Carl R. Meyer

Trademark Trial and Appeal Board

Sep 14, 2012

No. 77902939 (T.T.A.B. Sep. 14, 2012)

Mailed: 9/14/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Meyer
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Serial No. 77902939
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Thomas J. Moore of Bacon & Thomas for Carl R. Meyer.

Cheryl Clayton, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Kuhlke and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Carl R. Meyer filed, on December 30, 2009, an intent-to-use
application to register the mark SWIMJET (in standard
characters) for “exercising equipment, namely, small swimming
pool with apparatus providing current of water against which to
swim” (in International Class 28).
The trademark examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s mark, when applied to applicant’s
goods, is merely descriptive thereof; and on the basis of
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 77902939

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applicant’s failure to comply with the request to provide
product information.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.1
Applicant argues that his mark is just suggestive. The
totality of applicant’s rationale is as follows:
The mark comprises the term “swim” which is
suggestive of swimming, and the term “jet”
which is suggestive of someone who swims at
a relatively high rate of speed. However,
taken together, SWIMJET forms a unitary mark
with a unique, nondescriptive meaning, which
has a bizarre or incongruous meaning as
applied to the goods. The user does not
swim as fast as a jet. Significant thought
and imagination are required to form an
association between the mark and the goods.
(Brief, p. 6).

As to the requirement to provide additional information about
the goods, applicant points to its ownership of a prior
registration, now cancelled, that listed the identical goods;
applicant urges that the earlier registration reflects the
Office’s understanding of the goods for purposes of examination.
Applicant also states that since the present application is
based on an intention to use the mark, it cannot be reasonably
expected that product brochures or advertisements exist.
The examining attorney maintains that the mark merely
describes a primary feature of the goods, namely, that

1 Pursuant to applicant’s request, the Board scheduled an oral hearing.
Applicant subsequently withdrew its request, and the hearing was cancelled,
with the appeal being submitted on brief.
Ser. No. 77902939

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applicant’s swimming pool features a jet propulsion system that
creates a current against which the user swims. The jet
propulsion is provided by an apparatus called a “swim jet” or
“swim jet system” that creates a current in the water thrusting
against the swimmer, allowing the user to swim in place. In
support of the refusal, the examining attorney introduced
dictionary definitions, and excerpts of third-party websites.
With respect to the request for additional information, the
examining attorney states that because the application is based
on an intention to use the mark, more information was required
to reasonably understand how the goods work and how applicant
intends to use his mark.

Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(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 Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor Development, 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of
the applicant’s goods or services in order to be considered
merely descriptive; rather, it is sufficient that the mark
Ser. No. 77902939

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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); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a mark 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 mark would have to the average purchaser
of the goods or services because of the manner of its use. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that “[t]he question is not whether someone presented
with only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the goods
or services are will understand the mark to convey information
about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002).
When two or more merely descriptive terms are combined, the
determination of whether the composite mark also has a merely
descriptive significance turns on the question of whether the
combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive
significance in relation to the goods or services, the
combination results in a composite that is itself merely
descriptive. See, e.g., In re Petroglyph Games, Inc., 91 USPQ2d
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1332 (TTAB 2009) (BATTLECAM is merely descriptive of computer
game software); In re Tower Tech Inc., 64 USPQ2d at 1317
(SMARTTOWER is merely descriptive of commercial and industrial
cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084
(TTAB 2001) (AGENTBEANS is merely descriptive of computer
programs for use in development and deployment of application
programs).
The term “swim” is defined as “to move with a motion like
that of swimming.” The term “jet” means “a usually forceful
stream of fluid (as water or gas) discharged from a narrow
opening or a nozzle.” (www.merriam-webster.com).
The examining attorney also introduced excerpts of third-
party websites, of which the following are representative:
TidalFit Quad Swim Jets
Perfect for people looking for an amazing
workout without the gym, and provides fun
for the whole family!

Additional intake areas are needed at
different points in the swim spa. These
swim jets require two commercial rated
swimming pool pumps.
(www.tidalfit.com)

Swim Jet pump
(www.fiberliner.com)

Swim Jet Systems
(www.myaquasuperstore.com)

Nozzle, Swivel for Swim Jet
(www.spadepot.com)

Ser. No. 77902939

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Now any pool can become an exercise machine
providing a well paced aerobic workout, with
the installation of BADUSTREAM from Speck
pumps. Swim Jets make small pools big and
big pools bigger!
Speck – The Leader in Swim Jet Systems
(www.northwestwholesale.com)

The Badu® SwimJet Systems from Speck Pumps
are designed for installation during the
construction of your pool to create a water
treadmill for anyone wanting therapeutic and
effective exercise.

