Thor Tech, Inc.

Trademark Trial and Appeal Board

May 19, 2004

No. 76251568 (T.T.A.B. May. 19, 2004)

Mailed:
May 19, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thor Tech, Inc.
________
Serial No. 76251568
_______
B. Joseph Schaeff of Dinsmore & Shohl LLP for Thor Tech,
Inc.
Won T. Oh, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Thor Tech, Inc. seeks registration on the Principal
Register of the mark TAXIVAN for goods identified in the
application as filed as follows:
“vehicles modified for use by able-bodied,
physically disabled or otherwise
transportationally disadvantaged people,
including a wheelchair lift and accessories
for use therewith, and retrofit kits to
modify vehicles to include a wheelchair lift
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76251568
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and accessories for use therewith,” in
International Class 12.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that this
term is merely descriptive of applicant’s goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), and based upon the refusal that the amended
identification of goods is unacceptable as indefinite.
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
We turn first to the refusal based upon the latest
amendment to the identification of goods proffered by
applicant but rejected as indefinite by the Trademark
Examining Attorney.
As noted earlier, the original identification of goods,
as filed, read as follows:
“vehicles modified for use by able-bodied,
physically disabled or otherwise
transportationally disadvantaged people,
including a wheelchair lift and accessories
for use therewith, and retrofit kits to
modify vehicles to include a wheelchair lift
and accessories for use therewith.”
1 Application Serial No. 76251568 was filed on May 4, 2001
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
Serial No. 76251568
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The Trademark Examining Attorney suggested the
following identification, if accurate:
“motor vehicles, namely vans modified for
use by able-bodied, physically disabled or
otherwise transportationally disadvantaged
people with a wheelchair lift; motor vehicle
retrofit kits primarily composed of
[indicate primary components of kits, e.g.,
wheelchair lifts, handrails] for modifying
motor vehicles to attach a wheelchair lift.”
In its request for reconsideration, applicant proposed
the following amendment:
“motor vehicles modified for use by able-
bodied, physically disabled or otherwise
transportationally disadvantaged people,
namely motor vehicles with wheelchair lifts,
ramps and/or lowered floors, and motor
vehicle retrofit conversion packages to
modify motor vehicles with wheelchair lifts”
In denying applicant’s request for reconsideration,
the Trademark Examining Attorney explained his continuing
refusal to register based upon the unacceptability of the
latest amendment as follows:
[A]pplicant’s amended identification of
goods is also unacceptable because applicant
has not specified the common commercial name
of the motor vehicle. Applicant is advised
that the term “motor vehicle” in its
broadest sense may include an automobile, a
motorcycle, and airplane and a motorized
scooter. The wording “motor vehicle” is
unacceptable as indefinite…”
Then in its appeal brief, applicant argued that it had
amended its identification of goods to the following:
Serial No. 76251568
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“motor vehicles modified for use by able-
bodied, physically disabled or otherwise
transportationally disadvantaged people,
namely passenger vehicles with wheelchair
lifts, ramps and/or lowered floors, and
motor vehicle retrofit conversion packages
to modify passenger vehicles with wheelchair
lifts”
When the Trademark Examining Attorney objected to this
statement as inaccurate, applicant submitted with its reply
brief the copy of an amendment apparently submitted at the
same time as it submitted its appeal brief, changing the
words “motor vehicles” to “passenger vehicles” in two
places within the identification of goods. The Trademark
Examining Attorney had no opportunity to respond to this
amendment (which original amendment was never associated
with the case file). However, in his brief, he did note
that the continuing requirement for an acceptable
identification of goods was based on the earlier wording
“motor vehicles.”
We find, based upon a close review of this entire
exchange, that the last identification of goods proffered
by applicant should be sufficiently definite to be approved
as acceptable.
As to the requirement for applicant to specify the
type of vehicle (“namely vans”), we find that the balance
of the latest identification of goods focuses on vehicles
Serial No. 76251568
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having wheelchair lifts, ramps and/or lowered floors. This
additional clarification logically suggests a large land
vehicle such as a van or a bus. Motorcycles, motor
scooters and most sedans, (e.g., the Trademark Examining
Attorney’s examples of what the designation "motor
vehicles" might still include) would seem to be eliminated,
by definition, from vehicles equipped with wheelchair
lifts, ramps and/or lowered floors.
