Winkle Industries, Inc.

Trademark Trial and Appeal Board

May 30, 2017

No. 86729532 (T.T.A.B. May. 30, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 30, 2017

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

In re Winkle Industries, Inc.
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Serial No. 86729532
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Brent L. Moore of Dureska & Moore, L.L.C.,
for Winkle Industries, Inc.
Miah Rosenberg LaMont, Trademark Examining Attorney, Law Office 117,
Hellen Bryan Johnson, Managing Attorney.
_____

Before Mermelstein, Masiello, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Winkle Industries, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark (in stylized form) for “replacement of worn out or obsolete
industrial material handling components and equipment, namely below-the-hook
lifting devices and crane products, to the order and specification of others; repair of
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industrial material handling components and equipment, namely below-the-hook
lifting devices and crane products” in International Class 37.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under 15 U.S.C. §§ 1052(e)(1) and 1053 on the ground that the applied-for mark is
merely descriptive of the services identified in the Application.
When the refusal was made 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. Applicable Law

A. Mere Descriptiveness

The Lanham Act precludes registration of a term that is merely descriptive of an
Applicant’s goods or services. 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).
Descriptiveness must be assessed “in relation to the goods [or services] for which
registration is sought, the context in which it is being used, and the possible

1 Application Serial No. 86729532 was filed on Aug. 19, 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). The colors black and red are claimed as a feature of the
mark.

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significance that the term would have to the average purchaser of the goods [or
services] because of the manner of its use or intended use.” Bayer AG, 82 USPQ2d at
1831 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)).
The Examining Attorney has refused registration of the applied-for mark
on the ground that the term “reman” is commonly used in Applicant’s
industry to refer to remanufacturing services―i.e., rebuilding, repairing, and
restoring equipment―the very services Applicant would provide under its mark.2 The
Examining Attorney has adduced ten third-party websites using “reman” in this
sense, e.g.:
3

2 Examining Attorney’s brief, 8 TTABVUE 5, citing BusinessDictionary.com 5/28/2016, May
31, 2016 Office Action p.18. All references to TSDR citations are to documents in the .pdf
format.
3 Caterpillar.com 12/4/201, Office Action of Dec. 4, 2015 p. 7.
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4

5
6

4 EverwoodTreatment.com 5/28/2016, Office Action of May 31, 2016 p. 7.
5 ModuleExperts.com 5/28/2016, Office Action of May 31, 2016 p. 8.
6 Deere.com, 12/4/2015, Office Action of Dec. 4, 2015 p. 5.
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These representative third-party uses of “reman” show that it signifies
“remanufacturing” to relevant industrial purchasers, see Coach/Braunsdorf Affinity,
Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1473 (TTAB 2014) (third-party usage
shows descriptiveness of term), and that others use the term “reman” to refer to their
remanufacturing services. See In re Franklin County Historical Society, 104 USPQ2d
1085, 1088-89 (TTAB 2012) (third-party websites show competitors’ use). See
generally In re Abcor, 200 USPQ at 217 (“The primary purposes for refusing
registration of a merely descriptive mark are “(1) to prevent the owner of a mark from
inhibiting competition in the sale of particular goods; and (2) to maintain freedom of
the public to use the language involved, thus avoiding the possibility of harassing
infringement suits by the registrant against others who use the mark when
advertising or describing their own products.”)
These third-party websites advertise the same sort of remanufacturing services
that Applicant would provide under its mark. Applicant’s web page describes its
remanufacturing services:7

7 We note that it is the application that defines the services at issue, and not Applicant’s
actual activities connected with its mark. While evidence of Applicant’s actual use can at
times be useful in understanding the nature of Applicant’s identified services, see TBMP
§1208.05 (Jan. 2017), such evidence neither broadens nor narrows the scope of the application
before us. See Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ
76, 77–78 (CCPA 1973) (Board must “give full sweep” to an identification of goods regardless
of Registrant’s actual business).
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8
Applicant does not dispute that “reman” is commonly used to refer to
remanufacturing services, or that it provides such services. Indeed, we note
Applicant’s own use, in its web page shown above, of the term “reman services” in a
descriptive sense (“Today, in addition to providing reman services to order, …”) Its
application originally identified its services as “repair and remanufacturing services
for industrial material handling components and equipment.”9 See In re Cordua
Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (the
descriptiveness analysis concentrates on the identification of services set forth in the
application). At the Examining Attorney’s request, Applicant amended its
identification to clarify the kind of industrial components and equipment it would
remanufacture: “replacement of worn out or obsolete industrial material handling

