Weldkit, Inc.

Trademark Trial and Appeal Board

May 10, 2007

No. 78521325 (T.T.A.B. May. 10, 2007)

Mailed: 5/10/07

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Weldkit, Inc.
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Serial No. 78521325
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Kit M. Stetina of Stetina Brunda Garred & Brucker for
Weldkit, Inc.

Robert Clark, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
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Before Quinn, Bucher and Grendel, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Weldkit, Inc. filed an application to register the
mark WELDKIT for “suspension systems for automobiles” in
International Class 12.1
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that
applicant’s mark, as applied to applicant’s goods, is
merely descriptive thereof.

1 Application Serial No. 78521325, filed November 22, 2004,
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78521325
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney’s position is that the term
sought to be registered “immediately and logically conveys
that applicant provides suspension systems for automobiles
that include a kit for welding.” (Brief, unnumbered p. 8).
In support of the refusal, the examining attorney submitted
dictionary definitions of the terms “weld” and “kit”; and
portions of five third-party websites retrieved from the
Internet.
Applicant argues that its applied-for mark is just
suggestive in that WELDKIT “does not communicate a clear
understanding of the characteristics of [applicant’s]
goods.” (Brief, p. 4). According to applicant, the
proposed mark is simply too broad to describe the goods
with immediacy and particularity. Further, applicant
states, its goods are “bolt-on” suspension systems that do
not require welding. Applicant asserts that its mark is
taken from its corporate name, Weldkit, Inc., and that this
name is derived from the founder’s surname, “Weld.” In
responding to the examining attorney’s evidence, applicant
contends that three of the websites have nothing to do with
automobile suspension systems. Applicant further points
out that another of the websites, while involving
Ser No. 78521325
3
instructions for welding a suspension, does not
specifically use the terms “weld kit,” “welding kit” or
“kit for welding.” The final website, according to
applicant, does not use “weld kit” to specifically describe
the suspension system.
The term “weld” is defined as “to join (metals) by
applying heat, sometimes with pressure and sometimes with
an intermediate or filler metal having a high melting
point.” The term “kit” is defined as “a set of articles or
implements used for a specific purpose; a container for
such a set.” The American Heritage Dictionary of the
English Language (3d ed. 1992).
Three of the Internet websites introduced by the
examining attorney refer to “weld kits.” As pointed out by
applicant, however, this evidence is not probative to show
mere descriptiveness for automobile suspension systems.
The articles respectively involve fiberglass vinyl ester
butt weld kits, aircraft plastic repair weld kits, and
fiberglass hole repair kits. These references, directed to
various welding applications, have nothing to do with
automobile suspension systems.
The record includes a portion of another website, this
one involving what appears to be automobile suspensions.
(www.hnmotorsports.com) The website includes the following
Ser No. 78521325
4
language: “Tig weld shown is not standard with this mig
weld kit. Please contact us for pricing on the tig welded
option.” In the absence of further explanation or context,
we are unsure as to the significance of “tig weld” and “mig
weld kit” to suspension systems. Given our uncertainty, we
do not find this evidence particularly helpful in resolving
the descriptiveness question.
Lastly, there is an excerpt from a website addressing
an “Axle Welding Procedure.” The excerpt essentially
comprises a set of instructions for welding an axle in a
suspension system. Although the terms “weld” and “welding”
appear in the excerpt, there is no use of the term “weld
kit” or variations thereof.
A term is merely descriptive “if it forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods.” In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). The
examining attorney bears the burden of showing that a mark
is merely descriptive of the relevant goods. In re
Merrill, Lynch, Pierce, Fenner, and Smith Inc., 82 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
We find that the present record falls short of
establishing the mere descriptiveness of WELDKIT for
automobile suspension systems. Although the individual
Ser No. 78521325
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words comprising applicant’s mark have meanings, the
combination does not convey an immediate quality about the
goods with any degree of particularity. Plus Products v.
Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-05
(TTAB 1981).
In reaching our conclusion we obviously considered the
two instances that show the use of welding procedures in
connection with suspension systems. We are at a loss,
however, to ascertain, with any degree of certainty,
whether welding is an isolated procedure or a common
practice in the automobile suspension field. There is
nothing in the record to show that something called a “weld
kit” is commonly used in connection with suspensions, or
even that welding of suspensions is a common industry
practice. The evidence likewise does not show that the
term “weld kit” is used to market automobile suspension
systems. In sum, the sparse record does not establish that
“weld kit” is in common use for automobile suspension
systems such that we could conclude that WELDKIT is merely
descriptive. In re Stroh Brewery Co., 34 USPQ2d 1796, 1797
(TTAB 1994) [the fact that a term may be descriptive of
certain goods is not determinative of whether it is
descriptive of other goods, even if the goods are closely
related].
Ser No. 78521325
6
The Board has noted on a number of prior occasions
that there is a thin line of demarcation between a
suggestive and a merely descriptive designation. This case
boils down to a failure of proof, and we find that the mark
sought to be registered does not fall in the merely
descriptive category.2 To the extent that the Examining
Attorney’s arguments cast doubt on our finding, such doubts
are to be resolved in applicant’s favor. See, e.g., In re
Atavio, 25 USPQ2d 1361 (TTAB 1992); In re Morton-Norwich
Products, Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet
Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.

Bucher, Administrative Trademark Judge, dissenting:
Although the Office has provided scant evidence in
support of this refusal, I respectfully dissent.
Applicant intends to market “kits” having suspension
components for land vehicles. The record demonstrates that
there is a market for suspension lift kits designed for

2 When this mark proceeds to publication, a competitor in the
automobile suspension field is free to file an opposition
grounded on mere descriptiveness. Such an opposer is in a much
better position to introduce probative evidence on mere
descriptiveness than is the examining attorney. It is quite
possible that on a fully developed record, a different result may
be reached.
Ser No. 78521325
7
performance vehicles, like Ford trucks.3 Applicant even
argues that the word “kit” in applicant’s mark may be
perceived by some as representing a “kitten”! This is
among applicant’s arguments that I cannot take seriously.
As noted by the majority, at least two websites in the
record show that these aftermarket components may require
welding. Whether one joins the metals using “metal inert
gas” or “tungsten inert gas” welding, to the relevant
consumer, the term “weld kit” will immediately convey
information about the nature of these suspension
components. On the other hand, to the extent these goods
will be used in connection with “bolt-on” kits, as
applicant argues, the mark should be refused under Section
2(e)(1) of the Act as being deceptively misdescriptive.
Either way, it benefits applicant not at all that the
surname of applicant’s principal is “Weld.”
Accordingly, I would affirm this refusal to register.

3 See http://www.hnmmotorsports.com/