Second, as to the difference between “motor vehicles”
and “passenger vehicles” (in the middle and towards the end
of the identification of goods), it seems, again, impliedly
true, that any “motor vehicle” modified to be accessible to
handicapped people would be a “passenger vehicle.”
And finally, while the original identification of
goods language describing the conversion packages may well
have contained some ambiguous formulations (“… retrofit
kits to modify vehicles to include a wheelchair lift and
accessories for use therewith …”), the latest wording makes
it clear that these are essentially conversion kits to
install “wheelchair lifts” and requires no further
clarification.
Accordingly, we find the language proffered by
applicant at the time of its appeal brief to be acceptable:
Serial No. 76251568
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“motor vehicles modified for use by able-
bodied, physically disabled or otherwise
transportationally disadvantaged people,
namely passenger vehicles with wheelchair
lifts, ramps and/or lowered floors, and
motor vehicle retrofit conversion packages
to modify passenger vehicles with wheelchair
lifts.”
Hence, we reverse this requirement and the attendant
refusal to register until such requirement is met.
We turn then to the issue of descriptiveness. The
Trademark Examining Attorney argues that the word “taxi”
describes the intended use for applicant’s motor vehicles
and that the word “van” identifies the nature of the
vehicle. On the other hand, applicant argues that when one
applies our legal precedent to the evidence of record, this
term is, at worst, suggestive, not merely descriptive.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, if it immediately conveys information
of significant ingredients, qualities, characteristics,
features, functions, purposes or uses of the goods or
services with which it is used or is intended to be used.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
Serial No. 76251568
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or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the mark in relation to the
goods for which registration is sought, the context in
which the mark is used or is intended to be used, and the
possible significance that the mark is likely to have on
the average purchaser encountering the goods in the
marketplace. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); and In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995).
Applicant argues throughout the prosecution of this
application that the results of none of the four tests that
shed light on the line between suggestiveness and
descriptiveness support the conclusions drawn by the
Trademark Examining Attorney.2 Our principal reviewing
Court (and its predecessor) have adopted similar tests for
2 Applicant cites and strongly relies on the case of
Zatarians, Inc. v. Oak Grove Smokehouse, Inc. et al., 217 USPQ
988 (5th Cir. 1983) [FISH-FRI and CHICK-FRI found to be merely
descriptive for coatings or batter mixes used to fry foods].
Serial No. 76251568
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determining the distinction between descriptiveness and
suggestiveness.3 Hence, we have followed the structure of
applicant’s proposed analysis in looking at whether the
evidence of record supports suggestiveness or mere
descriptiveness when applied to the approaches of each of
these four tests.
(i) The dictionary definition test
Applicant points out that the combined term, TAXIVAN,
is not defined in any major dictionaries. In the absence
of such entries, applicant argues, moreover, that the
Trademark Examining Attorney has failed to show that the
combined term has a well understood and recognized meaning.
However, the Trademark Examining Attorney did submit
for the record several dictionary definitions, as follows:
Taxi – NOUN
A taxicab
- INTRANSITIVE VERB
1. To be transported by taxi
- TRANSITIVE VERB
1. To transport by or as if by taxi:
taxied the children to dance class
Taxicab – NOUN
An automobile that carries passengers for a
fare, usually calculated by a taximeter
3 See Abcor, supra; Sperry Rand Corp. v. Sunbeam Corp., 442
F.2d 979, 170 USPQ 37 (CCPA 1971); DeWalt, Inc. v. Magna Power
Tool Corp., 289 F.2d 656, 129 USPQ 275 (CCPA 1961); See also J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
§§11:66 – 11:69 (4th ed. June 2001).
Serial No. 76251568
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Van – NOUN
1. a. An enclosed boxlike motor vehicle
having rear or side doors and side panels
especially for transporting people….
