CAT Scale Co.

Trademark Trial and Appeal Board

Nov 8, 2000

No. 75344221 (T.T.A.B. Nov. 8, 2000)

Hearing: Paper No. 17
June 1, 2000 11/8/00 JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re CAT Scale Company
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Serial No. 75/344,221
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Wendy K. Marsh of Zarley, McKee, Thomte, Voorhees & Sease
for applicant.
Barney L. Charlton, Trademark Examining Attorney, Law
Office 105 (Thomas G Howell, Managing Attorney).
_______
Before Quinn, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by CAT Scale Company to
register the mark CERTIFIED AUTOMATED TRUCK SCALE for
services identified as “truck weighing.”1 Applicant claims,
pursuant to Section 2(f) of the Trademark Act, that its
mark has acquired distinctiveness.
The Trademark Examining Attorney has refused

1 Application Serial No. 75/344,221, filed August 20, 1997,
alleging dates of first use of 1985.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/344,221
2
registration under Section 2(e)(1) of the Trademark Act on
the ground that CERTIFIED AUTOMATED TRUCK SCALE, when used
in connection with truck weighing services, is highly
descriptive and, accordingly, that the evidence of acquired
distinctiveness submitted by applicant is insufficient to
permit registration on the Principal Register.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs,2 and
both appeared at an oral hearing.
The Examining Attorney maintains that the mark sought
to be registered is highly descriptive and that, in view
thereof, the evidence of acquired distinctiveness is
insufficient for registration.3 The Examining Attorney
contends that the mark directly describes a feature or
characteristic of applicant’s services. More specifically,
the Examining Attorney asserts that applicant’s services
are rendered by way of a truck scale which is automated and

2 The Examining Attorney, in his brief, requests the Board to
take judicial notice of a registration owned by applicant for a
different mark covering services identified as “truck weighing
service on certified automated truck scale.” Applicant, in its
reply brief, has objected to the introduction of this evidence.
The Board does not take judicial notice of registrations issued
by the Office and, accordingly, the registration has not been
considered. See also: Trademark Rule 2.142(d).
3 So as to be clear on this point, the issue is not genericness.
This was reiterated by the Examining Attorney at the oral
hearing, and is reflected by the prosecution history.
Ser No. 75/344,221
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which is certified by state authorities. In support of the
refusal, the Examining Attorney submitted dictionary
definitions of the words comprising applicant’s mark. Also
of record are excerpts retrieved from the NEXIS database,
as well as excerpts pulled off the Internet. These
materials show, according to the Examining Attorney, that
terms such as “certified truck scale” and “automated truck
scale” are commonly used in the trade in connection with
truck weighing services.
Applicant argues that it has provided sufficient
evidence to demonstrate that the relevant class of users
associates the mark sought to be registered with services
rendered by applicant. Applicant points to the specific
evidence of record, including over 14 years of continuous
use of the mark, annual advertising expenditures exceeding
$1 million, and the annual distribution through 650
nationwide locations of more than 3 million scale tickets
bearing the mark. The specific facts relied upon by
applicant appear in three declarations.
A mark is merely descriptive if, as used in connection
with the goods or services in question, it describes, i.e.,
immediately conveys information about, an ingredient,
quality, characteristic, feature, etc. thereof, or if it
directly conveys information regarding the nature,
Ser No. 75/344,221
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function, purpose, or use of the goods or services. See:
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
1992); and In re American Screen Process Equipment Co., 175
USPQ 561 (TTAB 1972). As to acquired distinctiveness,
applicant has the burden of proof to establish a prima
facie case of acquired distinctiveness. Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Applicant submitted the declarations of Delia Moon
Meier, applicant’s senior vice president. Ms. Meier
attests to applicant’s substantially exclusive and
continuous use of its mark in connection with truck
weighing services since 1985. Ms. Meier also states that
applicant spends over $1 million per year advertising the
services under the mark, that applicant distributes more
than 3 million scale tickets to its customers each year,
and that every single one of applicant’s customers receives
a scale ticket with the mark appearing thereon.
Also of record is the declaration of Heather
DeBaillie, applicant’s advertising and promotions director.
Ms. DeBaillie states that the more than 3 million scale
tickets are distributed through applicant’s 650 locations,
and that the mark sought to be registered has appeared on
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the scale tickets in a “conspicuous manner” since at least
as early as 1988. Ms. DeBaillie also asserts that the
primary customers for applicant’s services are semi-truck
drivers hauling heavy loads who weigh their trucks to avoid
fines from state-operated weigh stations. Included in the
declaration are the results of surveys of approximately
5,000 drivers who are customers of applicant’s services.
The results show that about 75% of the drivers use
applicant’s services at least 6 times each month.
Applicant points to the results as evidence of “the great
frequency with which each one of applicant’s customers see
and associate the mark CERTIFIED AUTOMATED TRUCK SCALE with
applicant’s truck weighing services.”
The dictionary evidence shows the following meanings:
“certify: to attest as being true or as represented or as
meeting a standard;” “automate: to operate by automation,
to convert to largely automatic operation;” “truck: a
wheeled vehicle for moving heavy articles;” and “scale: an
instrument or machine for weighing.” Webster’s New
Collegiate Dictionary (1979).
The Examining Attorney also submitted NEXIS® materials
showing several uses of “certified truck scale” and
“automated truck scale” in connection with the type of
scale used in rendering applicant’s services. Examples of
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the uses include the following: “[o]ther draws for
truckers are computerized certified truck scales...” The
Fresno Bee, October 3, 1994; “[o]n the stop’s sprawling
grounds, where the rumble and fumes from the diesel rigs
fill the air, are a service garage, certified truck scale,
gas and diesel pumps, and a parking lot that will handle
110 rigs.” Chicago Tribune, April 10, 1994; and “[I]t now
includes automated truck scales...” Coal Age, December
1996.
The Examining Attorney also submitted Internet
evidence showing uses by third parties on their Web pages
of “automated truck scale” in connection with their scales
and related services. An excerpt from applicant’s Web page
indicates that applicant’s “scales are certified in the
state they are located in.”
Applicant does not dispute the mere descriptiveness of
the matter sought to be registered. Indeed, based on the
record before us, we are persuaded that the term CERTIFIED
AUTOMATED TRUCK SCALE is not just merely desriptive, but
rather that the term is highly descriptive when used in
connection with truck weighing services. The common
meanings of the terms comprising the mark, coupled with the
evidence showing third-party uses of the terms “certified
truck scale” and “automated truck scale,” establish that
Ser No. 75/344,221
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CERTIFIED AUTOMATED TRUCK SCALE, when considered as a
whole, is highly descriptive as used in connection with
truck weighing services.4 The term merely describes truck
weighing services rendered through the use of automated
truck scales that are certified in the states in which the
scales are located.
We turn then to the question of whether CERTIFIED
AUTOMATED TRUCK SCALE has become distinctive of applicant’s
services in commerce. We recognize that applicant’s
continuous use dates back to 1985. Further, we acknowledge
that applicant’s distribution of over three million scale
tickets at 650 locations would suggest that applicant has
enjoyed a degree of success and that the term sought to be
registered has been exposed to many truckers.5 And,
according to applicant’s surveys, a high percentage of
these truckers are frequent customers of applicant’s
services. Nonetheless, this evidence demonstrates only the
popularity of applicant’s truck weighing services, not that
the relevant purchasers of such services have come to view

