Z-Tech, Inc.

Trademark Trial and Appeal Board

Aug 8, 2007

No. 78267663 (T.T.A.B. Aug. 8, 2007)

Mailed:
August 8, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Z-Tech, Inc.
________

Serial No. 78267663
_______

Ray R. Regan of Law Office of Ray R. Regan, P.A. for Z-
Tech, Inc.

Rudy Singleton, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney)
_______

Before Seeherman, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Z-Tech, Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register PAIN RELIEF
FOOTWEAR, with the word FOOTWEAR disclaimed, for footwear,
shoes, shirts and hats.1 Registration has been refused
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 78267663, filed June 27, 2003, based on
Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78267663
2
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its identified goods.
The appeal has been fully briefed. We affirm the
refusal.
It is the Examining Attorney’s position that the term
PAIN RELIEF FOOTWEAR describes footwear that reduces and
relieves pain. In support of his position, the Examining
Attorney has made of record Internet evidence regarding
both applicant’s and third parties’ footwear products, and
dictionary definitions2 of the words “pain” and “relief,” to
wit:
Pain: 1. An unpleasant sensation
occurring in varying degrees of
severity as a consequence of injury,
disease, or emotional disorder.
2. Suffering or distress.

Relief: 1. The easing of a burden or
distress, such as pain, anxiety, or
oppression.
2. Something that alleviates pain or
distress.

The Examining Attorney has also pointed out that applicant
has identified its goods as, inter alia, “footwear,” and
has disclaimed exclusive rights to that word, thereby
acknowledging its descriptiveness.

2 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 78267663
3
Although applicant filed its application on the basis
of an intention to use the mark, applicant has stated that
it “is selling similar footwear under the Z-Coil® mark that
Applicant intends to sell under the PAIN RELIEF FOOTWEAR
mark.” Brief, p. 6. Applicant is also currently
advertising its footwear and shoes in conjunction with the
mark, id., and has submitted advertisements showing the
same types of footwear that it intends to sell under the
mark PAIN RELIEF FOOTWEAR, as well as advertisements for
its shoes which use the slogan PAIN RELIEF FOOTWEAR. In
addition to advertising and other materials submitted by
applicant, applicant has made of record copies of third-
party registrations.
The evidence of record shows that applicant advertises
its footwear as having features that reduce pain, e.g.,
“Extra Forefoot Cushioning” is listed as a “Primary factor
in reducing forefoot pain”; while the “Spring Suspension
System” is “the primary factor in reducing skeletal pain
and absorbing shock.” Its Internet advertisement, at
www.zshoes.com/ztechnology.cfm, states that rigid support
is “the key to preventing foot pain,” and explains that
foot pain is often caused by plantar fascitis or heel
spurs, and that applicant’s orthotic prevents the plantar
ligament from stretching, which causes mid-foot pain or
Ser No. 78267663
4
plantar fascitis, and that it also prevents the plantar
ligament from detaching from the heel bone, which is the
cause of heel spurs and the cause of most heel pain. A
poster for applicant’s goods, headed “pain relief
footwear,” bears the slogan “Cut the pain,” and include the
testimonials:
When I wear Z-CoiLs my feet do not feel
tired or sore at the end of the day;
and

Thanks to my Z-CoiLs, at the end of the
day my back and feet do not hurt
anymore.

Another poster, also bearing the slogan “pain relief
footwear,” has the following testimonials:
I now have a fuller and more productive
life that is pain-free;

The part that amazes me is that I walk
with NO pain!; and

With less foot pain, I am in a better
mood and just feel better all over.

