Novoc, Inc.

Trademark Trial and Appeal Board

Oct 4, 2011

No. 77432922 (T.T.A.B. Oct. 4, 2011)

Mailed: 10/4/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Novoc, Inc.
________

Serial Nos. 77432920 and 77432922
_______

Richard A. Arrett of Vidas, Arrett & Steinkraus for Novoc,
Inc.

Alyssa Paladino Steel, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Cataldo and Shaw, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Novoc, Inc. filed, on March 27, 2008, intent-to-use
applications to register the marks NOVOC (in standard
characters) and NOVOC SOLUTIONS (in standard characters)
(“SOLUTIONS” disclaimed), both for “materials treatment
services, namely, providing electrostatic painting services
for others” in Class 40.1
The trademark examining attorney refused registration
in each application on the grounds of deceptiveness under

1 Application Serial Nos. 77432920 and 77432922, respectively.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. Nos. 77432920 and 77432922
2
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), and
mere descriptiveness under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1). With respect to the applied-
for mark NOVOC SOLUTIONS in application Serial No.
77432922, the examining attorney raised a third issue,
namely a requirement to disclaim the term “NOVOC” on the
basis that the term is generic.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Some preliminary comments are in order. The
examination of the application hardly presents a model of
clarity. The examining attorney originally issued a final
refusal under Section 2(d) on the ground of likelihood of
confusion. After applicant filed a notice of appeal and
the application was forwarded to the examining attorney for
her appeal brief, the examining attorney, in lieu of a
brief, requested a remand to raise the issue of mere
descriptiveness under Section 2(e)(1); she also withdrew
the Section 2(d) refusal. After applicant’s response to
the new refusal, the examining attorney continued the mere
descriptiveness refusal, but she also raised an additional
refusal, namely deceptiveness under Section 2(a). Both
times, in raising the new refusals after appeal, the
examining attorney “apologize[d] for any inconvenience”
Ser. Nos. 77432920 and 77432922
3
that the new refusals caused. The examining attorney
eventually issued a final refusal on both grounds in each
application; as noted above, application Serial No.
77432922 includes a disclaimer requirement.
The fact that the examining attorney refused
registration on the alternative grounds of deceptiveness
and mere descriptiveness brings us to our next observation.
Applicant, in its response filed December 24, 2008, stated
the following: “Apparently NoVOC is a term used to
describe products and substances that emit no or low rates
of volatile organic compounds.” In its brief, applicant is
on record stating that its “powder coating emits no
volatile organic compounds.” (Brief, pp. 3-4). Further,
as will be apparent from the discussion infra, applicant’s
website confirms that its services utilize powder paints
that emit no volatile organic compounds.
We understand the logic behind the alternative
refusals in this case inasmuch as applicant’s recitation of
services is broad enough to encompass services utilizing
paints that contain volatile organic compounds, as well as
services utilizing paints that do not contain volatile
organic compounds. See In re Organik Technologies Inc., 41
USPQ2d 1690, 1694 (TTAB 1997). We also appreciate the fact
that the examining attorney suggested that applicant amend
Ser. Nos. 77432920 and 77432922
4
its services to indicate that the services featured, in
point of fact, paints not containing volatile organic
compounds; and that, if such amendment were made, the
examining attorney would withdraw the deceptiveness
refusal. The examining attorney suggested the following
recitation: “materials treatment services, namely,
providing electrostatic painting services for others
featuring paints containing no volatile organic compounds.”
Applicant declined to follow the suggestion. We wish to
make it clear that the examining attorney did not require
an amended recitation in view of the true nature of the
paints, and no final refusal on such a requirement issued.
Accordingly, there is no issue on appeal relating to the
current recitation of services.
Further, in view of our conclusion as to mere
descriptiveness (see discussion, infra), even though
applicant’s present recitation of services may be broad
enough to encompass services utilizing paints that contain
volatile organic compounds, we need not reach the
deceptiveness refusal.
Accordingly, in each of the applications to register
NOVOC and NOVOC SOLUTIONS, we will focus our attention on
the ground of mere descriptiveness.
Ser. Nos. 77432920 and 77432922
5
In addition, with respect to the mark NOVOC SOLUTIONS,
the examining attorney has required that applicant disclaim
the term “NOVOC” because it is generic. See TMEP
§1213.03(b) (3d ed. 2011). This brings us to another
preliminary observation. With respect to this mark,
applicant already has disclaimed the term “SOLUTIONS” apart
from the mark. After acknowledging this fact, the
examining attorney states that “[w]hile ‘solutions’ is
merely descriptive of the applicant’s services, the term
‘NOVOC’ appears to be generic in the context of applicant’s
services and it must be disclaimed.” (Brief, unnumbered p.
16). The examining attorney earlier informed applicant
that if the identification of services were amended to
indicate that the featured paints did not include volatile
organic compounds, and if applicant “responded to the
Section 2(e)(1) refusal by seeking registration on the
Principal Register under Trademark Act Section 2(f) or on
the Supplemental Register, then it must remove the
disclaimer of the descriptive term ‘solutions’ and instead
disclaim the generic term ‘NOVOC.’” Id.
Because applicant has already disclaimed the word
“SOLUTIONS,” and inasmuch as applicant is seeking neither
registration under Section 2(f), nor registration on the
Supplemental Register, we need not consider the genericness
Ser. Nos. 77432920 and 77432922
6
of the term “NOVOC.” If the term NOVOC is merely
descriptive, then registration of the mark NOVOC SOLUTIONS
as a whole must be refused on the Principal Register.
Thus, we see no reason to reach the issue of the
genericness of the term “NOVOC” in this appeal, given the
disclaimer of “SOLUTIONS” and our determination on the mere
descriptiveness refusal (see discussion, infra).
One last preliminary matter involves an evidentiary
objection. The examining attorney, in her brief (p. 14),
objected to applicant’s “listing” of four third-party
registrations in applicant’s March 4, 2010 response. The
examining attorney points out that copies of the
registrations were never submitted, and that applicant’s
“copying” of the registration information into its response
is improper, tantamount to a list. The examining attorney
goes on to contend that, in the event the Board considers
this evidence, it is not entitled to any probative value.
Applicant’s reply brief is silent on the matter.
The mere submission of third-party registrations from
a private company search report does not make such
registrations part of the record. See, e.g., In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998). To make
third-party registrations part of the record, an applicant
must submit either a copy of the paper USPTO record, or a
Ser. Nos. 77432920 and 77432922
7
copy taken from the electronic records of the Office during
prosecution of the application. See, e.g., In re Ruffin
Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002).
The Board is unable to definitively determine the
source of the third-party registration evidence. It is
possible that applicant cut and pasted the registration
information directly from USPTO records into its March 4,
2010 response.
In any event, the examining attorney, in her March 19,
2010 Office action in response to applicant’s March 4, 2010
submission, did not object to the “listing.” If applicant,
during the prosecution of the application, provided a
listing of third-party registrations, without also
submitting actual copies of the registrations, and the
examining attorney did not object or otherwise advise
applicant that a listing is insufficient to make such
registrations of record at a point when applicant could
cure the insufficiency, the examining attorney will be
deemed to have waived any objection as to improper form.
See in re Boyd Gaming Corp., 57 USPQ2d 1944, 1945 n.4 (TTAB
2000); TBMP §1207.03 (3d ed. 2011).
Ser. Nos. 77432920 and 77432922
8
Accordingly, the examining attorney’s objection made
in her brief is deemed waived. The third-party
registration information has been considered.2
We now turn to the issue of 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 (TTAB 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 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

