Verde Power Supply, Inc.

Trademark Trial and Appeal Board

Sep 12, 2012

No. 77907011 (T.T.A.B. Sep. 12, 2012)

Mailed:
September 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Verde Power Supply, Inc.
________
Serial No. 77907011
_______
Evan Anderson of Patel & Alumit, P.C. for Verde Power
Supply, Inc.

Kristina Morris, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______
Before Seeherman, Cataldo, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
On January 7, 2010, Verde Power Supply, Inc. filed an
application to register the mark VERDE (in standard
character format) for “electrical and electronic devices
for power supply technology, namely, power supply units,
uninterruptible power supply units, current-voltage
converters, switch mode power supply units, DC converters,
and electronic power supply circuitry” in International
Class 9, based on applicant’s asserted bona fide intent to
use the mark in commerce. The record includes a statement
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77907011
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that “the English translation of VERDE in the mark is
GREEN.”
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
used in connection with applicant’s goods, is merely
descriptive thereof. The examining attorney also made
final the requirement that applicant provide additional
information about the goods, pursuant to Trademark Rule
2.61(b), 37 CFR 2.61(b).
When the refusal and requirement were made final,
applicant appealed. The appeal has been fully briefed.
We affirm the refusals.
I. Discussion
A. Trademark Rule 2.61(b) requirement
In the first Office action, the examining attorney
requested additional information regarding the goods, but
applicant declined to provide any additional information on
the grounds that to do so would reveal its trade secrets.
The request stated:
[A]pplicant must submit additional information
about the goods. The requested product
information should include fact sheets,
instruction manuals, and/or advertisements. If
these materials are unavailable, applicant should
submit similar documentation for goods of the
same type, explaining how its own product will
Serial No. 77907011
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differ. If the goods feature new technology and
no competing goods are available, applicant must
provide a detailed description of the goods. The
submitted factual information must make clear how
the goods operate, their salient features, and
their prospective customers and channels of
trade. (internal citations omitted).

Applicant’s response, contained in the “miscellaneous
statement” section of the TEAS form to which applicant’s
substantive response was attached,1 stated:
This product is new technology that will function
unlike any current existing product on the
market. It is a chane [sic] in the way power is
transmitted but due to the trade secret nature of
the product the Applicant is unable disclose
[sic] specifics about the product beyond the
goods and services description.

In the subsequent, and final Office action, the
examining attorney, noting that applicant said it could not
provide information regarding the products due to trade
secret concerns, requested instead that applicant answer
the following two questions:
(1) Are the goods energy efficient?
(2) Are the goods environmentally friendly?
Applicant did not acknowledge the questions or provide any
information regarding the goods. Nor did applicant address
the requirement, or its failure to comply with it, in

1 Although the entire TEAS form is part of the record, this
statement, in direct response to the examining attorney’s
information requirement, should have been included in the section
labeled “Argument(s)” rather than the “Miscellaneous Statement”
section.

Serial No. 77907011
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either its appeal brief or its reply brief, even though the
examining attorney discussed the failure to comply with the
requirement in her brief.
Under Trademark Rule 2.61(b), 37 CFR 2.61(b), as it
read when the requirement was made, the examining attorney
“may require the applicant to furnish such information and
exhibits as may be reasonably necessary to the proper
examination of the application.”2 This Board has previously
affirmed refusals of registration on the basis of an
applicant’s noncompliance with a requirement under Rule
2.61(b). See, e.g., In Re Cheezwhse.com, Inc., 85 USPQ2d
1917, 1919 (TTAB 2008) (requirement for information
affirmed where applicant failed to acknowledge repeated
requests and reminders to submit information as to
geographic origin of applicant’s goods); In re Planalytics
Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004) (requirement for
information affirmed where applicant’s only response was to
refer the examining attorney to its website); In re DTI
Partnership LLP, 67 USPQ2d 1699, 1700 (TTAB 2003)
(requirement for information affirmed where applicant “did
not specifically address or acknowledge” the requirement

2 The text of subsection (b) was amended effective June 21, 2012,
to read as follows: “(b) The Office may require the applicant to
furnish such information, exhibits, affidavits or declarations,
and such additional specimens as may be reasonably necessary to
the proper examination of the application.”
Serial No. 77907011
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for information); and In re SPX Corp., 63 USPQ2d 1592, 1597
(TTAB 2002) (requirement for information affirmed where
applicant “totally ignored” request for information). See
also, TMEP § 814 (8th ed. 2011).
As the Board explained in In re SPX:
In response to a request for information such as
the Examining Attorney made in this case, an
applicant has several options. It may comply
with the request by submitting the required
advertising or promotional material. Or it may
explain that it has no such material, but may
submit material of its competitors for similar
goods or provide information regarding the goods
on which it uses or intends to use the mark. Or
it may even dispute the legitimacy of the
request, for example, if the goods identified in
the application are such ordinary consumer items
that a request for information concerning them
would be considered unnecessary and burdensome.

