Fowler Engineering Co., Inc.

Trademark Trial and Appeal Board

Mar 5, 2003

No. 75793268 (T.T.A.B. Mar. 5, 2003)

Paper No. 12
Mailed: March 6, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Fowler Engineering Co., Inc.
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Serial No. 75/793,268
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John S. Egbert of Harrison & Egbert for Fowler Engineering
Co., Inc.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Cissel, Bottorff and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Fowler Engineering Co., Inc., by the above-identified
application, applied to register the phrase AUGERROD
GROUNDING SYSTEM for goods identified as “multi-helix
grounding electrodes, conductors, busses sold as a unit to
bleed electrical charges to the earth” in International
Class 9. While the application is based on applicant’s
assertion of its intention to use the phrase in commerce
and has not been amended to assert actual use in commerce,
This Opinion is Not
Citable as Precedent of
the TTAB
Ser No. 75793268
2
it appears that applicant is, in fact, using the phrase to
promote its goods.
The examining attorney who issued the initial Office
action refused registration of AUGERROD GROUNDING SYSTEM
(set forth in typed form in the application drawing) under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1),
on the ground that the phrase applicant seeks to register
is merely descriptive of the product identified in the
application.1 The examining attorney included excerpts of
articles from the NEXIS database that show generic or
descriptive use of “auger rod,” required applicant to
submit a disclaimer of GROUNDING SYSTEM, and required the
applicant to submit information or material about its
product.
1 The initial Office action reveals an improper approach to
examination of the registrability of the phrase that is the
subject of applicant’s application, insofar as the examining
attorney refused registration of AUGERROD as descriptive, in view
of evidence attached to the action, and required a disclaimer of
GROUNDING SYSTEM as descriptive without any explanation of the
basis for the presumption of its descriptiveness. The proper
approach is to assess the registrability of the phrase as a whole
and to provide support for the refusal as to the whole phrase.
It would, of course, have been proper for the examining
attorney to refuse the whole phrase and to state, as an
alternative, that should the applicant overcome the refusal by
argument or combined amendment to allege use and a showing of
acquired distinctiveness, it would still have to disclaim any
generic portion of the mark. While that may have been the intent
behind the examining attorney’s initial Office action, this was
not so stated. Nonetheless, it is clear that applicant and the
Office’s examining attorneys (a different examining attorney took
over review of the application after issuance of the initial
Ser No. 75793268
3
Applicant, in its response to the initial Office
action, submitted the required disclaimer without comment
and also submitted a copy of a patent for its product and
an advertising flyer, which includes a schematic drawing-
like depiction of the product. Applicant also included
arguments why AUGERROD would not be viewed by its
prospective customers as descriptive and why, therefore,
the phrase should be registered with the disclaimer.
When the refusal was made final, applicant appealed
and filed a request for reconsideration, resulting in a
stay of the appeal. The examining attorney, however, was
not persuaded of applicant’s right to registration and
maintained the final refusal. The appeal was resumed and
applicant and the examining attorney have filed briefs.
Applicant did not request an oral argument.
Applicant has not, in any response to an Office action
or in its brief, disputed the descriptiveness of GROUNDING
SYSTEM for its collection of items that, sold as a unit,
“bleed electrical charges to the earth.” In fact, in its
brief, applicant states that the disclaimed matter “does
not form an important part of the refusal” and “arguments
Office action) have treated the refusal, and briefed this appeal,
on the question of whether the phrase as a whole is registrable.
Ser No. 75793268
4
will mainly concentrate on the term at issue, namely,
‘AUGERROD’.” Brief, p. 2.
The record consists of only the earlier-mentioned
excerpts from the NEXIS database, the copy of the patent
for applicant’s product, and the advertising flyer
featuring applicant’s product. In regard to the NEXIS
evidence, applicant asserts that these show that “auger
rod” is a term with a readily understood meaning only in
regard to drilling, boring and mining, where an auger rod
is used to remove earth, while the AUGERROD component of
applicant’s product is used to anchor applicant’s system to
the earth. Applicant also contends that prospective
customers for its product would not readily recognize that
this anchoring rod of its grounding system bears a
resemblance to an auger rod used in drilling or mining,
because they would not be familiar with such an item.
The examining attorney argues that applicant may be
using an auger rod for a different purpose than drilling,
but it is nonetheless clear that an auger rod is a
principal component of applicant’s grounding system.
Specifically, the examining attorney relies on various
statements in the patent for applicant’s product, such as
the following:
Ser No. 75793268
5
An auger rod engages the earth so as to be conductively
connected to the earth, and an electrical line serves to
connect the auger rod to the tower.2 (from Abstract)
In the present invention, the tower is electrically
grounded to the earth by using an auger rod. The auger rod
engages the earth so as to be conductively connected to the
earth. An electrical line is connected to the auger rod
and is conductively connected to the tower. In particular,
a plurality of auger rods engage the earth so as to be
conductively connected to the earth and are arranged in a
geometric configuration around the tower. (paragraph 2 of
Summary of the invention)
FIG. 4 is a detailed side elevational view of the auger rod
used with the present invention. (from Brief Description
of the Drawings)
We claim: … an auger rod engaging the earth so as to be
conductively connected to the earth; and an electrical line
connected to said auger rod and conductively connected to
said tower. … a plurality of auger rods engaging the earth
so as to be conductively connected to the earth, each of
said plurality of auger rods forming a geometric
configuration around said tower. (from claims 2 and 3 of
the Detailed Description of the Invention).
The examining attorney asserts that applicant’s use of
