Rug Doctor, L. P.

Trademark Trial and Appeal Board

Jul 9, 1997

EX (T.T.A.B. Jul. 9, 1997)

THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB JULY 9, 1997
Hearing: Paper No. 16
November 13, 1996 TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rug Doctor, L.P.
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Serial No. 74/457,278
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Richard Browne and Alexandra Kostiw of Winston & Strawn for
applicant.
Richard A. Straser, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Rice, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Rug Doctor, L.P. to
register the designation WITH THE VIBRATING BRUSH for
"machines for extracting dirt and foreign matter from rugs,
carpets, and the like."1 Applicant claims that the applied-
for designation has acquired distinctiveness as provided by
Section 2(f) of the Act.

1Application Serial No. 74/457,278, filed November 9, 1993,
alleging dates of first use of May 10, 1978.
Ser No. 74/457,278
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The Trademark Examining Attorney has issued a final
refusal under Sections 1, 2 and 45 of the Act on the ground
that WITH A VIBRATING BRUSH is purely an informational
slogan that does not function as a mark to identify and
distinguish applicant's goods.2 The Examining Attorney
further contends that even assuming that the slogan does
function as a mark, the Section 2(f) evidence of record is
insufficient to demonstrate that applicant's slogan has come
to distinguish its goods from those of others.
When the refusal was made final, applicant appealed.3
Applicant and the Examining Attorney filed briefs and both
were present at an oral hearing held before the Board.

2Registration originally was refused under Section 2(e)(1) on
the ground that the slogan was merely descriptive when applied
to the goods. The Examining Attorney, as he indicates in his
appeal brief, subsequently changed the ground of refusal.
3A review of the file shows that applicant's response to the
April 4, 1994 Office action refusing registration under Section
2(e)(1) was transmitted to the Office by facsimile on October 4,
1994. The Office action dated November 7, 1994, refusing
registration for the first time under Sections 1, 3 and 45,
issued in response to applicant's communication. The next paper
in the file is the original copy (including the declaration and
the exhibits to the declaration) of the papers which applicant
earlier had submitted by way of facsimile. The original copy
bears a PTO mail room date stamp of October 4, 1994. The
Examining Attorney then issued another Office action on January
25, 1995. This Office action, which includes the final refusal
under Sections 1, 3 and 45, essentially is the Examining
Attorney's second Office action in response to the very same
evidence. That is to say, applicant never had an opportunity to
respond to the Sections 1, 3 and 45 refusal before it was made
final. Nonetheless, applicant's request for reconsideration of
the final refusal addressed the merits of the Sections 1, 3 and
45 refusal, and applicant has never raised any objection that
the final refusal dated January 25, 1995 appeared to be
premature. In view of applicant's request for reconsideration
which addressed the merits of the final refusal, and since
applicant has raised no concerns relating to the final refusal's
being premature, the Board sees no reason to delay a decision at
final hearing.
Ser No. 74/457,278
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Applicant argues that there is no prohibition in the
Trademark Act against the registration of informational
slogan marks. Applicant contends that informational phrases
may also function as trademarks and, in this connection,
applicant has submitted a claim of acquired distinctiveness
based on substantially exclusive and continuous use since
1978. In support of the Section 2(f) claim, applicant has
relied upon the declaration of Tim Davidian, an officer of
applicant. Mr. Davidian attests to applicant's use for over
sixteen years of the designation sought to be registered,
with cumulative total sales of carpet cleaning machines
bearing the designation in excess of $50 million. The
carpet cleaning machines bearing the designation have been
advertised in newspapers and brochures, at trade shows, on
national television, on radio and in point-of-purchase
literature. Advertising expenditures since 1978 exceed $7
million. Mr. Davidian's declaration is accompanied by
exhibits, including advertising brochures, an instruction
manual and a decal-label which is affixed to applicant's
machines. Also made of record is a one-page excerpt from
the Official Gazette and applicant's request for an
extension of time to oppose the published mark shown in the
excerpt.4