The Examining Attorney has made of record various
articles about applicant’s footwear, which include the
following statements:
The Z-COIL® Shoe is marketed as a pain
relief shoe, and it is, but it is a new
tool for walking better.
“Ambulation News,” September 2002

It was a testimonial to the
effectiveness of the pain relief being
provided. It also guided the company in
Ser No. 78267663
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a new direction, away from running
shoes to developing a whole new
industry: pain relief footwear.™
***
The focus on pain relief has led to
many improvements and modifications to
the design of the footwear. ... Thanks
to their growing availability,
thousands of people are finding pain
relief in the form of Z-Coil® footwear.
***
Z-Coil has evolved from Al Gallegos’
quest to end his own pain to his quest
to end the pain of countless people who
are suffering daily from foot, leg, and
back pain.
“Realizing the Impossible Dream, The
Story Behind Z-Coil® Footwear”
www.zcoil.com (applicant’s website)

Cheryl’s suffering led her to try
nearly anything to find relief from the
pain. ... An ER nurse introduced her to
Z-CoiL® footwear, a revolutionary line
of pain-relief footwear designed to
help ease pain associated with foot,
leg, hip, knee and back problems.
Z-COIL SHOES are special pain relief
shoes with a build-in orthotic, extra
cushioning (200% more than other shoes)
and a patented spring suspension system
that reduces the impact on the body.
Z-COILS don’t cure anything, they
provide pain relief for conditions like
heel spurs, plantar fascitis, ankle,
knee, hip, leg, and back discomfort.
Pain Away Footwear
http://painawayfootweear.com

Applicant’s website also lists articles and TV
segments featuring its shoes, including the following
titles:
Special shoes relieve foot, back pain
KVUE News, April 26, 2004
Ser No. 78267663
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Strange looking shoe offers pain relief
News 8 Austin, February 18, 2004

Can Shoes Relieve Foot and Leg Pain?
KUTZ, June 24, 2004

In addition, articles about and advertisements for
third-party products refer to their “pain relief”
characteristics as follows:
Corn/Calluses/Forefoot
Ball-of-Foot Pain
Relieve ball of foot pain with ball of
foot cushions, foot insoles, and other
ball of foot pain relief products
FootSmart
www.footsmart.com

The Heel-Right patented foot pain
relief sock has been proven to work in
clinical studies where subjects, who
exhibited confirmed cases of plantar
fascitis or heel pain syndrome,
reported an average foot pain
improvement of over 73 percent in just
3 weeks.
www.prweb.com

A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
Ser No. 78267663
7
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Moreover, if the mark is
descriptive of any of the goods or services for which
registration is sought, it is proper to refuse registration
as to the entire class. In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d without pub. op., 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
The evidence of record clearly shows that a central
characteristic of applicant’s footwear is that it is
designed to reduce or eliminate or prevent pain. Applicant
acknowledges that reducing and preventing foot pain is a
Ser No. 78267663
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feature of the goods, and that in its advertising “emphasis
is on the prevention and reduction of foot pain.” Brief,
p. 6. The evidence also shows that “pain relief” is a term
that customers and writers use to refer to products that
reduce or eliminate pain. When the term PAIN RELIEF is
combined with the generic word FOOTWEAR, the mark PAIN
RELIEF FOOTWEAR immediately and directly informs consumers
of a major feature of the goods, namely, that the footwear
provides relief from pain.
Applicant has asserted that its mark is suggestive of
types of footwear and shoes, but not merely descriptive.
It is not entirely clear what the basis for applicant’s
assertion is. Applicant makes its conclusory statement
after the following paragraphs in its brief:
...A built-in orthotic reduces chances
of forming heel spurs or plantar
fascitis (pain in the mid-foot). Extra
forefront cushioning is a primary
factor in reducing forefoot pain. The
spring suspension system is the primary
factor in reducing skeletal pain and
absorbing shock. Shoes sold under the
Z-Coil marks reduce impact, a major
cause of foot, leg, and back pain.
Rigid support is the key to preventing
foot pain.