In re SPX, 63 USPQ2d at 1597.

In this case, as noted, applicant initially responded
to the request for information by stating that this would
require it to reveal trade secrets, and the examining
attorney accordingly revised her request to merely require
answers to the questions of whether applicant’s goods were
energy efficient or environmentally friendly. Applicant
did not contest the revised request on the ground that it
would require applicant to divulge trade secrets, or that
it was not legitimate; applicant did not make any response
to this request whatsoever. As we stated in SPX, an
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applicant cannot ignore a proper request made pursuant to
Trademark Rule 2.61. Id.
We find that it was proper for the examining attorney
to ask for information regarding whether applicant’s goods
are environmentally friendly or energy efficient, facts
that pertain to the descriptiveness refusal. The examining
attorney acknowledged applicant’s concern about having to
divulge trade secrets, and reduced the information
requirement under Rule 2.61(b) in the final Office action;
the two specific questions do not deal with any of the
details of applicant’s products or the specific way they
operate, so the answers thereto cannot be considered trade
secrets. Moreover, the responses to the questions directly
pertained to the examining attorney’s analysis of whether
the descriptiveness refusal was appropriate. Compare, DTI
Partnership, 67 USPQ2d at 1702, where the examining
attorney asked for advertising and promotional materials
“to permit proper consideration of the application.” The
Board affirmed the refusal of registration in that case
solely on the basis of applicant’s failure to comply with
the requirement for information, explaining that its
ability “to fully and accurately assess the substantive
merits of the mere descriptiveness issue has been hindered
by applicant’s failure to submit the information and
Serial No. 77907011
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materials which were properly requested by the Trademark
Examining Attorney under Trademark Rule 2.61(b).” Because
of this, the Board in DTI declined to reach the merits of
the mere descriptiveness issue. As DTI illustrates, non-
compliance with a legitimate requirement for information or
materials can, in and of itself, be a valid basis for
denying registration.
Accordingly, we affirm the refusal to register based
on applicant’s failure to comply with Trademark Rule
2.61(b).
B. Section 2(e)(1) Refusal
Because applicant failed to provide information in
response to, or even acknowledge, the examining attorney’s
questions as to whether its goods are environmentally
friendly or energy efficient, in considering the refusal
under Section 2(e)(1), we make the presumption that the
answers to the examining attorneys questions would be
unfavorable to applicant, and that applicant’s goods are
both environmentally friendly and energy efficient. In Re
Cheezwhse.com, 85 USPQ2d at 1919 (appropriate to presume
inference unfavorable to applicant based on applicant’s
failure to provide required information).
A mark is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
Serial No. 77907011
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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 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
Serial No. 77907011
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will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Pursuant to the doctrine of foreign equivalents, when
it is likely that the ordinary American purchaser would
“stop and translate” a mark consisting of a foreign word
taken from a common, modern language into its English
equivalent, the English translation is used to determine
whether the mark is merely descriptive of the involved
goods or services; if the word has a merely descriptive
meaning in the foreign language, the mark will be found to
be merely descriptive when used as a mark in the United
States. In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB
1976). See also, In re Accelearte s.a.l., 101 USPQ2d 2047
(TTAB 2012) (COLOMBIANO means “Colombian” in English and is
merely descriptive for services described as providing food
and drink); In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB
2008) (AYUMI and its Japanese-character equivalent held
merely descriptive for footwear where the evidence
indicated that the primary meaning of applicant's mark is
“walking”); In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB
1985) (SAPORITO, an Italian word meaning “tasty,” held
merely descriptive when used in connection with dry
sausage). “The ‘ordinary American purchaser’ in this
context refers to the ordinary American purchaser who is
Serial No. 77907011
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knowledgeable in the foreign language.” In re Thomas, 79
USPQ2d 1021, 1024 (TTAB 2006). There is no dispute that
many purchasers of applicant’s goods would be aware of the
meaning of “verde,” since it is a Spanish word and “there
is no question that Spanish is a common, modern language.”
In re Peregrina Limited, 86 USPQ2d 1645, 1648 (TTAB 2008).
The examining attorney submitted a translation of
“verde” taken from www.langtolang.com that translates
“verde” as “green, verdant, color green, greens, bawdy,
crude, foliage, ribald, unripe, youngish, jade, sage,
unripened.”3 Of these various definitions, the examining
attorney focuses on the meaning of “verde” as “green,”
which is the meaning acknowledged by applicant in its
translation statement: “The English translation of VERDE
in the mark is GREEN.” As can be seen, “verde” has other
meanings. The record includes an excerpt from www.merriam-
webster.com that shows there are also multiple meanings for
the English equivalent “green.”4 None of these meanings,
other than “green,” has been shown to have any relevancy to
the identified goods at issue in this case.

