Southern Soils Turf Solutions, LLC

Trademark Trial and Appeal Board

Feb 1, 2022

88661029 (T.T.A.B. Feb. 1, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: February 1, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Southern Soils Turf Solutions, LLC _____ Serial No. 88661029 _____ Jennifer A. Puplava of Mika Meyers PLC, for Southern Soils Turf Solutions, LLC. Ronald McMorrow, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Taylor, Bergsman and Larkin, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Southern Soils Turf Solutions, LLC (“Applicant”) seeks registration on the Principal Register of the term AIRSLIT (in standard characters) for the following goods and services, as amended: power-operated applicators for distributing non-liquid, granular pesticides, herbicides, fertilizers and other granular material, namely, mechanical spreaders, in International Class 7; and horticultural processes and turf or lawn care services, namely, providing preparation, improvement, and development of turfgrass and/or soil for providing an environment that encourages improved growth attributes Serial No. 88661029 - 2 - and pest control, and in particular, application of non- liquid, granular pesticides, herbicides, and/or fertilizers for others in International Class 44.1 The Trademark Examining Attorney refused registration of Applicant’s proposed mark under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the grounds that it is merely descriptive of the identified goods and services, or alternatively, if deemed not to be merely descriptive, it is deceptively misdescriptive of the identified goods and services. When the refusals were made final, Applicant appealed and requested reconsideration, which was denied by the Examining Attorney. The appeal was resumed and is fully briefed. For the reasons discussed below, we affirm the mere descriptiveness refusal.2 I. Is AIRSLIT Merely Descriptive? A. Applicable Law The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the 1 Application Serial No. 88661029 was filed on October 19, 2019, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce in connection with the identified goods and services under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to the docket and electronic file database for the involved application. All citations to the TSDR database are to the downloadable .pdf version of the documents. Where applicable, complete URLs can be found at the TSDR cite. Serial No. 88661029 - 3 - U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting Est. of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538, 543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark.”)). The determination of whether a mark is merely descriptive must be made in relation to the goods and services for which registration is sought. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). A mark comprising more than one element must be considered as a whole and should not be dissected; however, we may consider the significance of each element separately in the course of evaluating the mark as a whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing the Board’s denial of cancellation for for medical devices as not merely descriptive, but noting that “[t]he Board to be sure, can ascertain the meaning and weight of each of the components that makes up the mark”). These principles apply to compound words formed by combining two words. Serial No. 88661029 - 4 - See, e.g., In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING found to be merely descriptive of various real estate services). Where a mark consists of multiple words, the mere combination of descriptive words does not necessarily create a non-descriptive word or phrase. In re Omniome, Inc., 2020 USPQ2d 3222, *4 (TTAB 2020) (citing In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). “A mark comprising a combination of merely descriptive components is registrable only if the combination of terms creates a unitary mark with a non- descriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services.” Id.; see also In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983). If, however, when the mark is considered as a whole, the merely descriptive components retain their merely descriptive significance in relation to the goods and services, then the resulting combination is also merely descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1371. “Evidence of the public’s understanding of [a] term . . . may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers[,] and other publications.” In re Fallon, 2020 USPQ2d 11249, at *7 (TTAB 2020) (quoting Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)). “These sources may include [w]ebsites, publications and use in labels, packages, or in advertising materials directed to the goods [or services].” Id., at *7-8 (quoting In re N.C. Lottery, Serial No. 88661029 - 5 - 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (internal quotation omitted)). “Evidence that a term is merely descriptive similarly may come from an applicant’s own usage other than that found on its labels, packaging or advertising materials.” Omniome, 2020 USPQ2d 3222, at *4. B. Discussion Applicant maintains that its proposed AIRSLIT mark is, at most, suggestive of the identified goods and services, specifically arguing that “the importance of the AIRSLIT mark ‘“would not be grasped without some measure of imagination and ‘mental pause.”’ Applicant’s brief at p. 10 (quoting In re Shutts, supra.).3 Applicant also questions some of the evidence relied upon by the Examining Attorney, arguing that it “includes examples of goods and services that are not applicable to the context in which Applicant intends to use the AIRSLIT mark.” Applicant’s brief, pp. 6-8.4 The Examining Attorney maintains that the applied-for mark is merely descriptive of the identified goods and services, being “comprised of two descriptive terms combined to create a term that identifies a feature of the goods and services. Applicant’s goods and services use AIR to create SLITS in turfgrass for application of non-liquid, granular pesticides, herbicides, fertilizers and other granular material.”5 The Examining Attorney supported his position with the following definitions: AIR is defined as: 3 7 TTABVUE 16. 