8 May 31, 2016 Office Action p. 14.
9 Application, Aug. 19, 2015.
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components and equipment, namely below-the-hook lifting devices and crane
products, to the order and specification of others; repair of industrial material
handling components and equipment, namely below-the-hook lifting devices and
crane products.” The amended identification of services, though narrowed, still falls
within the scope of the original identification of remanufacturing services. See 37 CFR
§ 2.71(a); TMEP § 1402.06 (Apr. 2017). Applicant concedes in its brief that “reman”
could “be viewed by consumers as being short for ‘remanufactured’, which would
include Applicant’s goods as described.”10
B. Applicant’s Rebuttal
1. Double Entendre
First, Applicant argues that the word portion of is a double
entendre, meaning both to “remanufacture,” and to “furnish with a fresh supply of
personnel.”11 This second meaning, it suggests, is supported by dictionary
definitions12 and by the color and capitalization of its mark, which separates “Re”
from “Man,” placing greater emphasis on the latter syllable.13 Because the mark is a
double entendre, it concludes, it is suggestive, not descriptive. Citing In re The Place,
76 USPQ2d 1467 (TTAB 2005).

10 Applicant’s brief p. 6, 6 TTABVUE 10.
11 Applicant’s brief pp. 5-6, 6 TTABVUE 9-10.
12 Reman: “equip again or with new personnel,” OxfordDictionaries.com 5/24/2016 May 27,
2015 Response to Office Action pp. 16-17; “to man again or anew,” Merriam-Webster.com
5/24/2016, May 27, 2015 Response to Office Action p. 10.
13 Applicant’s brief pp. 5-6, 6 TTABVUE 9-10.
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We agree with the Examining Attorney, however, that the mark is not a double
entendre. “For trademark purposes, a ‘double entendre’ is an expression that has a
double connotation or significance as applied to the goods or services.” TMEP
§ 1213.05(c) cited in In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017).
That a term may have other meanings in disparate, unrelated contexts is not
controlling. In re Franklin County Historical Society, 104 USPQ2d 1085, 1087 (TTAB
2012); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); TMEP § 1209.03(e).
Moreover, “[t]he multiple interpretations that [make] an expression a ‘double
entendre’ must be associations that the public would make fairly readily, and must
be readily apparent from the mark itself.” In re Calphalon Corp., 122 USPQ2d at 1163
(quoting TMEP § 1213.05(c), emphasis in original). This was illustrated in In re The
Place, on which Applicant relies. In that case, the applicant argued that THE
GREATEST BAR for restaurant and bar services was a double entendre because the
theme and decor of the restaurant would focus on the greatest people, places and
events in Boston history. The Board rejected this argument, stating:
[W]e find that this case is distinguishable from the double entendre cases
relied upon by applicant, because in those cases the double entendre was
apparent on the face of the mark itself. For example, in In re Colonial
Stores Inc., 394 F.3d 549, 157 USPQ 382 (CCPA 1968), the court found that
the mark SUGAR & SPICE for bakery products was a double entendre,
because it immediately connoted both the ingredients of the bakery
products and the well-known nursery rhyme phrase “sugar & spice and
everything nice.” In In re National Tea Co., 144 USPQ 286 (TTAB 1965),
the Board held that the mark NO BONES ABOUT IT for ham immediately
connoted both the fact that the ham was boneless and the commonly used
phrase “no bones about it.”
Id., 76 USPQ2d at 1472.

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In this case, the only readily apparent meaning conveyed by the Applicant’s mark,
as applied to its services, is remanufacturing.14 Someone who knows what Applicant’s
remanufacturing services are will understand “REMAN” to convey information about
them. See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1757 (Fed. Cir. 2012). That “REMAN” may have another meaning
in another context is not controlling, as nothing about it readily or apparently evokes
the furnishing of manpower or staffing. Applicant’s first argument thus fails to
establish that the mark is a double entendre, that it is merely descriptive.
2. Disclaimer of Word Portion of Mark
Second, Applicant argues, if its mark is deemed merely descriptive of its services,
it should be permitted to disclaim the literal portion, “REMAN,” and to register the
mark based solely on the distinctiveness of its stylization.15 “Where the literal
components of a mark are combined in a distinctive design or display it is possible to
disclaim those literal components and still have a mark which is registerable as a
whole,”16 it argues, citing In re Jackson Hole Ski Corp., 190 USPQ 175, 176 (TTAB
1976) and In re Guilford Mills, Inc., 33 USPQ2d 1042, 1043 (TTAB 1994). It raised
this argument in its Request for Reconsideration,17 but the Examining Attorney
found the proposed amendment unacceptable because “an entire mark may not be