- TRANSITIVE VERB
to transport by van 4
Applicant argues that taking the literal meanings of
these words as defined by the Trademark Examining
Attorney’s own dictionary entries, one does not derive the
Trademark Examining Attorney’s suggested definition for the
combined term, namely “vans that may be used to taxi
people.” Rather, applicant argues that consumers would
need to use a degree of thought and imagination to arrive
at this interpretation of the combined term. Applicant
examines the word “taxi” as a verb and as a noun, and then
combines it with the word “van,” as a noun and as a verb,
to illustrate the allegedly illogical results flowing from
the literal definitions:
[The Trademark Examining Attorney’s
suggested] meaning does not flow logically
from the definitions supplied. If the term
TAXI in applicant’s mark is viewed as a
noun, then the term VAN must logically be
viewed as a verb. The two-word phrase would
therefore be rewritten as “a taxicab
transports by van” a phrase whose meaning is
murky at best. If, however, TAXI is treated
as the verb and VAN as a noun, as suggested
by the Examining Attorney’s interpretation,
we must decide whether TAXI is used in an
4 The American Heritage® Dictionary of the English Language
(Third Edition 1992).
Serial No. 76251568
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intransitive or transitive sense. As an
intransitive verb, the noun VAN would serve
in the place of the subject, notwithstanding
its unusual placement after the verb. The
phrase would thus be literally interpreted
as “an enclosed motor vehicle being
transported by a taxicab” …. Should TAXI be
viewed as a transitive verb, VAN is most
logically the object of the verb in light of
its placement after the term TAXI. Hence, a
literal reading gives us the meaning “to
transport an enclosed vehicle by taxicab.”
(Applicant’s request for reconsideration, p. 7)
We do not find applicant’s analysis to be persuasive.
The dictionary entry for the word “taxi” placed into the
record by the Trademark Examining Attorney traces the
etymology of the two components of the term “taxicab.” The
roots of the word “taxi” refer to the measurement of a fare
(e.g., the “taximeter”). The roots of the word “cab”
suggest a form of public conveyance. As shown by the
dictionary entry, in our modern, English-language usage,
the noun form of the word “taxi” has become totally
synonymous with the longer term, “taxicab.” When the word
“taxicab,” is shortened to “taxi” in our everyday parlance,
it retains the concept of a motor vehicle that carries
passengers for a fare.
As a next step, we examine the body style of the
involved motor vehicle. For the majority of people in the
United States, the term taxicab conjures up images of a
Serial No. 76251568
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four-door sedan. However, when the body style of a motor
vehicle that carries people for a fare is that of a van or
small bus, it seems entirely logical that this vehicle
would be described as a “taxicab van.” To the extent the
words “cab” and “van” appear to be somewhat redundant in
this context, one could anticipate that “taxicab van” would
be shortened to just “taxi van” or “taxivan.” Contrary to
applicant’s convoluted and rigid analysis of possible parts
of speech of each of these components, in our declension of
this combined term, the word “taxi” is still a noun, but
used in this context as an adjective, describing the word
“van.”
(ii) The imagination test
Applicant argues that:
… as a result of the odd literal meanings of
the combination of the terms TAXIVAN and the
incongruity that results from the redundancy
inherent in the mark, consumers are forced
to rely on thought and imagination to derive
a clear meaning from the text of the mark…
(Applicant’s request for reconsideration of July 2003)
However, we do not find the instant case to be analogous to
the facts in two cases cited by applicant, Airco, Inc. v.
Air Products and Chemicals, Inc., 196 USPQ 832 (TTAB 1977)
[AIR-CARE not merely descriptive of applicant’s program of
Serial No. 76251568
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scheduled maintenance of medical anesthesia and inhalation
therapy equipment and hospital piping systems for medical
gases] or In re John H. Breck, Inc., 150 USPQ 397 (TTAB
1966) [TINT TONE not merely descriptive of applicant’s hair
coloring preparation because placing the words “Tint” and
“Tone” together is incongruous or redundant].
To the extent that the mark AIR-CARE creates an odd
literal meaning (“care of the air”) in the context of
medical inhalation services, or even creates a play on the
frequently used expression, “hair care,” it certainly takes
more cogitation, mental processing or gathering of further
information in order for prospective customers of Air
Products’ services to readily perceive the descriptive
significance of the term than is the case herein with the
term TAXIVAN. Moreover, we find that the words “Taxi” and
“Van,” in the context of modified passenger vans, do not
have the overlapping significance of the words “Tint” and
“Tone” as applied to hair coloring preparations.