2 It obviously would have been preferable for applicant to have
either submitted during prosecution the original USPTO printouts
of the third-party registrations, or submit a declaration
explaining the process by which the information was transferred
from a USPTO database to applicant’s response.
Ser. Nos. 77432920 and 77432922
9
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).
The record includes numerous references showing that
“volatile organic compounds” are organic chemical compounds
that have sufficiently high vapor pressures to vaporize and
enter the atmosphere. Products containing volatile organic
compounds like benzene, methylene, and chloride are simply
a part of modern life for manufacturers and households.
Common artificial sources of volatile organic compounds
include paints, and paint-related goods, including
thinners, varnishes and coatings. (see, e.g.,
wikipedia.com; answers.com; articlesbase.com). According
to the Environmental Protection Agency, exposure to
volatile organic compounds can cause symptoms like nose and
throat discomfort, allergic skin reactions, headaches and
nausea.
Ser. Nos. 77432920 and 77432922
10
Further, the record includes a multitude of sources
showing “VOC” as an acronym meaning “volatile organic
compound.” (see, e.g., The American Heritage Abbreviation
Dictionary (3d ed. 2005); encarta.msn.com;
acronymfinder.com; thefreedictionary.com). The record
shows that paint manufacturers are becoming more sensitive
to the environment and, in this connection, they are making
paints that do not contain VOCs. Paint manufacturers
frequently tout the fact that their products do not include
VOCs: “a premium quality, zero VOC paint.” (see, e.g.,
www.benjaminmoore.com).
The record further includes a description about
electrostatic painting:
Electrostatic painting, also known as
“powder coating,” uses the principal of
“opposites attract” to create a uniform
and durable finish on metal and some
plastics without the sags, runs, drips
and bubbles that can occur with
traditional liquid paints. It’s used
on many plastics and every kind of
metal.

Electrostatic painting process is
simple in concept and operation. Dry
powder comprised of resins and pigments
is pneumatically fed from a supply
reservoir to a spray gun where a low
amperage, high voltage charge is
imparted to the powder. The part to be
finished is electrically grounded.
When sprayed, the charged powder
articles are firmly attached to the
grounded part’s surface and held there
Ser. Nos. 77432920 and 77432922
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until melted and fused into a smooth
coating in the curing ovens.