Testimonials confirm that the footwear
has additional benefits besides
reducing and preventing foot pain. See
Exhibit 2, Applicant’s Response of 26
May 2004, and the poster emphasizing
“cut the pain” in conjunction with PAIN
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RELIEF FOOTWEAR. Also, see Exhibit 4,
Applicant’s Response of 26 May 2004,
and the poster emphasizing “Enjoy
Walking Again” in conjunction with PAIN
RELIEF FOOTWEAR, which features
testimonials that wearing Z-Coils
causes a pain-free life, enable walking
with no pain, and causes less foot
pain. See also Exhibit 5 Applicant’s
Response of 26 May 2004, and the banner
advertising “Authorized Z-Coil Pain
Relief Center” in conjunction with PAIN
RELIEF FOOTWEAR.

Brief, pp. 6-7.

To the extent that applicant’s assertion that its mark
is suggestive is based on the position that PAIN RELIEF
FOOTWEAR does not describe all of the features of
applicant’s goods, as we have already stated, it is not
necessary that a mark do so in order to be found merely
descriptive, as long as it describes a single, significant
feature. Or it may be applicant’s position that because
its footwear “prevents” pain, “relief” does not describe
what the goods do, since “relief” refers to reducing or
alleviating pain, but not to preventing it. However,
applicant itself admits that its advertising emphasizes
that its footwear reduces foot pain. More importantly, the
various uses of the term “pain relief” by third parties,
and by the testimonials featured in applicant’s own
posters, show that the public views and understands the
term “pain relief” as referring to preventing or reducing
Ser No. 78267663
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or eliminating pain. We note applicant’s point that the
uses of “pain-relief” in a descriptive sense are not
“authored by Applicant.” Reply brief, p. 4. Aside from
the fact that applicant itself has publicized many of the
articles and other references that use “pain relief”
descriptively, this use by third parties demonstrates
public understanding of the term.
Applicant also points to the existence of various
third-party registrations for marks that contain the term
PAIN RELIEF as showing that the term is “presumptively
suggestive,” brief, p. 8, or “presumptively incongruous,”
brief, p. 10. However, most of the registrations that were
submitted by applicant are on the Supplemental Register, or
if they are on the Principle Register, “PAIN RELIEF” has
been disclaimed, thus indicating the descriptive nature of
the term. See, for example, Registration No. 2993196 for
DAILY BALANCE PAIN RELIEF CREAM for topical analgesic
preparation, with DAILY and PAIN RELIEF CREAM disclaimed;
Registration No. 3008075 for CARPAL TUNNEL PAIN RELIEF
STRIPS for splints, which is on the Supplemental Register;
Registration No. 2819498 for PHYSICIAN’S PAIN RELIEF CREAM
for topical analgesic cream, with PAIN RELIEF CREAM
disclaimed; Registration No. 2395846 for ALTERNATIVE PAIN
RELIEF PRODUCTIONS for a series of video tapes featuring
Ser No. 78267663
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self-help instructions relating to pain relief, with PAIN
RELIEF PRODUCTIONS disclaimed; Registration No. 2583908 for
NATURAL PAIN RELIEF for jewelry, registered on the
Supplemental Register; Registration No. 2336734 for BMI THE
NAUTRAL PAIN RELIEF SYSTEM for support bandages containing
magnets used for pain relief, with THE NATURAL PAIN RELIEF
SYSTEM disclaimed; and Registration No. 2771960 for PAIN
RELIEF TECHNOLOGY and design for pillows, lumbar rolls,
back supports and back cushions, with PAIN RELIEF
TECHNOLOGY disclaimed.3
While the vast majority of the third-party
registrations submitted by applicant fall into the above
categories, we note that there are five marks that were
registered on the Principle Register without a disclaimer
or resort to Section 2(f). They are Registration No.
2318703 for PAIN RELIEF THAT WORKS for analgesic balm and
Registration No. 2469031 for YOUR NATURAL CHOICE FOR
MAXIMUM PAIN RELIEF for topical analgesics, both owned by
the same entity; Registration No. 2880296 for A DIFFERENT
KIND OF PAIN RELIEF for treatments for pain and for
disorders of the central nervous system; Registration No.

3 Applicant submitted only the first page of the printout of
this last registration from the TESS database, and the disclaimer
information was therefore omitted. We have confirmed that Office
records show that the above-noted disclaimer was entered.

