Aluminum Chambered Boats, Inc.

Trademark Trial and Appeal Board

Mar 14, 2008

No. 78643554 (T.T.A.B. Mar. 14, 2008)

Mailed:
March 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aluminum Chambered Boats, Inc.
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Serial No. 78643554
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Michael F. Hughes of Hughes Law Firm, PLLC for Aluminum
Chambered Boats, Inc.

Ramona F. Ortiga, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Seeherman, Grendel and Cataldo, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Aluminum Chambered Boats, Inc., applicant herein,
seeks registration on the Principal Register of the mark
THE MACHINE (in standard character form) for goods
identified in the application as “boats.”1

1 Serial No. 78643554, filed on June 3, 2005. The application is
an intent-to-use application under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78643554
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark is merely descriptive of the identified goods.
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Applicant has appealed the final refusal. After
careful consideration of the evidence of record2 and the
arguments of counsel, we affirm the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term 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; it is enough that the term describes one
significant attribute, function or property of the goods or

2 We sustain the Trademark Examining Attorney’s objection to the
evidence submitted by applicant for the first time with its
appeal brief. Such evidence is untimely and shall be given no
consideration. Trademark Rule 2.142(d), 37 C.F.R. §2.142(d). We
add that our decision herein would be the same even if we were to
treat this evidence as being properly of record.

Ser. No. 78643554
3
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term 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 those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, 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).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applying these principles in the present case, and
based on the evidence submitted by the Trademark Examining
Ser. No. 78643554
4
Attorney, we find that THE MACHINE is merely descriptive as
applied to “boats.”
The Trademark Examining Attorney has submitted
dictionary evidence (from the MSN Encarta Dictionary
(www.encarta.msn.com)) which shows that the definitions of
“machine” include “powered form of transportation: an
engine-driven means of transportation, e.g. an aircraft,
car, or motorcycle.” We find that a boat certainly can be
“an engine-driven means of transportation,” and thus would
be a “machine” according to this definition.
The Trademark Examining Attorney also has submitted
excerpts from news articles retrieved from the NEXIS
database which show that there is a type of boat called a
“machine boat”:

St. Louis Post-Dispatch (8/21/06): “Brothers
Mike and Tom Seebold rode their Bud Light Racing
machine boats to podium finishes…”

Eureka Times-Standard (CA) (4/26/05): “…it
deepens and widens the channel marking it safer
and more efficient for fishing boats, cargo
boats, machine boats, and even leisure boats to
move in and out of the bay.”

Also of record are other news article excerpts and
printouts from third-party websites which establish that
“machine” is commonly used descriptively in connection with
fishing boats (which of course are encompassed by
Ser. No. 78643554
5
applicant’s identified “boats”). These boats are called
“fishing machines.” For example:

The Sun Herald (Biloxi, MS)(3/8/04): “…22-foot
Legacy Skiff, which isn’t a true skiff, but
according to Bob Kranz, is an offshore fishing
machine.”

www.centuryboats.com - “Want to customize the
ultimate fishing machine?”

www.yachtbroker.escapeartist.com - 1979 Topaz 28
foot Sports Fishing machine!… Her name is ‘Reel
Deel’ and she is a well known 1979 Topaz twenty-
eight foot fishing machine!”

www.basspro.com - “Turning Your Small Boat Into
a Fishing Machine”

www.newwaterboatworks.com - “The Avocet was
conceived with one goal in mind – to develop the
ultimate shallow water sport fishing machine …
NewWater took boat making to a new level.”

The record also includes a printout of a third-party
registration, Reg. No. 1633952, which is of the mark
FISHING MACHINE for “boats.” The mark is registered
pursuant to the acquired distinctiveness provisions of
Trademark Act Section 2(f), a fact which supports a finding
that “machine” is merely descriptive of boats.
Additional third-party websites demonstrate
descriptive use of “machine” in connection with other types
of boats:

Ser. No. 78643554
6
www.mitziskiffs.com - “A serious shallow water
machine…”

www.money.cnn.com - “The ultimate yachting
machine”

In view of this evidence, we are not persuaded by
applicant’s argument that MACHINE is arbitrary or
suggestive as applied to boats. Boats can be and are
described as being “machines,” and MACHINE thus is a merely
descriptive term as applied to boats.
We also reject applicant’s argument that the presence
of the word THE in the designation THE MACHINE negates the
mere descriptiveness of MACHINE, or that it transforms the
designation as a whole into a unitary, inherently
distinctive mark. As the Board has repeatedly found, the
word THE would be perceived as merely the common article
that it is, without trademark significance. See, e.g., In
re G.D. Searle & Co., 149 USPQ 619 (CCPA 1966), aff’g 143
USPQ 220 (TTAB 1964)(THE PILL); In re King Coil Licensing
Co., 79 USPQ2d 1048, 1051 n.6 (TTAB 2006)(THE BREATHABLE
MATTRESS); In re Weather Channel, Inc., 229 USPQ 854, 856
(TTAB 1985)(THE WEATHER CHANNEL); and The Conde Nast
Publications Inc. v. The Redbook Publishing Co., 217 USPQ
356, 357 (TTAB 1983)(THE MAGAZINE FOR YOUNG WOMEN).
Ser. No. 78643554
7
Based on the evidence of record, we find that THE
MACHINE is merely descriptive of “boats,” the goods
identified in the application, and that registration
therefore is barred by Trademark Act Section 2(e)(1).

Decision: The refusal to register is affirmed.3

3 For the first time in its appeal brief, applicant requests that
it be allowed to amend the application to one seeking
registration on the Supplemental Register, if the mere
descriptiveness refusal to register the mark on the Principal
Register is affirmed. This request is untimely and will be given
no consideration. See generally TMEP §§816.05 and 1501.06.