1372 (Fed. Cir. 2004) (“[I]f … two portions individually are merely descriptive
of an aspect of appellant’s goods, the PTO must also determine whether the mark as
a whole, i.e., the combination of the individual parts, conveys any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.”); In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for
“bakery products”); In re Shutts, 217 USPQ at 364-65. But if, on the other hand, each
component retains its merely descriptive significance in relation to the goods, then
the mark as a whole is merely descriptive. E.g., In re Oppedahl & Larson, 71 USPQ2d
at 1374 (“In this case, the mark patents.com, as a whole, is merely descriptive of
appellant’s goods.”); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB
2016) (“The two component words of the mark [houseboat blob] combine in a manner

7 Applicant’s brief, 8 TTABVUE 4-5.
Serial No. 86721008
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and order that would be easily interpreted by persons familiar with the English
language and the goods. They would be immediately understood to mean a blob-type
inflatable launch pad that is specialized for use in association with a houseboat.”); In
re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“[B]ecause the
combination of the terms [BATTLECAM] does not result in a composite that alters
the meaning of either of the elements, refusal on the ground of descriptiveness is
appropriate”).
Here, Applicant employs the descriptive terms PLANT and NAVIGATOR in
connection with a handheld digital electronic device that helps one navigate―i.e., find
one’s way―to locations in an industrial plant.8 The omission of a space between the
two descriptive components does not in any way diminish the descriptiveness of the
overall mark. The Board made that clear decades ago: “It is almost too well
established to cite cases for the proposition that an otherwise merely descriptive term
is not made any less so by merely omitting spaces between the words….” Minnesota
Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB
1967). And it has continued to adhere to that precept. See, e.g., In re Tower Tech Inc.,
64 USPQ2d 1314, 1317-18 (TTAB 2002) (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Carlson, 91 USPQ2d 1198, 1200
(TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage,
consultation and listing services); In re Mine Safety Appliances Co., 66 USPQ2d 1694,

8 Applicant’s Request for Reconsideration, response to Examining Attorney’s request for
information under Rule 2.61(b), 4 TTABVUE 7.
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1697 (TTAB 2002) (WORKMASK found descriptive despite absence of any evidence
composite appeared in dictionaries); In re A La Vieille Russie Inc., 60 USPQ2d 1895,
1897n. 2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive
as its constituent words, ‘Russian Art’”).
Applicant next asseverates that the word NAVIGATOR in marks is suggestive.
The word “merely suggests that the product helps to ‘guide’ users through some task,
activity or attempt to understand a particular subject matter,” Applicant urges―and
its suggestiveness is evidenced by the frequent registration on the Principal Register
of marks that contain NAVIGATOR without a disclaimer.9 Applicant provides a list
from the Trademark Electronic Search System (TESS) indicating a total of 1,721 such
third-party registrations.10 Applicant readily acknowledges that the list does not
make the registrations of record.11 See In re Jump Designs LLC, 80 USPQ2d 1370,
1372 (TTAB 2006) (“[T]he mere submission of a listing from the TESS database is
insufficient to make the referenced registrations of record.”); TBMP § 1208.02 (Jan.
2017) (“Mere listings of registrations … are not sufficient to make the registrations
of record.”). And since printing out all of the registrations on the list would be
impractical, it followed up with a representative sampling of 74 of the registrations.12
E.g.:
Mark Registration
No.
Goods

9 Applicant’s brief, 8 TTABVUE 5-6.
10 Applicant’s Request for Reconsideration, 4 TTABVUE 15-17.
11 Applicant’s Request for Reconsideration, 4 TTABVUE 10.
12 Applicant’s Request for Reconsideration, 4 TTABVUE 18-165.
Serial No. 86721008
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5031269 Software as a service (SAAS)
services featuring software for
enabling users to access autism-
related resources for people with
autism, their families, and
members of the community
affected by autism.
THE SAFETY NAVIGATOR 5011933 Software as a service (SAAS)
services featuring software tools
for managing safety
documentation and collaboration
between team members.
NANONAVIGATOR 4984896 Software for microscopy tools,
namely, analysis software for use
with atomic force microscopes,
scanning electron microscopes,
scanning probe microscopes, and
nano indenters.
SPACE NAVIGATOR 4802395 binoculars and telescopes enabled
to work with mobile devices and
applications.