Ser No. 78267663
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2506804 for THE PODIATRIST’S PRESCRIPTION FOR PAIN RELIEF!
for orthotic shoe inserts; and Registration No. 2140754 for
CAR BUYING PAIN RELIEF for promoting and advertising
automobiles via a global computer network. Of course, we
do not know what went into the Examining Attorneys’
decisions in allowing these registrations without a
disclaimer, but we do note that slogans are treated as
unitary terms, such that, unless the entire slogan is
merely descriptive, no disclaimer of part of a slogan mark
is required. See TMEP §1213.05(b). With respect to the
fifth mark, the term PAIN RELIEF in that mark obviously
does not refer to actual pain, but suggests the annoyances
involved in buying a vehicle. In short, we do not regard
these registrations as showing that the words PAIN RELIEF
in applicant’s mark are not descriptive, or that, as
applicant would have it, its mark PAIN RELIEF FOOTWEAR is
incongruous and therefore registrable. If anything, the
large number of third-party registrations for marks which
contain the term PAIN RELIEF, as well as those
registrations which use “pain relief” as part of their
identification of goods, show that this term has a readily
recognized meaning. As a result, they provide further
support for our conclusion that the public would
immediately understand, when seeing the mark PAIN RELIEF
Ser No. 78267663
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FOOTWEAR used for footwear, that the footwear reduces or
eliminates pain.
Applicant has asserted, citing TMEP §1209.03(d), that
“a mark comprised of a combination of merely descriptive
components is registrable if the combination of terms
creates a unitary mark with a unique, nondescriptive
meaning, or, if the composite has a bizarre or incongruous
meaning as applied to the goods.” Brief, p. 9. While
applicant is correct about this general principle, it has
failed to explain why its mark should be deemed to have a
nondescriptive or incongruous meaning. The cases applicant
has cited are readily distinguishable from applicant’s
situation. For example, in In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968), the first case cited by
applicant, the mark involved therein, SUGAR & SPICE for
bakery products, had a second, nondescriptive meaning
relating to the nursery rhyme. Applicant has not explained
what additional, nondescriptive meaning PAIN RELIEF
FOOTWEAR has, or why this term should be considered
incongruous when used for footwear.
Applicant has asserted that its mark is incongruous
when applied to nonfootwear items, such as the shirts and
hats which are also identified in the application.
However, as stated above, if a mark is descriptive of any
Ser No. 78267663
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of the goods or services for which registration is sought,
it is proper to refuse registration as to the entire class.
Otherwise, applicants could obtain exclusive rights to
merely descriptive marks simply by including in their
applications an item for which the mark is not descriptive.
Applicant has also argued that PAIN RELIEF FOOTWEAR
has “other functional equivalents that can be used to
describe the genus at issue, such as ‘pain prevention
shoes,’ ‘pain easing footwear,’ comfortable footwear,’
‘less tiring footwear,’ ‘back saving footwear,’ ‘ankle
easing footwear,’ and so on, which makes it registrable.”
Brief, pp. 8-9. Even if we accept that the terms suggested
by applicant are “functional equivalents” of PAIN RELIEF
FOOTWEAR, the fact that competitors and the public at large
use the term “pain relief” for its recognized meaning, as
shown by the various articles and other Internet evidence,
demonstrates that there is a competitive need for the use
of this term, and that applicant is not entitled to
exclusive rights to it. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983) (to be
held a generic or common descriptive name, it is not
necessary that the designation in question be the only apt
or common name of the goods or services or that the name be
universally recognized as such).
Ser No. 78267663
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Finally, we note applicant’s reliance on the principle
that when there is doubt on the issue of whether a mark is
merely descriptive, that doubt should be resolved in favor
of the applicant. However, in the present case we have no
doubt whatsoever that applicant’s mark is merely
descriptive of some of the goods identified in its
application.
Decision: The refusal of registration is affirmed.