As indicated above in our discussion of the dictionary
definitions of the individual components of TAXIVAN, when
one views the common meaning of the word “taxi” as a noun
used as an adjective modifying the word “van,” it takes no
Serial No. 76251568
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amount of mental processing to conclude that this is a
boxlike vehicle that carries passengers for a fare.
(iii) Competitors’ need test
In order to determine correctly the need of
competitors to use the term, “taxi van,” it is incumbent
upon us to define clearly the field of competition.
Judging by the identification of goods, we assume that
applicant intends to sell passenger vehicles (e.g.,
passenger vans, small transit minibuses, shuttle buses, and
the like) that have been modified to provide wheelchair
accessible transit service to the disabled. The market for
these paratransit vehicles would include public entities
providing fixed commuter routes or demand responsive
services, privately-operated shuttle systems and other
transportation services (e.g., hotels, airport shuttles,
etc.); and private entities primarily engaged in the
business of transporting people (e.g., taxicab companies).
However, irrespective of the form of ownership of a
particular fleet of vehicles, when one’s transportation is
provided by a demand responsive service, it fits the
intransitive verb form of the word “taxi” to conclude one
is being “taxied,” even if the service provider is not a
traditional taxicab company. Granted, the case for
Serial No. 76251568
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competitive need is certainly greatest whenever applicant’s
modified vans are sold to, and operated by, private taxi
fleets. Such vehicles are clearly included in the
identification of goods, and they will certainly be
described as taxicab vans. Especially for competitors in
this niche of the accessible van market, we find there is a
competitive need to be able to use the term “taxi van” or
“taxivan.”
(iv) Competitors’ use test
The Trademark Examining Attorney introduced into the
record excerpted stories retrieved from the LEXIS/NEXIS
database showing the term “Taxi van,” as follows:
HEADLINE: “Cab for kids frees Mom and Dad…”
At all times, Childrens Taxi vans carry
two employees. One strictly navigates
traffic while the driver’s assistant
walks each child to and from the van,
opens the doors, provides security and
talks with the children.…
The Tennessean, May 10, 2001.
HEADLINE: “Man faces 20 to 40 years for
slashing cabby…”
On the night of March 6, 2000, Lavender
picked up Brown in her Friendly Taxi
van on West Lemon Street, supposedly to
take Brown to his job in Greenfield
Industrial Park.…
Intelligencer Journal (Lancaster, PA), April
18, 2001.
Serial No. 76251568
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However, applicant notes that in both of these cases,
the word “Taxi” is part of the trade name of a taxicab
company, and that although the words “Taxi” and “van”
appear together, they do not provide any common
understanding of the term “taxi van” (or “taxivan”).
Moreover, we agree with applicant that the majority of
the remaining stories in the record show usage of the term
“taxi van” in other parts of the world, such as in Israel,
Europe, Africa and the Caribbean. Although reported, for
the most part, in newspapers in the United States, we find
that these examples are not probative of a finding of mere
descriptiveness of the term “taxi van” (or “taxivan”) in
the United States.
In its attempt to disprove mere descriptiveness,
applicant refers to a recent attempt by Air Surrey Natural
Gas Vehicles, Inc., to register the term TAXI VAN as a
trademark in connection with “passenger vehicles, trucks,
vans and campers.” While this third-party, intent-to-use
application was examined by another Trademark Examining
Attorney and was published for opposition, we note that this
application was subsequently withdrawn from publication and
a non-final action was issued. Inasmuch as that application
was later abandoned based upon Air Surrey’s failure to
Serial No. 76251568
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respond to the Office action, it has no probative value in
support of applicant’s position on descriptiveness herein.
As to actual usage by competitors of this term in a
merely descriptive sense, we agree with applicant that the
record contains not a single instance of such usage. On the
other hand, the fact that applicant may be one of the first
users of a term does not justify registration if the term
is merely descriptive. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983). Hence, in
light of our findings under the dictionary definition test,
the imagination test and the competitive need test, supra,
the fact that none of applicant’s competitors has used this
exact formulation does not demonstrate that the designation
is not merely descriptive.
Decision: The identification of goods presented by
applicant with its appeal brief is accepted and therefore
the refusal to register based upon the requirement for an
amended identification of goods is hereby reversed. On the
other hand, the refusal to register based upon Section
2(e)(1) of the Trademark Act is hereby affirmed.