David W. Knight

Trademark Trial and Appeal Board

Sep 22, 2003

No. 76236769 (T.T.A.B. Sep. 22, 2003)

Mailed:
September 22, 2003
Paper No. 12
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re David W. Knight
________
Serial No. 76/236,769
_______
John S. Egbert of Harrison & Egbert for David W. Knight.
Gene V.J. Maciol, II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Cissel, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
David W. Knight seeks registration on the Principal
Register for the mark BADSLAB for services recited as
“structural repair of buildings, namely, repair in the
field of concrete slabs and foundations; consultation in
the field of structural repair of buildings, namely, repair
in the field of concrete slabs and foundations,” in
International Class 37.1
1 Application Serial No. 76/236,769 was filed on April 9,
2001 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/236,769
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This case is now before the Board on appeal from the
final refusal to register on the ground that the term
BADSLAB is merely descriptive of applicant’s services under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1).
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
We affirm the refusal to register.
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 knowledge
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
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 must be determined
not in the abstract, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used or is intended to be used, and the
Serial No. 76/236,769
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significance that the mark is likely to have on the average
purchaser encountering the services in the marketplace.
See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978); and In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986).
Applicant argues that its service mark may be
suggestive, but that is not merely descriptive. According
to applicant, potential consumers would have to use some
imagination or thought in order to understand readily the
nature of these unique services being offered by applicant
in connection with this mark. Applicant also notes that
the absence of any evidence of third-party usage of this
term in conjunction with the applicable services also
supports a reversal of the refusal made by the Trademark
Examining Attorney.
It is the Trademark Examining Attorney’s position that
BADSLAB is not suggestive, but rather, that it immediately
tells consumers that the applicant’s “services are provided
to repair a ‘BadSlab.’” (Trademark Examining Attorney’s
appeal brief, p. 6).
The Trademark Examining Attorney has placed into the
record a number of definitions of the word “slab” drawn
from specialized dictionaries. They consistently refer to
a horizontal layer of concrete, usually on the ground, but
Serial No. 76/236,769
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sometimes as part of a roof structure.2 The Trademark
Examining Attorney also introduced into the record a number
of excerpted stories retrieved from the LEXIS/NEXIS
database and from Internet searches demonstrating that the
term “bad slab” is a readily-understood reference to a
defective concrete slab. While the meaning remains
consistent, we note that the setting varies somewhat from
the foundation of a building to a section of highway or
sidewalk (search term was already highlighted in NEXIS
stories, but emphasis was supplied to Internet excerpts):
Panel Replacement Offers Promise in Pavement
Repair
The problem is all too common. A
section of concrete pavement on a busy urban
freeway wears out and needs to be replaced.
…
How tough can it be to pull the bad
slab out and lower the new one into place?
“It's not as simple as it might sound,”
according to Brannon….3
Campion Rodolff LLP
The Law in Review
May 2001
2 slab. 1. A cast concrete floor. 2. Flat section of
floor or roof either on the ground or supported by beams or
walls. Construction Dictionary Illustrated, BNi Building News
©2001;
slab (1) A flat, horizontal (or nearly horizontal) molded
layer of plain or reinforced concrete, usually of uniform but
sometimes of variable thickness, positioned either on the ground
or supported by beams, columns, walls, or other framework. Means
Illustrated Construction Dictionary, (3rd Ed. 2001);
slab 1. A thin flat piece of concrete or stone. 2. A
concrete slab forming a floor. Illustrated Dictionary of
Building. © Construction Press 1982.
3 http://www.dot.ca.gov/ctnews/july02/
Serial No. 76/236,769
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Supplier Liable for Bad Slab
The slab underneath the typical
Southern California house is made of
concrete, and the concrete is made of water,
sand, gravel and Portland cement mixed
together thoroughly. If the slab cracks,
the house may, too, and then the floors tilt
and the windows no longer close.
No one would be surprised if the owner of a
cracked home sued the builder for damages…
Reversing a trial court, the appellate
court held that a group of homeowners at a
housing development can sue, for strict
products liability, the maker of a plastic
additive for concrete known as Fibermesh
that was used in place of welded wire in
their homes’ slabs….4
Charter Township of Canton
Board Proceedings - July 23, 2002
… Mr. Pantaleo has two slabs to replace and
feels only one is legitimate. When the bad
slab is replaced the other slab will then
become okay….5
Anyone wishing to replace bad slabs should
call engineering technician Larry Aldridge
weekdays between 8 a.m. and 5 p.m. EDT….6
[Paseo del Norte contractor is] … replacing
several bad slabs of concrete pavement at no
expense to the city or taxpayers…7
“They’ve got water surface cracks,” he says.
“There’s nothing structurally wrong with it.
The only way to tell if that thing is
structurally sound or not is to pop a core
sample out of the slab. No one can go and
look at a slab and tell you it’s a bad slab.
There’s no way.”8
4 http://www.campionrodolff.com/news0501.htm
5 http://216.239.37.104/search?q=cache:334wrlqazQkJ:
www.canton-mi.org/Clerk/images/2002bt/btm072302.pdf+%22bad+slab
%22+-linux+-magic&hl=en&ie=UTF-8
6 South Bend Tribune, April 17, 2002.
7 Albuquerque Journal, July 17, 2001.
8 Houston Press, May 18, 2000.
Serial No. 76/236,769
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Besides, PennDOT already had one crack at
the area two years ago. A contractor
replaced concrete slabs at the south end or
the Glenwood Bridge in checkerboard fashion,
ignoring many bad slabs ….9
Route 22 construction … could be completed
next summer if PennDOT does this as all the