4958641 Health care consulting in the field
of neurological care.
INSURANCE MARKETPLACE
NAVIGATORS
4946781 Insurance brokerage services and
insurance services, namely,
brokerage, underwriting, issuance,
eligibility review and verification,
and providing assistance in claims
administration in the field of
health, life, pension and disability
insurance.
PENSION RISK NAVIGATOR 4909848 Computer programs for the
management of retirement
accounts and retirement planning.
YOUR NAVIGATOR 4875284 Providing information about
disease prevention, disease
management and health care
coaching to members of health
insurance programs
AUTO NAVIGATOR 4852371 Auto lending services, namely,
installment loans.

Serial No. 86721008
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These third-party registrations, however, mainly demonstrate use of the word
NAVIGATOR in the figurative sense: of helping one find one’s way through such
abstract subjects as retirement planning, auto lending, or health insurance. At the
other, highly literal end of the spectrum are NAVIGATOR marks for pathfinding
goods such as global positioning devices or marine mapping devices; the Examining
Attorney has adduced evidence of these registrations, which disclaim the word
NAVIGATOR or are on the Supplemental Register, thereby impliedly conceding its
descriptiveness.13 See Institut National des Appellations D’Origine v. Vintners Int’l
Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (“Such third party
registrations show the sense in which the word is used in ordinary parlance and may
show that a particular term has descriptive significance as applied to certain goods
or services.”) quoted in In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006); see also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015). Of these third-party registrations, the one most similar
to the applied-for mark is a word-and-design mark, (“UTILITY
NAVIGATOR” disclaimed) for “a GPS-enabled navigation device that features a
custom map overlay recorded data file that provides precise navigable routes to field
assets and uses an electric utility’s Geographic Information Systems (GIS) data to

13 E.g., Registration nos. 1724574, 3415004, 3720714, 4007709, 3074952, Oct. 14, 2016 Office
Action pp. 4-39.
Serial No. 86721008
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guide repair and maintenance crews to utility assets, namely, poles, transformers,
meters and other field assets.”14
Applicant’s mark lies somewhere between the extremes of abstraction and
literalness, but we find on the whole that it is like the registration.
It uses NAVIGATOR in a literal sense of helping users find their way to specific
locations in industrial plants where equipment and machinery is located. For these
reasons, the third-party registrations do not diminish, and in fact support the finding
that the word NAVIGATOR, as used in connection with Applicant’s identified goods,
is descriptive, not suggestive.
Applicant next argues that “There is no evidence that the term
PLANTNAVIGATOR or anything close to that term is commonly used (or used at all)
in the trade, or is needed by competitors to describe similar products. This lack of use
by others to describe a trait of the goods is evidence of the term’s unique and non-
descriptive quality.”15 The Board has made clear, though, that the Examining
Attorney is not required to show competitive need or concurrent use by others in order
to establish that a term is descriptive: “Under the current standard, there is no
requirement that the Examining Attorney prove that others have used the mark at
issue or that they need to use it, although such proof would be highly relevant to an
analysis under Section 2(e)(1).” In re Fat Boys Water Sports, 118 USPQ2d at 1514.

14 Registration No. 4769741 on the Principal Register.
15 Applicant’s brief, 8 TTABVUE 6.
Serial No. 86721008
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And while it is true, as Applicant urges, that the Board resolves doubts as to the mere
descriptiveness of marks in favor of applicants, id. at 1513, we find without a doubt,
based on all of the foregoing considerations, that the Examining Attorney has carried
her burden of showing that PLANTNAVIGATOR is merely descriptive of Applicant’s
identified goods under Section 2(e)(1).
Decision: The refusal to register Applicant’s mark PLANTNAVIGATOR is
affirmed.