4 In this connection, we do not share applicant’s view that the
Examining Attorney improperly dissected the mark. Lest there be
any doubt, we reiterate that, in determining the registrability
of the mark, we have considered applicant’s mark as a whole.
5 The record does not include any sales figures relating to
applicant’s services under the mark.
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CERTIFIED AUTOMATED TRUCK SCALE as applicant’s source-
identifying service mark. In re Bongrain International
Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and
In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).
Similarly, applicant’s promotional expenditures do not, in
and of themselves, lead us to infer that the publicity has
been effective in creating distinctiveness. The issue here
is the achievement of distinctiveness, and not the effort
expended in the attempted achievement. In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991). See also: In re
Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA
1973).
Applicant points to the weight scale ticket as being
the “single, most effective way possible for applicant to
establish a connection between its mark and applicant’s
truck weighing services with the relevant consumers, namely
truck drivers” given that more than 3 million have been
distributed. (brief, pp. 8-9) Although the matter sought
to be registered is displayed in a prominent manner on the
ticket, the ticket also shows the conspicuous CAT logo
mark. In point of fact, applicant’s promotional brochures
advises truckers as follows: “Not all truck stop scales
can be CAT Scales. Look for the gold and black sign and
the CAT logo on the weight ticket to be sure.” Thus, it
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would appear that no particular effort has been made by
applicant to specifically promote the term CERTIFIED
AUTOMATED TRUCK SCALE as a source indicator, but rather has
pointed to other indicia.
To be clear on this significant point, we emphasize
that the record is completely devoid of direct evidence
that the relevant class of purchasers, semi-truck drivers
with heavy loads, views CERTIFIED AUTOMATED TRUCK SCALE as
a distinctive source indicator for applicant’s services.
Given the highly descriptive nature of the term
CERTIFIED AUTOMATED TRUCK SCALE, we would need to see a
great deal more evidence (especially in the form of direct
evidence from truckers) than what applicant has submitted
in order to find that the term has become distinctive of
applicant’s services. That is to say, the greater the
degree of descriptiveness, the greater the evidentiary
burden on the user to establish acquired distinctiveness.
Yamaha Int’l. Corp. v. Hoshino Gakki Co., supra. 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
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descriptive terms. More substantial evidence of
secondary meaning thus will ordinarily be
required to establish their distinctiveness.
Indeed, some designations may be incapable of
acquiring distinctiveness.
Decision: The refusal to register is affirmed.
T. J. Quinn
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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