14 See Applicant’s website, May 31, 2016 Office Action p. 14.
15 Applicant’s brief pp. 7-8, 6 TTABVUE 11-12.
16 Applicant’s brief p. 7, 6 TTABVUE 11.
17 Applicant’s Request for Reconsideration, Nov. 29, 2016.
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disclaimed.”18 Applicant counters that it is not disclaiming the entire mark―just the
word portion “REMAN” apart from the stylized mark as shown: .
On appeal, Applicant seeks to illustrate its point by attaching to its brief a copy of
a USPTO Trademark Electronic Search System (TESS) printout for a registered
word-and-design mark, , with REMAN disclaimed apart from the mark
as shown.19 The Examining Attorney points out that this third-party registration
constitutes untimely new evidence, contrary to the rule that the record should be
complete prior to the filing of an appeal.20 Trademark Rule 2.142(d), 37 CFR
§ 2.142(d). Exhibits attached to a brief that were not made of record during
examination are untimely, and generally will not be considered. In re Compania de
Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). However, the
Board may consider such evidence, despite its untimeliness, if the examining attorney
discusses it in her brief without objecting to it. TBMP § 1203.02(e) (Jan. 2017). Here,
the Examining Attorney does not object to this evidence, and indeed discusses it,
believing it bolsters her position.21 Consequently, the third-party registration will be
considered.

18 Examining Attorney’s Response to Request for Reconsideration, 4 TTABVUE 3, citing
TMEP § 714.05(a).
19 Registration no. 4760560 on the Principal Register, registered on June 23, 2015 to Komatsu
Ltd. for machinery and parts in International Class 7 and vehicles and parts in International
Class 12; Exhibit B to Applicant’s brief, 6 TTABVUE 14-16.
20 Examining Attorney’s brief, 8 TTABVUE 8 n. 2.
21 Id.
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“A display of descriptive or otherwise unregistrable matter is not registrable on
the Principal Register unless the design features of the asserted mark create an
impression on the purchasers separate and apart from the impression made by the
words themselves….” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1639
(Fed. Cir. 2016) (quoting In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486 (TTAB
2012)); see also 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:40 (4th
ed. May 2017) (“To be registrable as a trademark or service mark, the display or style
of lettering must be so eye-catching and unusual that it creates a separate commercial
impression apart from the word itself.”); see generally TMEP § 1209.03(w)
(stylization).
Here, Applicant’s mark claims three stylistic distinctions: (1) its sans-serif font,
(2) its coloring, and (3) its capitalization. We address them in turn, and then
collectively. Applicant’s san-serif font is not distinctive. Words are by necessity
written in some sort of font or lettering, but there is nothing about Applicant’s
ordinary sans-serif font to suggest that it is an indication of source or intended to
distinguish it from other designations. Almost all of the third-party remanufacturers
noted above, such as John Deere and Caterpillar, use similar sans-serif fonts. And
marks with far greater font stylization, such as
or , were nonetheless found ineligible for
registration. Cordua Restaurants, 118 USPQ2d at 1640; Sadoru Grp., 105 USPQ2d
at 1490. Applicant’s coloring of its mark, black for RE and red for MAN, is also not
Serial No. 86729532
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distinctive. The inherent distinctiveness of a mark is necessarily a subjective matter,
based on the viewer’s first impression. Sadoru Grp., 105 USPQ2d at 1486 (citing In
re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986)). And “[i]n most cases, the
color in the lettering is unlikely to have a significant impact on the commercial
impression created by the mark.” TMEP § 807.14(e)(ii) (Apr. 2017). For example, the
third-party uses of REMAN pictured earlier in this opinion appeared in blue, black,
and yellow, yet viewers who have seen them for the first time are unlikely to recall
their colors or consider them source-indicating. Finally, the capitalization in
Applicant’s mark, emphasizing the R and the M, does nothing more than to
emphasize that Applicant provides re-manufacturing, not manufacturing.22 Marks
with far greater variation in the size and capitalization of letters have been found not
to comprise inherently distinctive styles, e.g.:

In re Grande Cheese Co., 2 USPQ2d at 1449.

22 See Examining Attorney’s brief, 8 TTABVUE 9.
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The third-party registration to which Applicant refers, contains a
separate design component, two shaded arrows curving above and below the word
mark―the very sort of design that can “create a commercial impression separate and
apart from the word itself.” See Cordua Restaurants, 118 USPQ2d at 1639; In re
Jackson Hole Ski Corp., 190 USPQ 175, 176 (TTAB 1976). Applicant’s mark, taken
in its entirety, contains minimal stylization that is neither eye-catching nor
distinctive, and ultimately fails to create a separate commercial impression. See In re
Bonni Keller Collections, Ltd., 6 USPQ2d 1224, 1227 (TTAB 1987).
II. Conclusion
For the foregoing reasons, we find that Applicant’s applied-for mark is merely
descriptive within the meaning of Section 2(e)(1), and that its minimal stylization is
not sufficiently distinctive to permit its registration with the entire literal element,
“REMAN,” disclaimed.
Decision: The refusal to register Applicant’s mark is affirmed.