3 See excerpt at www.langtolang.com, attached to April 6, 2010
Office action.
4 For example, “green” is defined as, inter alia, “of the color
green,” “covered by green growth or foliage,” “pleasantly
alluring,” “youthful,” “fresh,” “not fully processed or treated,”
and “deficient in training, knowledge, or experience.” See April
6, 2010 Office action.
Serial No. 77907011
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The examining attorney further argues that “the term
‘verde’ would be perceived by consumers of the identified
goods in the same manner that ‘green’ is in English, i.e.,
to identify environmentally friendly products and services
in the electrical supply industry.”5 To support the
argument, the examining attorney relies upon the following
definition of the word “green” in English:
10 a often capitalized : relating to or
being an environmentalist political movement
b : concerned with or supporting
environmentalism c : tending to preserve
environmental quality (as by being
recyclable, biodegradable, or nonpolluting).6
In addition, the examining attorney submitted an
online reference to show that “verde” has the same
idiomatic connotation as “green” does in English. This was
an article in English, published on the website zimbio.com,
which appears to be a website about Carbon Trading. The
website is captioned: “Learn about carbon trading and
share your opinion about the carbon trading market and how
it can be used to reduce pollution.” The article indicates
that it was “Written by ioman01 on Oct-2-07 2:32 am” (we
assume this was the time it was posted) and that it is
taken from the website “temasactuales.com”; copyright “2007
The Temas Blog.” The article describes a Costa Rican

5 Examiner’s Brief, p. 5 (unnumbered).
6 At www.merriam-webster.com/dictionary/green, submitted with the
April 6, 2010 Office action.
Serial No. 77907011
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project designed to convert polluting wood residues into a
profitable energy source.7 The word “verde” is used in the
title of the article: Wood Pellets, “Green” Energy and
Carbon Credits/Pellets de madera, energia “verde” y
creditos de carbon.
Applicant argues that because “verde” has other, non-
descriptive meanings, it is not descriptive in connection
with applicant’s goods. However, it is well settled that
so long as any one of the meanings of a term is descriptive
when considered in connection with the identified goods,
the term may be considered to be merely descriptive. See,
e.g., In re Polo Int'l Inc., 51 USPQ2d 1061, 1062-63 (TTAB
1999) (finding that DOC in DOC-CONTROL would be understood
to refer to the “documents” managed by applicant’s
software, not “doctor” as shown in dictionary definition);
In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)
(CHOPPER is merely descriptive for “axes” despite having
other, non-descriptive, meanings).
As may be seen, the English word “green” is used
idiomatically to describe energy efficient products,
environmentally friendly products, and environmentally
friendly energy creation, such that “green” in English