“auger rod” in the patent is as a descriptive term and
indicates that “such terminology is probably the easiest
and clearest to use” in identifying the components of the
grounding system.
Applicant argues, however, that its use of “auger rod”
in the patent “is [as] a term describing the physical item
2 In the statement of the Technical Field for the patented
product, there is the following: The present invention relates
to apparatus for protecting towers and/or structures from
lightning strikes. More particularly, the present invention is a
preventive device for avoiding lightning strikes.
Ser No. 75793268
6
‘auger rod’, not its function, which in the present case is
to discharge lightning strikes into the earth, not dig
holes.” Request for Reconsideration, p. 2. Further,
applicant argues: “When drafting a patent that includes a
trademarked good, it is standard practice to use the
trademarked name to describe the good. … The term “auger
rod” was used in the patent to properly describe the
trademarked good, not to describe the actual part of the
[identified] goods as claimed by the Examiner.” Brief, p.
6.
The above-quoted statement from applicant’s request
for reconsideration suggests that applicant believes the
term AUGERROD cannot be found to be descriptive if it
merely describes a physical component of applicant’s
grounding system, as opposed to the function it performs.
To the extent applicant did intend to say exactly that, we
note that the case law is to the contrary. It is well
settled that a term can be held merely descriptive of a
product if it describes “a function, or purpose, or use of
the goods … a feature or part of the goods [or] information
about any properties of the goods.” In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978) (footnotes omitted). In this case, to the extent
that AUGERROD is determined to describe a part of
Ser No. 75793268
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applicant’s grounding system, that is sufficient basis on
which to hold the term descriptive. And that is precisely
the basis for the examining attorney’s refusal, i.e., he
argues that AUGERROD would be viewed by prospective
customers for applicant’s product as identifying a basic
component of the system. Brief, p. 2.
In regard to applicant’s assertion that it used the
term “auger rod” in the patent as a trademark, the
examining attorney notes that there is nothing in the
patent document to indicate that the term “should be
interpreted as possessing any significance other than its
common commercial meaning, as a helical shaped drilling
element.” Brief, p. 6. Even if we accept as true
applicant’s contention that it is “standard practice” to
utilize trademarks in descriptions of inventions, a point
for which applicant provides not support, we agree with the
examining attorney that applicant did not use the term as a
trademark in its patent. In this regard, we note that
applicant also used the term “auger” interchangeably with
“auger rod” in the patent. Had applicant intended the use
of “auger rod” to stand in contrast to “auger” as a
trademark would to a generic term, then applicant would
have been expected to utilize capital letters, or quotation
Ser No. 75793268
8
marks or some other means to indicate the claim to “auger
rod” as a trademark for a component of its system.
Applicant also argues that the refusal is based on the
patent alone and that there is no evidence of use of the
term AUGERROD in commerce. Finally, applicant argues that
consumers of its product would not immediately perceive the
significance of the term and would have to exercise
imagination, cogitation or mental processing to understand
the significance of the term.
While the examining attorney certainly has relied a
great deal on the patent as evidence of descriptiveness,
this does not prevent us from determining that AUGERROD is
descriptive on the record as a whole. Nor does the fact
that applicant may be the only purveyor of tower grounding
systems to use the term AUGERROD mean that the term will be
perceived as a trademark rather than as a descriptive term.
In re National Shooting Sports Foundation, Inc., 219 USPQ
1018 (TTAB 1983).
Applicant asserts that the purchasers of its system
“will be commercial establishments, such as radio stations,
telephone companies, airports and other facilities which
use elevated communication transmission equipment.”
Response to Office action, p. 2. We believe purchasers for
Ser No. 75793268
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such companies would be familiar with the term “auger”3 and
its various meanings, as well as with the nature of a
“helix,”4 and would, upon seeing the term AUGERROD used in
conjunction with a grounding system that utilizes “multi-
helix grounding electrodes,” immediately conclude, without
need of thought, cogitation or imagination, that AUGERROD
refers to “multi-helix grounding electrodes.” Moreover, as
seen by reference to applicant’s advertising flyer,
applicant uses “AugerRod” as the name of the auger-shaped
or multi-helix grounding electrodes displayed as an element
of its system. Notwithstanding that applicant has used a
“TM” designation with the term, it has not used a noun,
i.e., it has not on its advertising used “AugerRod
grounding electrode” or any other such combination. While
this usage does not dictate that applicant cannot acquire
trademark rights in the term AUGERROD, it does tend to
3 We take judicial notice of the listing of “auger” in the
following telecommunications industry dictionaries:
“Auger A device that looks like a giant drill bit, which is
used for boring holes into the ground for telephone or power
poles. Some utility construction vehicles are equipped with
augers.” McGraw-Hill Illustrated Telecom Dictionary 54 (2d ed.
2000).
“Auger A type of drill bit typically used to make large, deep
holes for passing wire or cable through wood.” Newton’s Telecom
Dictionary 67 (2001).
4 We take judicial notice of the following: “helix also helixes
…3: a curve traced on a cylinder by the rotation of a point
crossing its right sections at a constant oblique angle….”
Webster’s Third New International Dictionary 1051 (1993).
Ser No. 75793268
10
prompt prospective customers to perceive the term as the
name of the component. In any event, we need not rely on
the advertising to support our holding that AUGERROD would,
for prospective purchasers of applicant’s grounding system,
be perceived as describing a principal component of the
system.
Decision: We affirm the examining attorney’s refusal
under Section 2(e)(1) to register AUGERROD GROUNDING SYSTEM
because it is descriptive of a product identified as
“multi-helix grounding electrodes, conductors, busses sold
as a unit to bleed electrical charges to the earth.”