4The Examining Attorney, in his brief (unnumbered p. 4),
objects, in part, to this evidence, essentially on the basis of
untimeliness. Inasmuch as this evidence was submitted with
applicant's timely request for reconsideration, the evidence
properly forms part of the record for appeal. Trademark Trial
and Appeal Board Manual of Procedure, § 1204. Thus, we have
considered it in reaching a final decision.
Ser No. 74/457,278
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The Examining Attorney maintains that applicant's
slogan is merely an information phrase which highlights a
significant feature of applicant's carpet cleaning machines.
The Examining Attorney points to applicant's various uses of
WITH A VIBRATING BRUSH, concluding that the consuming public
would not perceive the slogan as an indication of source.
The term "trademark", as defined in relevant part in
Section 45 of the Trademark Act, means "any word, name,
symbol, or device, or any combination thereof used by a
person to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold
by others and to indicate the source of the goods, even if
that source is unknown." Clearly, not every word or
combination of words which appears on an entity's goods
functions as a trademark. In re Remington Products Inc., 3
USPQ2d 1714 (TTAB 1987). Thus, the mere fact that
applicant's informational phrase appears on the specimens
and on other materials does not make it a trademark. To be
a mark, the phrase must be used in a manner calculated to
project to purchasers or potential purchasers a single
source or origin for the goods. Mere intent that a word or
combination of words functions as a trademark is not enough
in and of itself to make the word or combination of words a
trademark. Id.
A critical element in determining whether a term is a
trademark is the impression the term makes on the relevant
public. In the type of case presently before us, the
Ser No. 74/457,278
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inquiry becomes a question of whether the slogan would be
perceived as a source indicator or, rather, as merely an
informational slogan.
Based on the evidence of record, we find that the
designation WITH A VIBRATING BRUSH is merely an
informational slogan that would not be perceived as a
trademark. We need look no further than applicant's own
uses of the designation to reach this result. The
designation appears on labels in subordinate fashion
underneath the mark RUG DOCTOR. In an informational
brochure about applicant's products, applicant states that
"[w]hat makes these machines special is the innovative
vibrating brush that loosens dirt in the carpet so the
powerful vacuum can take it away." (emphasis in original)
Additional uses include "The Carpet Care Machine With The
Original Vibrating Brush", "Rug Doctor features the original
Vibrating Brush...", and "Introducing the New EZ-1--One
Piece Unit with the Vibrating Brush!" Applicant's uses
convince us that the designation WITH THE VIBRATING BRUSH is
nothing more than an informational slogan which gives
consumers an immediate idea about a significant feature of
applicant's carpet cleaning machines. As such, we believe
that consumers are not likely to view applicant's slogan as
a trademark. In re Melville Corp., 228 USPQ 970 (TTAB
1986); In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992); and In
re Superba Cravats, Inc., 149 USPQ 852 (TTAB 1966).
Ser No. 74/457,278
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Even assuming that applicant's slogan does function as
a mark, it is so nondistinct and purely informational in
nature that the evidence of record of acquired
distinctiveness is insufficient to demonstrate that the
slogan distinguishes applicant's goods from those of others.
Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988); and In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987). See also: Restatement (Third) of
Unfair Competition (1993), Section 13, comment e ["The
sufficiency of the evidence offered to prove secondary
meaning should be evaluated in light of the nature of the
designation. Highly descriptive terms, for example, are
less likely to be perceived as trademarks and more likely to
be useful to competing sellers than are less descriptive
terms. More substantial evidence of secondary meaning thus
will ordinarily be required to establish their
distinctiveness."].
In finding that the evidence of acquired
distinctiveness is insufficient for registration, we
recognize that applicant has enjoyed success with its
products. The sales figures, however, do not demonstrate
that the slogan has acquired distinctiveness. Similarly,
applicant's pertinent advertising expenditures are merely
indicative of it efforts to sell its goods, but are not
determinative of whether the efforts have resulted in
recognition of WITH THE VIBRATING BRUSH as a trademark.
Ser No. 74/457,278
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Simply put, the record does not include any direct evidence
that the purchasing public has come to recognize applicant's
slogan as a trademark identifying applicant's goods.
Finally, applicant attaches significance to the
adoption by an alleged competitor of a mark, which includes
the phrase "WITH A VIBRATING BRUSH", for the rental of
carpet cleaning machines. Applicant contends that this
shows an "intentional copying" which is probative in
establishing its claim of acquired distinctiveness.
Applicant also contends that the publication in the Official
Gazette of the competitor's mark shows that the Office
considers the phrase to be capable of registration.
With respect to applicant's arguments, we would point
out that the phrase "WITH A VIBRATING BRUSH" in the
published mark was disclaimed. Thus, applicant's reliance
on this evidence is misplaced. Further, each case must be
decided on its own set of facts. In sum, this evidence has
little probative value to the present appeal.
Both applicant's and the Examining Attorney's briefs
have made and debated, and we have considered, arguments
other than those we have discussed above, the majority of
which we find irrelevant and all of which we find
unnecessary to comment on.
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Decision: The refusal to register is affirmed.
J. E. Rice
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board
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