7 At www.zimbio.com/carbon+trading/articles, attached to Office
action dated April 6, 2010.
Serial No. 77907011
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would be merely descriptive of applicant’s goods, based on
the presumptions we have made about them because of
applicant’s failure to respond to the examining attorney’s
questions. However, the evidence of record fails to show
that the Spanish word “verde” has this same idiomatic
meaning. The single article submitted by the examining
attorney is insufficient, by itself, for us to conclude
that the ordinary American Spanish-speaking purchaser would
view the Spanish word “verde” as having the meaning of
energy efficient or environmentally friendly. As for the
Spanish-English dictionary definitions provided by both
applicant and the examining attorney, none include
“environmentally friendly,” “energy efficient,” or the like
as a definition or translation of “verde.”
Although the dictionaries on which applicant relies
were published in 2006 and 2007, and the examining attorney
accessed the webpage from www.langtolang.com on April 6,
2010, it appears to us that the ecological or environmental
meaning of the word “green” or “verde” has been evolving
over the years and is therefore not necessarily reflected
in all available reference sources. The Board has taken
judicial notice of some additional dictionary definitions.
See Tokutake Industry, 87 USPQ2d at 1700 n.1; In re
Isabella Fiore LLC, 75 USPQ2d 1564, 1566 n.5 (TTAB 2005)
Serial No. 77907011
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(The Board may take judicial notice of standard reference
works and commonly known facts). In particular, we take
judicial notice of the following definition of “verde” from
Webster’s New World Concise Spanish Dictionary, p. 443
(2004)(emphasis supplied):
Verde adj (a) (en general) green, v. botella
bottle green; v. olive olive (green); Fam poner
v. alguien to run sb down (b) (poco maduro)
(fruta) unripe, green; Fam Fig (persona) green,
wet behind the ears; (proyecto plan) in its early
stages (c) (ecologista) Green, green (d) Fig
(obscene) blue, dirty (e) Fam (billete) = 1,000
peseta note

and of the following definition of “ecologista” found in
Collins Spanish Dictionary, p. 342 (2009):
Ecologista [ADJ] conservation (antes de s),
environmental - el partido – the Green party
[SMF] ecologist, environmentalist – los –s the
Greens.

These dictionary definitions establish that “green” and
“verde” are direct idiomatic equivalents. The usage of
“verde” in the article submitted by the examining attorney
corroborates this meaning. Thus, we find that ordinary
American Spanish-speaking purchasers would view “verde” as
the equivalent of “environmentally friendly” or “energy
efficient.” Therefore, VERDE would directly and
immediately convey to the purchasers of electrical and
electronic devices that this equipment is ecologically or
environmentally friendly.
Serial No. 77907011
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Decision: The refusals to register are affirmed.

Seeherman, Administrative Trademark Judge, dissenting:

I must respectfully dissent from the decision of my
colleagues affirming the refusals of registration. First,
with regard to the refusal on the ground of mere
descriptiveness under Section 2(e)(1), the majority
acknowledges that the evidence of record fails to show that
the Spanish word “verde” has the meaning of
“environmentally friendly” or “energy efficient” that the
word “green” has in English. The only evidence purportedly
showing such a meaning is an English language article in
which “verde” appears as part of the title of the article,
“Wood Pellets, ‘Green’ Energy and Carbon Credits/Pellets de
madera, energia ‘verde’ y creditos de carbon.” As the
majority states, this article is an insufficient basis for
concluding that “verde” has the idiomatic meaning that
“green” has in English. Instead, the majority has taken
judicial notice of a definition in a Spanish-English
translation dictionary published in 2004, and relies on
this definition for its finding that Spanish-speaking
purchasers of applicant’s goods would view “verde” as
meaning “energy efficient” or “environmentally friendly.”
Serial No. 77907011
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The majority believes that “the ecological or
environmental meaning of the word ‘green’ or ‘verde’ has
been evolving over the years,” p. 12. Based on the
evidence of record, that may certainly be true of the
English word “green.” However, the question is whether the
meaning of “verde” has evolved to include an environmental
or energy meaning, and in my view a single definition from
a 2004 dictionary is not an adequate basis to draw such a
conclusion. Particularly since definitions of “verde” from
two later dictionaries, published in 2006 and 2007 that
were submitted by applicant, and a definition that was
printed in 2010 from an online dictionary that was
submitted by the examining attorney,8 do not include any
such definition for “verde.”
At the very least, the fact that there is only one
dictionary definition for “verde” that has the
environmental meaning, while three other, subsequently
published dictionaries, do not, shows that there is doubt
on the issue of whether “verde” has the meaning of
“environmentally friendly” or “energy efficient.” And this