4 7 TTABVUE 12-14. 5 10 TTABVUE 4 (Examining Attorney’s brief). Serial No. 88661029 - 6 - “[T]he mixture of invisible odorless tasteless gases… that surround the earth”6; and “compressed air.”7 SLIT is defined as: “a long narrow cut or opening”8; and “a long narrow space in something.”9 Applying the appropriate standard - whether someone who knows what the identified goods and services are will understand the term AIRSLIT to describe features of them - we find Applicant’s applied-for mark to be merely descriptive. See DuoProSS, 103 USPQ2d at 1757; In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). The above definitions of each word show that consumers would understand AIRSLIT, as a whole, to immediately convey that Applicant’s goods and services feature mechanical spreaders for granular application and horticultural processes and turf or lawn care services that introduce granular materials by means of compressed-air and provide application of non-liquid, granular pesticides, herbicides, and/or fertilizers for others through compressed-air directed to openings in the turf or lawn.10 6 January 30, 2020 Office Action, TSDR 6 (MERRIAM-WEBSTER online dictionary). 7 Id. at 7. 8 Id. at 8. 9 August 21, 2010 Final Office Action TSDR 5 (MACMILLAN DICTIONARY (online)). 10 In finding that AIRSLIT is merely descriptive, we have not relied on the Examining Attorney’s proffered web page evidence concerning slit seeding machines and the seed slitting process because, as noted by Applicant, as used in the evidence of record, the terms “slit seed,” “slit seeder” and “slitseeding/slit seeding/seed-slitting” appear to be terms of art in the lawn care industry that describe a method of over seeding which includes the penetration of soil by a bladed machine prior to the introduction of grass seeds. Serial No. 88661029 - 7 - The February 16, 2021 declaration of Thomas Seeber, Applicant’s founder, confirms our finding: 2. The AIRSLIT … mark[ has] been put into use in connection with applications for distributing dry, granular pesticides, herbicides, and fertilizers and other granular material, and with the horticultural process and turf/lawn care services related to the application of distributing dry, granular pesticides, herbicides and fertilizers. 3. The application process uses compressed air to deliver granular chemicals such as pesticide, herbicide or fertilizer using a calibrated metering wheel directly to the turf plant.11 We acknowledge Mr. Seeber’s statements that: (1) “[n]either the applicators nor the application process injects air or liquid, but rather, dry, granular chemicals are delivered to the turf plant without disturbing or damaging the soil or the plant. No holes are created in the turf as part of this process”12; and (2) “[t]he mark[ ] AIRSLIT … will not be used in connection with aeration or turf aerification goods or services. No holes or ‘slits’ are created as part of the process or by using the applicator.”13 However, they do not alter our finding because we do not read the above definition of “slit” to require “creat[ion of] holes.” Nor does the identification include such a limitation. Rather, in this case, the word “slit,” as defined above, describes an opening through which the non-liquid, granular pesticides, herbicides, and/or fertilizers will be distributed into turfgrass. 11 Applicant’s Request for Reconsideration, TSDR 11. 12 Id. (Seeber decl. ¶ 4). 13 Applicant’s Response, TSDR 10 (July 30, 2020 Seeber decl. ¶ 7). Serial No. 88661029 - 8 - That the word “slit” also denotes a “cut” is not controlling. “So long as any one of the meanings of a word is descriptive, the word may be merely descriptive.” In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1034 (TTAB 2007); see also In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018) (“That a term may have other meanings in different contexts is not controlling.”); In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (“It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). We reiterate that the definitions of record do not require soil penetration. In assessing descriptiveness, we “‘must consider a mark in its commercial context to determine the public’s perception.’” N.C. Lottery, 123 USPQ2d at 1367. A screen capture from Applicant’s website, submitted in response to the Examining Attorney’s request for information, explains to prospective purchasers of Applicant’s AIRSLIT goods and services that they utilize “a non-broadcast, application process that features evenly spaced, concentrated and directed airflow to gently open access into the turf plant and air-injecting granular chemicals directed at the thatch/soil interface area” and applies “granular chemical precisely to the target zone without broadcasting, via a controlled and directed airflow fixated on the target … .”14 Applicant explains in its brief that “the equipment and services at issue use air, not blades, to deliver non-liquid chemicals intended to prepare, improve, and develop turfgrass and/or soil that encourages growth.” 7 TTABVUE 16 (Applicant’s brief, p. 14 Id. at TSDR 12 (emphasis added). Serial No. 88661029 - 9 - 10). However, the media file submitted by Applicant demonstrating the method of application clearly shows that Applicant’s identified power-operated applicators using compressed air to open access into the turf plant in evenly-spaced, targeted rows for introduction of non-liquid chemicals into the turfgrass, as was explained in above-referenced Seeber declaration. This evidence supports our finding of mere descriptiveness. Omniome, 2020 USPQ2d 3222, at *10. We also do not find, as Applicant argues, that the Examining Attorney “violated the anti-dissection rule by focusing on the isolated definitions of the words AIR and SLIT,” and that “use of the two elements AIR and SLIT as the composite mark AIRSLIT requires the purchaser to ‘“exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates.’” (quoting In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978)). 