The self-contained, flush-mounted unit is a
jet-propulsion system that pumps water into
the pool creating a current in excess of
5,000 gallons per minute from a single
recessed jet housing.
(www.badujet.com)

Based on the evidence of record, we find that the proposed
mark SWIMJET is merely descriptive of a significant
characteristic or feature of applicant’s type of exercise
swimming pool, namely that swim jets are used to create the
requisite current. No imagination is required by a purchaser or
user to discern that the mark, when applied to the goods,
describes a swimming pool featuring swim jets (i.e., an
apparatus that emits a forceful stream of water against a
swimmer). The third-party evidence shows descriptive uses of
“swim jets” in connection with the same or similar type of
swimming pool.
For the sake of completeness, we are compelled to make one
additional observation. Although applicant made reference to
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his earlier registration, he did not specifically argue that
this fact compels a reversal of the present refusal. Applicant
previously owned Reg. No. 1121467 (issued July 3, 1979) on the
Principal Register for the identical mark and identical goods
involved herein. The registration was not renewed, however, and
the registration was cancelled on February 6, 2010.
Applicant's prior, cancelled, registration does not compel
reversal of the examining attorney herein. We have no
information of record regarding applicant's prior registration,
nor are we familiar with the prosecution history or evidentiary
record thereof. Further, the fact that applicant at one time
owned a now-expired registration for the same mark for identical
goods does not show that his mark is inherently distinctive and
not merely descriptive. In re Phillips-Van Heusen Corp., 63
USPQ2d 1047, 1048 n.2 (TTAB 2002). While it is unfortunate that
applicant's prior registration was not maintained, our precedent
is clear; a cancelled or expired registration has no probative
value other than to show that it once issued. Sunnen Products
Co. v. Sunex Int’l. Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
Importantly, the presumptions which benefit a subsisting
registration on the Principal Register, see Trademark Act
§ 7(b), 15 U.S.C. § 1057(b), expire with the registration.
Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46, 47
(CCPA 1973) (“Whatever benefits a registration conferred upon
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appellee were lost by him when he negligently allowed his
registration to become canceled.”); and In re Hunter Publishing
Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation “makes the
question of registrability ‘a new ball game’”). We acknowledge
that, had applicant maintained his prior registration, he would
have a registration identical to the one he now seeks. However,
that did not happen, and the Office must apply the same standard
to the examination of applicant's new application as it applies
to any other application. Applicant is not entitled to
favorable treatment because he inadvertently allowed his prior
registration to be cancelled. Accord In re Piano Factory Group
Inc., 85 USPQ2d 1522, 1527 (TTAB 2006) (“Furthermore, the fact
that the mark ‘VOSE & SONS’ was at one time registered on the
Principal Register does not justify registration in light of the
substantial evidence herein as to the primary significance of
the term ‘VOSE’ as a surname.”).
We conclude that the proposed mark SWIMJET is merely
descriptive of swimming pools that feature swim jets.

Request for Information
TMEP § 814 (8th ed. 2011) reads, in pertinent part, as
follows:
Sometimes, it is necessary for the examining
attorney to request additional information
from an applicant in order to examine the
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application properly, pursuant to 37 C.F.R.
§ 2.61(b). If the applicant does not comply
with a requirement for information,
registration may be refused.

The nature of applicant’s goods is readily apparent from
the identification of goods itself. As noted above, the
identical mark and identically worded identification were the
subject of applicant’s earlier registration, now expired.
Further, the examining attorney’s evidence comprising third-
party websites showing goods the same as or virtually identical
to applicant’s goods provides sufficient information regarding
“how the goods work” so that nothing more was necessary to
examine the intent-to-use application properly.
Accordingly, we do not see the need for additional
information, and the examining attorney’s request therefor is
deemed unnecessary for an effective examination of the present
application.
Decision: The refusal based on mere descriptiveness under
Section 2(e)(1) is affirmed. The refusal based on applicant’s
failure to comply with a request for more information is
reversed.