UtiliCorp Holdings, Inc.

Trademark Trial and Appeal Board

Nov 18, 1998

No. 74710159 (T.T.A.B. Nov. 18, 1998)

Paper No. 9
HANAK/MD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 18, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re UtiliCorp Holdings, Inc.
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Serial No. 74/710,159
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Robert E. Marsh of Blackwell, Sanders, Matheny, Weary &
Lombardi for UtiliCorp Holdings, Inc.
Lori S. Schulman, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Sams, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
UtiliCorp Holdings, Inc. (applicant) seeks registration
of CUSTOM POWER PARK in typed capital letters for the
services listed below. The intent-to-use application was
filed on August 2, 1995.
Class 37 - installation of operating
equipment and systems relating to the
enhancement of power quality for energy
customers concentrated in a particular
industrial or commercial zone.
Ser No. 74/710,159
2
Class 42 - consulting, engineering and
design services relating to the
enhancement of power quality for energy
customers concentrated in a particular
zone; integration by various methods,
including computer software, computer
hardware and electricity distribution
networks, of operating equipment and
systems relating to the enhancement of
power quality for energy customers
concentrated in a particular industrial
or commercial zone.
The Examining Attorney refused registration pursuant to
Section 2(e)(1) of the Lanham Trademark Act on the basis
that applicant’s mark is merely descriptive of applicant’s
services. In addition, the Examining Attorney refused
registration of applicant’s Class 42 “application” on the
basis that applicant failed to insert the words “computer
services, namely” before the words “integration by various
methods” in the recitation of services for Class 42. It is
the position of the Examining Attorney that “applicant’s
recitation of services in International Class 42 is
unacceptable as indefinite.” (Examining Attorney’s brief
page 5).
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods [or
Ser No. 74/710,159
3
services].” In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978)(emphasis added); Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976). Moreover, the immediate idea must be
conveyed forthwith with a “degree of particularly.” In re
TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978); In
re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d
90-1495 (Fed. Cir. February 13, 1991).
The Examining Attorney has made of record excerpts of
six articles from the NEXIS database showing that the term
“power park” refers to an area where electric power is
generated, usually from the sun or wind. (In point of fact,
the Examining Attorney made of record 24 excerpts. However,
18 of the 24 were from foreign publications, were duplicates
or were simply not uses of “power park” as a composite term.
An example of the latter type of excerpt appears in The
Idaho Statesmen of March 9, 1995, and it reads as follows:
“Reservations are no longer taken at Idaho Power parks in
the canyon.”).
Despite the fact that the Examining Attorney made of
record only six excerpts showing that the term “power park”
refers to an area where electric power is generated,
applicant has not taken issue with the Examining Attorney
that the term “power park” does refer to an area where
electric power is generated. (Applicant’s brief page 3).
Ser No. 74/710,159
4
However, applicant notes that its services do not encompass
the generation of any type of power. Moreover, applicant
notes that its services, as described in its application,
are not rendered to entities which generate power, nor are
they rendered in power parks.
In response, the Examining Attorney does not take issue
with applicant’s statements that its services are not
rendered to entities which generate power and that
applicant’s services are not rendered in “power parks,” as
that term is utilized in the NEXIS evidence made of record
by the Examining Attorney. Rather, the Examining Attorney
articulates her contention that the term “power park” is
descriptive of applicant’s services in the following manner:
“Although the evidence supports descriptive use of the term
‘power park’ in relation to power generating areas, power
distribution is the logical next step in power generation.
Therefore, it appears that applicant’s use of the term
‘power park’ is merely expanding upon its generally
understood meaning within the energy industry.” (Examining
Attorney’s brief page 3).
We have two problems with the reasoning of the
Examining Attorney. First, neither applicant’s services in
Class 37 nor applicant’s services in Class 42 involve power
distribution per se. Applicant’s Class 42 services are
consulting, engineering and design services, not power
Ser No. 74/710,159
5
distribution services. While it is true that applicant’s
Class 42 consulting, engineering and design services
involve, among many other things, “electricity distribution
networks,” this does not mean that applicant’s Class 42
services (or Class 37 services) are power distribution
services.
Second, even assuming for the sake of argument that
some of applicant’s services could be very broadly construed
so as to encompass some form of power distribution, the fact
remains, as conceded by the Examining Attorney, that all of
the NEXIS evidence made of record shows that the term “power
park” is descriptive of certain power generating areas.
None of the NEXIS evidence made of record by the Examining
Attorney in any way remotely indicates that the term “power
park” is descriptive of power distribution. This Board has
held that “the fact that a term may be descriptive of
certain types of goods [or services] does not establish that
it is likewise descriptive of other types of goods [or
services], even if the goods [or services] are closely
related (e.g. hats and boots). Abercrombie & Fitch, 189
USPQ at 766 .” In re The Stroh Brewery Co., 34 USPQ2d 1796,
1797 (TTAB 1994). Thus, even assuming for the sake of
argument that power generating services and power
distribution services are closely related, the fact that the
Examining Attorney has proven that “power park” is
Ser No. 74/710,159
6
descriptive of the former services does not mean that this
proof, by itself, establishes that the term “power park” is
likewise descriptive of the latter services. Accordingly,
we find that the Examining Attorney has simply not met her
burden of establishing that applicant’s mark CUSTOM POWER
PARK is, in its entirety, descriptive of any of the services
set forth in the application.
However, having said the foregoing, we are nevertheless
forced to “affirm” the refusal to register because applicant
has not submitted a disclaimer of the term “power” in its
mark. Obviously, the term “power” clearly describes a
significant characteristic of both applicant’s Class 37
services and applicant’s Class 42 services. However,
applicant is allowed thirty days from the mailing date of
this decision to submit a disclaimer of the word “power” in
its mark CUSTOM POWER PARK. Upon the receipt of this
disclaimer, this decision will be set aside and applicant’s
mark will be passed to publication. See In re Interco Inc.,
29 USPQ2d 2037, 2039 (TTAB 1993).
Finally, as for the Examining Attorney’s refusal to
register on the basis that applicant’s “recitation of
services is indefinite in Class 42,” we simply disagree and
reverse the refusal on this ground.
Decision: The refusal to register on the basis that
applicant’s Class 42 recitation of services is indefinite is
Ser No. 74/710,159
7
reversed. The refusal to register on the basis that
applicant’s mark CUSTOM POWER PARK is in its entirety
descriptive of applicant’s services is likewise reversed.
However, the refusal to register is nevertheless “affirmed”
because, as explained above, applicant, through no fault of
its own, has not submitted a disclaimer of the clearly
descriptive term “power.” However, applicant is allowed 30
days from the mailing date of this decision to submit a
disclaimer of the word “power” in its mark CUSTOM POWER
PARK. As previously noted, upon receipt of this disclaimer,
this decision will be set aside and applicant’s mark will be
passed to publication.
J. D. Sams
R. F. Cissel
E. W. Hanak
Administrative
Trademark Judges,
Trademark Trial and
Appeal