Wet Labs Inc.

Trademark Trial and Appeal Board

Jan 26, 1998

No. 74585258 (T.T.A.B. Jan. 26, 1998)

Paper No. 13
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 26, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Wet Labs Inc.
___________
Serial No. 74/585,258
___________
Roger W. Blakely, Jr. and Sunny Tamakaoki of Blakely,
Sokoloff, Taylor & Zafman for applicant.
Conrad Wai-pac Wong, Trademark Examining Attorney, Law
Office 104 (Sidney I. Moskowitz, Managing Attorney).
____________
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Wet Labs Inc. has filed a trademark application to
register the mark SHOOTER for “automatic nozzles and nozzle
controls, sold as a unit, for decorative water fountains”
and “water display equipment, namely, decorative water
fountains.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15

1 Serial No. 74/585,258, in, respectively, International Classes 9 and
11, filed October 13, 1994, based on use of the mark in commerce,
Serial No. 74/585,258
2
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney contends that SHOOTER merely
describes the fact that the goods “eject water in their
application as water display equipment”; and that SHOOTER is
synonymous with “nozzle,” which is one of applicant’s goods.
In support of his position, the Examining Attorney has
submitted dictionary definitions of “shoot” and “shooter”;
excerpts of articles from the LEXIS/NEXIS database,
including an article about applicant and one of its water
displays; and excerpts of patents, also from the LEXIS/NEXIS
database.
Applicant contends, in view of the nature of the goods,
that the mark is at most suggestive in connection therewith;
that “in common parlance, the term SHOOTER refers to a
person firing a gun, or in the case of the Dennis Hopper
character in the motion picture ‘Hoosiers’ a person known
for his basketball shooting skills”; and that the term
SHOOTER appears in the excerpts submitted by the Examining
Attorney in connection with other types of goods unrelated
to applicant’s goods. In support of its position, applicant

alleging first use and first use in commerce as of December, 1993, in
Serial No. 74/585,258
3
submitted a drawing of four of its water display designs and
two copies of another article about its water displays
written by the same person who authored the excerpt made of
record by the Examining Attorney.2
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods, only that
it describe a single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).

both classes.
2 Applicant contends that the copies of the article submitted by
applicant show proper trademark use of the term SHOOTER; whereas the
article submitted by the Examining Attorney, albeit by the same author,
shows “that the author misused the mark in a way that made it ‘look’
descriptive.”
Serial No. 74/585,258
4
Webster’s Ninth New Collegiate Dictionary, 1990,
defines “shoot” in pertinent part as “to drive forth or to
cause to be driven forth by a sudden release of gas or air”
and “to emit (as light, flame or fumes) suddenly or
rapidly”; and defines “shooter” in pertinent part as
“something that is used in shooting.” While SHOOTER
suggests that applicant’s goods may be capable of spraying
water, these definitions of “shoot” and “shooter” do not
persuade us that SHOOTER is merely descriptive in connection
with applicant’s goods.
Further, we do not find the use of the term SHOOTER in
many of the articles and patents excerpted in the record to
be probative of the significance of the term SHOOTER in
connection with applicant’s goods. The goods to which these
articles and patents pertain are in fields and in relation
to goods that are very different from applicant’s goods.
For example, in a significant number of the articles and
patents of record the term SHOOTER refers either to a part
in an automotive carburetor; or to a part in the steel
refining process; or to a toy water gun. Except as noted
below, the remaining article excerpts submitted by the
Examining Attorney use the term SHOOTER to refer, primarily,
to toy “guns” such as water shooters, pea shooters, spud
shooters and bubble shooters.
Serial No. 74/585,258
5
Applicant’s goods are described in an article in the
Los Angeles Times, March 13, 1994, as follows:
At the Los Angeles Music Center, scene of a
fountain that rises and falls according to a
computer program, tuxedoed concert-goers dash
through during quiet moments only to get soaked as
the shooters blast again. On hot days at
Universal CityWalk, youngsters caper amid jets
that erupt without warning from the plaza floor.
Equally tempting is the Watercourt in Downtown’s
California Plaza . . . There, giant shooters and
undulating water curtains surround stages. When
the stages are empty, the water is the show as
plumes dance back and forth and a huge wave
crashes below.
In a September 29, 1988,3 article about applicant by the
same author, in the Los Angeles Times, the term SHOOTER
appears in quotes, as follows:
Japan’s Seito Ohashi Exhibition near Osaka
features another WET fountain, a circular grouping
of fireworks-style “shooters” that blast water
hundreds of feet into the air.
While the term SHOOTER is used in a descriptive manner
in the first-quoted article about applicant, its use in the
second article is more ambiguous in nature. Absent
significant other evidence in the record regarding the
descriptive nature of SHOOTER in relation to applicant’s
goods, we do not find these two articles by a single author
to be particularly probative of the issue before us as, with

3 The article is repeated in a different edition of the same paper on
October 2, 1988.
Serial No. 74/585,258
6
respect to the first article in particular, the author could
be simply misusing applicant’s mark.
The Examining Attorney has presented a comprehensive
record from numerous sources regarding the use of the term
SHOOTER. However, from that substantial amount of evidence,
there appear to be only two excerpts involving goods that
may be similar in nature to those of applicant. One
excerpt, from an article in The Washington Times, May 29,
1994, uses the term SHOOTER to refer to part of a water
display, as follows:
. . . Fountain. A formally dressed Mickey Mouse
takes center stage, opening the show in front of
custom-designed shooters that spray water up to
150 feet high.
One patent uses the term SHOOTER to pertain to a part
in an “explosion simulator,”4 which is described as “an
underwater explosion effect simulator [that] includes a
submerged shooter for shooting props and dye-colored water
through the water surface.”
However, while these two excerpts tend to indicate that
SHOOTER may have more than a suggestive connotation in
connection with goods that may be similar to applicant’s
goods, we find that this is insufficient evidence of the
context in which the term may be used in applicant’s field
for us to conclude that the impact SHOOTER is likely to have
on the average purchaser of applicant’s goods is as a merely
Serial No. 74/585,258
7
descriptive term. It is well-established that the
determination of mere descriptiveness must be made not in

4 U. S. Patent No. 5,114,140.
Serial No. 74/585,258
8
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
There is a fine line between what is a suggestive mark
and what is unregistrable merely descriptive matter. It is
our view that the record before us is not sufficient5 to
establish that the term SHOOTER, when applied to applicant’s
goods, is merely descriptive thereof. We believe that this
is a close case and we emphasize that our determination on
this issue is not free from doubt. However, where there is
doubt on the question of mere descriptiveness, that doubt is
to be resolved in applicant’s behalf and the mark should be
published for opposition. See, In re Rank Organization
Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases cited therein.

5 We do not intend by this statement to criticize the Examining
Attorney’s presentation of his case. Rather, we recognize that there
are practical limitations to the nature of evidence accessible to an
Examining Attorney in defending a refusal in an ex parte matter. That
is to say, our conclusion in this ex parte appeal would not, of course,
preclude the Board from reaching a different result in a subsequent
inter partes proceeding brought against this same application by a
competitor of applicant, if the competitor was able to present evidence
of descriptive use in the trade. Such evidence is more readily
available to a competitor than it is to a Trademark Examining Attorney.
Serial No. 74/585,258
9
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board