8 The online dictionary is identified as “From Language to
Language”; it does not give any other indication as to the source
of its information, such as whether it is based on a print
dictionary. However, since it was submitted by the examining
attorney, it must be assumed that the Office regards the online
site as a probative source, and the translations of “verde” as
accurate.
Serial No. 77907011
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in turn raises doubt as to whether consumers would
immediately understand the mark VERDE to describe a
characteristic of applicant’s identified goods. Therefore,
in accordance with well-established case law, I would
resolve such doubt in favor of applicant, and reverse the
refusal of registration on this ground.
As for the requirement for information made pursuant
to Trademark Rule 2.61(b), I agree with the majority that
the questions the examining attorney asked were legitimate
requests for information, and that applicant neither
responded to these questions nor provided a reason for its
failure to respond. I also acknowledge that in several
decisions, cited by the majority, the Board has affirmed
refusals of registration on the ground of mere
descriptiveness and also affirmed refusals based on the
applicant’s failure to provide information or promotional
literature or other materials. However, because I would
reverse the finding that applicant’s mark is merely
descriptive, I would also reverse the refusal of
registration on the basis that applicant failed to comply
with the examining attorney’s request for information.
I agree with the majority that non-compliance with a
legitimate requirement for information or materials can, in
and of itself, be a valid basis for denying registration.
Serial No. 77907011
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However, I am aware of only one precedential decision, DTI
Partnership, in which such non-compliance formed the sole
basis for affirming a refusal of registration, and that was
in a situation where the applicant’s failure to provide the
requested information prevented the Board from fully and
accurately assessing the merits of the substantive refusal.
I am not aware of any precedential decision in which
registration was refused on the basis of the applicant’s
failure to respond to a request for information when the
substantive refusal was reversed.
In the present case, the requirement for information
consisted of asking the applicant to respond to two
questions, which could be answered “yes” or “no.” The
purpose of these questions was to provide the examining
attorney with information that was relevant to the mere
descriptiveness refusal, namely, are the goods energy
efficient, and are the goods environmentally friendly.
Because of applicant’s failure to answer these questions,
the majority, in determining the issue of mere
descriptiveness, treated the answers as though they would
have been adverse to applicant’s position.9 It seems to me
that in these particular circumstances--i.e., the

9 I, too, have assumed that the responses would have been
adverse in my consideration of the issue of mere descriptiveness.
Serial No. 77907011
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information is relevant to a substantive refusal; the
examining attorney is requiring yes-or-no answers to
specific questions, such that it is easy to assume the
answers that would be adverse to the applicant’s position;
and the “adverse” answers do not result in an affirmance of
the substantive refusal--that it is too harsh a result to
deny registration to applicant solely on the basis of its
failure to comply with the requirement for information.
Instead, my view is that treating the information as
adverse to applicant is a sufficient consequence for
applicant’s failure to answer the questions posed by the
examining attorney.
I should add that I by no means endorse an applicant’s
failure to comply with a requirement for information, or
suggest that the only consequence of such a failure should
be an adverse inference, rather than an affirmance of a
refusal of registration. If an examining attorney were to
require promotional or informational materials, such that
neither the examining attorney nor the Board would be able
to ascertain what information would be contained in such
materials, the applicant’s refusal to provide such
materials could hinder the examination of the application
and the determination of any substantive refusal. In such
circumstances, it would be appropriate to affirm a refusal
Serial No. 77907011
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of registration based on the failure to provide the
requested materials, regardless of whether the Board
reached the substantive ground for refusal, or treated the
information that the applicant failed to supply as adverse
to applicant as part of its determination of the
substantive ground. However, as noted, in the case at hand
the examining attorney required only that applicant respond
to two yes-or-no questions, and by treating the answers to
those questions as adverse to applicant, the Board has not
been hampered in its determination of the substantive
ground, or prevented from seeing material that would be
potentially damaging to applicant. On the contrary, the
Board has proceeded with its determination of the
substantive refusal as though applicant in fact responded
to the questions by stating that its goods are energy
efficient and environmentally friendly.
Because I believe that treating these two questions as
though applicant had responded in the affirmative to them
is a sufficient consequence in the particular circumstances
of this case, and because I believe that the Office has
failed to prove that VERDE is merely descriptive as it has
not shown that Spanish-speaking purchasers of applicant’s
goods would understand VERDE as having the meaning of
energy efficient or environmentally friendly, and therefore
Serial No. 77907011
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that such purchasers would immediately understand from the
mark that the goods have such qualities, I would reverse
the refusals of registration.