It’s much more durable than liquid
paint and it’s an environmentally
friendly process because there are no
solvents to evaporate into the air or
go down the drain. (emphasis added).
(www.servicemagic.com).
The record establishes an industry-wide trend toward
paints that do not contain VOCs.
Remember that new paint smell? Well,
those are actually the toxins and VOCs
releasing into the air and reducing the
quality of your air. The Paint Quality
Institute has estimated that the VOCs
in traditional paints make up to 10
percent of ozone depleting substances
in the United States. In the last few
years paint manufacturers have become
sensitive to the impact of their
products on the health of the consumer
and the environment. In an effort to
become greener, paint manufacturers
have begun work to remove some of the
toxic ingredients in their traditional
paints to create no VOC paints or low
odor paints. (emphasis added).
(www.articlesbase.com)

Finally, the record shows common use of “no VOC” in
connection with paints that do not contain volatile organic
compounds. The following entry for “NoVOC” appears in
Wikipedia:
NoVOC (and LoVOC) are words used to
describe products and substances that
emit no (zero) or low (less than
minimum acceptable regulatory
standards) rates of volatile organic
compounds (VOC). New technologies
Ser. Nos. 77432920 and 77432922
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having the replacement of solvents with
water-based solutions will lead to
healthier workplaces and products.
NoVOC and LoVOC are trademarks but are
becoming more commonly used as
descriptive terms when referring to
safer and more environmentally sound
technologies, processes, and products.

The record shows rampant use in the industry of “no
VOC” in connection with paints and related products. The
uses include the following: “Fortunately, there is a new
generation of paints that are low VOC, no VOC, or all
natural, and that reduce the indoor pollution from your
interior paint to almost nothing. While VOCs used to be
necessary to make paint, new technology has rendered them
less and less essential. The result is the next generation
of painting products.” (www.servicemagic.com). “No VOC
Paint contains less than 5 grams of VOCs per liter of
paint, usually in the form of biocide, fungicides, or
colorant. No VOC paint has almost no smell when wet and
none at all once it has dried.” (www.servicemagic.com).
“NoVOC Powder Coatings Troubleshooting Tips”
(www.williams_hayward.com); “Understanding No VOC Paint
Solutions” (www.articlesbase.com); “To help deal with
[improving indoor air quality] there are several low or no
VOC paints that have been introduced...This new line of no
VOC paint also has a unique tinting system.”
Ser. Nos. 77432920 and 77432922
13
(www.diylife.com); “Environmentally Compliant, No-VOC
Furniture Coating” (www.cfpub.epa.gov); “Low-VOC and No-VOC
Paints” (www.greenfeet.net); “...by measuring the VOC
content of finishes that makers maintain have no VOCs...”
(www.consumerreports.org); “Zero VOC or No VOC paint is a
misnomer and only means very, very low levels of VOC.”
(www.homerepair.about.com); “Today, alternative
manufacturing techniques have allowed the development of
low- and no-VOC paints that release no, or minimal VOC
pollutants, and are virtually odor free.”
(www.toolbase.org); “If low- or no-VOC paint spills, it can
be cleared up with soap and water. Low- or no-VOC paint is
a quality, cost-effective painting option that is safe for
the environment and the homeowner.” (www.hgtvpro.com); and
“No VOCs in the paint. No VOCs in the colorant. A fresh
idea for your home.” (www.freshairechoice.com)
Applicant itself has used “no VOC” in a merely
descriptive manner in connection with its services
featuring paints:
NoVoc incorporates a very simple
environmentally friendly surface
treatment on materials to make them
temporarily conductive. This enables
the use of powder paint on materials
that have traditionally been impossible
to powder paint.

Ser. Nos. 77432920 and 77432922
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Powder paints emit no VOC or other
hazardous byproducts unlike most liquid
paint or plating processes. Painting
industry regulations are becoming more
and more stringent and will require
less polluting decorating processes.
NoVoc Solutions™ enables our customers
to offer the finest coated products
with the best available Green
technology. (emphasis added).

(www.novacsolutions.com)
Lastly, the examining attorney submitted third-party
registrations for various products that include disclaimers
of “LOW VOC” or “0 VOC.”
It is clear that “no VOC” is a commonly recognized and
understood term to describe or name substances that emit no
(zero) volatile organic compounds. The term NOVOC is, at
the very least, merely descriptive for services that
feature no or zero VOCs that is, volatile organic
compounds. No imagination is required by a purchaser or
user to discern that NOVOC, when applied to paints,
describes paints that have no or zero volatile organic
compounds.
As for the applied-for mark NOVOC SOLUTIONS, as noted
above, applicant has disclaimed “SOLUTIONS,” a word meaning
“the act [or acts] of solving a problem, question, etc.”
Random House Dictionary (2011). The composite NOVOC
SOLUTIONS is merely descriptive of services that feature no
Ser. Nos. 77432920 and 77432922
15
or zero volatile organic compound paint (i.e., “no VOC”)
solutions for one’s painting problems or needs. Again, no
imagination is required by a purchaser or user to discern
this merely descriptive meaning conveyed by NOVOC
SOLUTIONS.
The four third-party registrations of similar marks,
three of which are cancelled, are not persuasive of a
different result. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)(“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this
court.”).
Decision: The refusal to register under Section
2(e)(1) on the ground of mere descriptiveness is affirmed
in each application.