other parts of Route 22 were done years ago.
Tear out some bad slabs, then resurface and
put the “Jersey barrier” in the middle.10
The recited services herein involve structural repair
of concrete slabs and foundations. Hence, the only issue
before us, and the point on which the Trademark Examining
Attorney and applicant disagree, is applying the existing
case law to these agreed-upon facts. Specifically, if
applicant’s services are focused on the repair of defective
concrete slabs, and “bad slab” is understood to refer to a
defective concrete slab, does BADSLAB11 describe a
significant feature, purpose or use of applicant’s
services? Answering this question in the negative,
applicant argues as follows:
… The Applicant’s services are not for
creating a “Bad Slab”. Applicant argues
that if the mark was “GOODSLAB”, then the
Examiner’s arguments would be more on point
due to the fact that the services of the
Applicant would be for making a slab “good”,
9 Pittsburgh Post-Gazette, January 9, 2000.
10 The Morning Call (Allentown), December 8, 1997.
11 We note that the elimination of the space between the words
“BAD” and “SLAB” in the mark as presented in the drawing does not
change the significance of the term, which is still recognizable
as the term “bad slab” (or “BadSlab”).
Serial No. 76/236,769
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but as stated, the Examiner has rendered an
incorrect analysis of the descriptiveness of
this mark…
(Applicant’s appeal brief, p. 8).
In response, the Trademark Examining Attorney argues
as follows:
… What is the purpose of applicant’s repair
services? The purpose is to repair a
“BadSlab”, not repair a “GoodSlab.” Thus,
the mark merely describes that the repair
and repair consultations are concerning
“Badslabs.” Arguably, “Good Slab” is not
merely descriptive of the applicant’s
proposed services because the specific
services are that of repair. One does not
repair what is not defective; one does not
repair a “GoodSlab.” …[T]he question is
whether “BadSlab” immediately describes the
purpose and use of the applicant’s services.
The answer is yes, because the applicant
offers construction repair and construction
repair consultation pertaining to
“BadSlabs.”
(Trademark Examining Attorney’s appeal brief, p. 7).
On the record adduced, we are convinced that the term
“bad slab,” in its common meaning, would be understood to
describe a primary reason for applicant’s services.
Undeniably, a key feature of applicant’s services is
repairing bad slabs of concrete.
In reviewing applicant’s position herein, it seems
that applicant has attempted to obfuscate the issue before
us by urging that the truly descriptive analogue to its
allegedly distinctive mark would be “GOODSLAB” because
Serial No. 76/236,769
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applicant’s repairs are undertaken to make a concrete slab
“good.” We do not find this argument to be logically
compelling. Furthermore, we do not find applicant’s
position to be consistent with reported decisions. For
example, the Board reasoned as follows:
There remains to consider … whether
“UNCLAIMED SALVAGE & FREIGHT CO.” is merely
descriptive of applicant’s services.
According to the last cited advertisement,
applicant “ … is a unique chain of warehouse
outlets who buy their merchandise from
railroad salvage, insurance claims, bankrupt
businesses, factory overruns and make bulk
purchases of surplus merchandise for
liquidation ….” There is no question from
this description of applicant’s activities
that it is a company that deals in salvage
and freight and while applicant has
attempted to obfuscate the issue before us
by urging that the goods are not “unclaimed”
in the usual sense of the term, it is
implicit in the term salvage and in the
usual disposition of “insurance claims” to
offset losses by insurance companies. But,
even if “unclaimed” is not an apt term to
describe the goods in which applicant deals,
it is obvious that the average customer will
be likely to believe that applicant’s goods
are “unclaimed salvage and freight.”
In re Unclaimed Salvage & Freight Company, Inc., 192 USPQ
165, 168 (TTAB 1976) [UNCLAIMED SALVAGE & FREIGHT CO. is
merely descriptive of applicant’s services recited as
“retail and distributorship services in the field of
salvaged and distressed or damaged merchandise”].
Serial No. 76/236,769
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At the heart of this issue, we disagree with applicant
as to the degree of imagination, thought or perception
required by purchasers and prospective purchasers who first
encounter this service mark. We find that purchasers would
not be required to rely upon mental gymnastics or
complicated logical analysis to understand the descriptive
significance of BADSLAB in connection with these services.
Rather, in the context of applicant’s recited services, the
average customer would immediately and unequivocally
understand the essential nature of applicant’s repair
services, namely, that applicant’s services are appropriate
for the owner of a building that has a “bad slab” of
concrete. In re Quik-Print Copy Shop, Inc., 616 F.2d 523,
205 USPQ 505 (CCPA 1980) [QUIK-PRINT is merely descriptive
of printing and other related services]; In re The Clausen
Company, 222 USPQ 455 (TTAB 1984) [SMOOTHOUT is merely
descriptive of a chemical product for reducing the
viscosity of auto body filler]; In re Quatomatic, Inc., 185
USPQ 59 (TTAB 1974) [the term STRIPPERS immediately and
unequivocally indicates to prospective purchasers that
applicant is engaged in stripping or removing paint,
varnish or other finishes from wooden and metal surfaces];
and In re G. E. Smith, Inc., 138 USPQ 518 (TTAB 1963) [KOLD
KURE applied to foundry core and mold binder compositions
Serial No. 76/236,769
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merely describes the intended use of the product because it
is an ingredient used in the cold cure process of making
cores or molds].
Finally, applicant argues that the absence of any
evidence of third-party usage of this term in conjunction
with the applicable services is significant. This absence
notwithstanding, even if applicant were the first and only
user of this merely descriptive designation, refusal under
Section 2(e)(1) of the Act would still be appropriate. In
re National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983).
Accordingly, we have no doubt but that the term
BADSLAB is merely descriptive of applicant’s consultation
and repair services in the field of concrete slabs and
building foundations.
Decision: The refusal to register under Section
2(e)(1) of the Act is affirmed.