7 TTABVUE 16 (Applicant’s brief, p. 10). As stated, we may consider the significance of each element separately in the course of evaluating the mark as a whole. DuoProSS, 103 USPQ2d at 1756-57. In this case, we find that when AIRSLIT is viewed as a whole, the two components AIR and SLIT retain their individual descriptive meanings and together convey a meaning that is itself descriptive. That is, the combination of terms is neither unique nor incongruous, and no additional information or multi-step reasoning process is needed for the merely descriptive significance thereof to be readily apparent to prospective consumers of the goods and services. As stated, the term AIRSLIT immediately informs the consumer of a feature of Applicant’s goods and services. Serial No. 88661029 - 10 - We are unpersuaded by the cases relied upon by Applicant in support of its argument that the combined term AIRSLIT is merely suggestive, because the combination of terms in the marks at issue in those cases created either a new term with a separate meaning or an incongruous term.15 Moreover, we are not bound by decisions made in issuing other registrations; each case must stand on its own merits. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). We also find unpersuasive Applicant’s arguments regarding the sophistication of its prospective customers and their purchasing care, as well as its arguments relating to the costs of Applicant’s products and services as a mitigating factor in the mere descriptiveness analysis.16 Notably, in making these arguments, Applicant relies on cases and other authorities (e.g., In re Tower Tech, Inc., 64 U.S.P.Q.2d 1314 (TTAB 2002) (SMARTTOWER for computer controlled cooling towers describes a highly automated device to someone who is knowledgeable about what the goods and services are like; Electronic Data Sys. Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1465 (TTAB 1992) (finding sophistication and discrimination of purchasers supports conclusion that confusion is not likely) that concern the issue of likelihood of confusion and not mere descriptiveness. Here, it is more likely that highly knowledgeable 15 Eg., In re Shop-Vac Corp., 219 USPQ 470 (TTAB 1983) (finding that WET/DRY BROOM, in relation to electric vacuum cleaners, was nondescriptive and merely suggestive because the electric vacuum cleaners neither looked like nor operated like a “broom”); Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 USPQ 557 (TTAB 1975), aff’d, 189 USPQ 348 (CCPA 1976) (finding that the mark BIASTEEL in connection with steel belted bias tires was suggestive rather than describe the character of the tires). 16 7 TTABVUE 14-16 (Applicant’s brief, pp. 8-10). Serial No. 88661029 - 11 - consumers would be more, not less, likely to comprehend the descriptive meaning of the wording AIRSLIT in relation to Applicant’s goods and services. Last, Applicant relies 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.17 While we agree with the general principle, in the present case, we have no such doubt. II. Conclusion For the reasons discussed, we find that the designation AIRSLIT, as a whole, immediately describes a feature of the identified goods and services, namely, that they feature or use a non-broadcast, air-injection application process that features evenly spaced, concentrated and directed airflow to gently open access into the turf plant. Because we have found Applicant’s applied-for mark to be merely descriptive of the identified services, we do not reach the alternate basis of refusal, i.e., that the term AIRSLIT is deceptively misdescriptive of the identified goods and services. Decision: The refusal to register AIRSLIT as merely descriptive under Section 2(e)(1) is affirmed as to both Classes 7 and 44. Bergsman, Administrative Trademark Judge, dissenting: I respectfully dissent from the majority’s decision finding AIRSLIT merely descriptive for mechanical spreaders for distributing non-liquid, granular pesticides, herbicides, fertilizers and other granular material and for services relating to 17 See In re Merrill Lynch, Pierce, Fenner, & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987) (on issue of mere descriptiveness, reasonable doubts are resolved in favor of the applicant). Serial No. 88661029 - 12 - distributing non-liquid, granular pesticides, herbicides, fertilizers and other granular material. The mark AIRSLIT consists of two common words “Air” and “Slit” which when Applicant combined them formed a coined or fanciful term “Airslit.” AIRSLIT suggests, not describes, a feature, quality, characteristic, or function of the mechanical spreaders and process of distributing non-liquid, granular pesticides, herbicides, fertilizers and other granular material. A consumer has to think about what AIRSLIT means or exercise a multi-step reasoning process to make the nexus between AIRSLIT and Applicant’s goods and services featuring mechanical spreaders for granular application and horticultural processes and turf or lawn care services that introduce granular materials by means of compressed-air and provide application of non-liquid, granular pesticides, herbicides, and/or fertilizers for others through compressed-air directed to openings in the turf or lawn. AIRSLIT does not directly convey these features without a consumer’s cogitation. I would reverse the Section 2(e)(1) refusal to register on the ground that AIRSLIT is merely descriptive or, in the alternative, that AIRSLIT is deceptively misdescriptive.