Hayward Baker Inc.

Trademark Trial and Appeal Board

Sep 17, 2008

No. 76632117 (T.T.A.B. Sep. 17, 2008)

Mailed:
September 17, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hayward Baker Inc.
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Serial No. 76632117
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Royal Craig of Ober, Kaler, Grimes & Shriver for Hayward
Baker Inc.

W.K.H. Price, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Hayward Baker Inc. (applicant) has applied to register
FOUNDATION SERVICES in standard characters on the Principal
Register for services now identified as “geotechnical
construction services, namely, foundation rehabilitation,
drilled foundations, earth retention/underpinning,
injection services for expansive soils, namely the
injection of products into soil for limiting heave due to
expansive clays, strengthening railroad subgrades,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76632117
2
pavements and landfills and stabilizing slopes, site
improvement, soil/slope stabilization, settlement control,
excavation support, liquefaction mitigation and groundwater
control, namely through chemical grouting and jet grouting
service” in International Class 37. Applicant claims first
use of the mark anywhere in December of 1985 and first use
of the mark in commerce in 1990.
The Examining Attorney finally refused registration on
the Principal Register under Trademark Act Section 2(e)(1),
15 U.S.C. § 1052(e)(1), on the grounds that FOUNDATION
SERVICES is merely descriptive of the identified services.
Applicant subsequently amended the application to seek
registration on the Supplemental Register. The Examining
Attorney ultimately also finally refused registration on
the Supplemental Register under Trademark Act Section 23,
15 U.S.C. § 1091, because FOUNDATION SERVICES is generic
for the identified services.
Applicant appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Before addressing the merits, we must address one
evidentiary issue. With its reply brief applicant
submitted evidence for the first time, namely, a copy of a
listing of USPTO electronic records related to certain
third-party registrations and copies of selected electronic
Ser No. 76632117
3
records related to specific registrations from that
listing. Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d), requires that the record be complete prior to
the filing of an appeal subject to certain exceptions not
relevant here. Applicant’s submissions with its reply
brief are untimely, and we have not considered them.1 We
hasten to add that, if we had considered them, we would
reach the same conclusions in this case.
We now turn to the merits. A term is generic if it
identifies the class, genus or category of goods or
services at issue. See In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001),
citing H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986).
The Court of Appeals for the Federal Circuit provided
a framework for the consideration of whether or not a term
is generic in the Fire Chief case. Specifically, the Court
dictated a two-step inquiry: “First what is the genus of
goods or services at issue? Second, is the term sought to

1 Applicant also attached new evidence to its main brief, specifically,
a short listing of results from a search in the Google search engine,
and a definition from an electronic dictionary. The Examining Attorney
has not objected to this evidence and appears to have considered it.
Therefore, we deem it of record, and we have considered this evidence
for whatever probative value it possesses in deciding this case.

Ser No. 76632117
4
be registered or retained on the register understood by the
relevant public primarily to refer to that genus of goods
or services.” H. Marvin Ginn Corp. v. International Assn.
of Fire Chiefs, Inc., 228 USPQ at 530.
The ultimate test for determining whether a term is
generic is the primary significance of the term to the
relevant public. See Section 14(3) of the Act. See also
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832 (Fed. Cir. 1999) and Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The Examining
Attorney has the burden of establishing by clear evidence
that the term is generic. See In re Merrill Lynch, Pierce,
Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987). Evidence of the relevant public’s
understanding of a term may come from any competent source,
including direct testimony of consumers, consumer surveys,
newspapers, magazines, dictionaries, trade journals,
catalogs, and other publications. See In re Northland
Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985).
As to the first question Fire Chief poses, the genus
question, applicant and the Examining Attorney have taken
slightly different positions. Applicant asserts that the
relevant genus is “geotechnical construction services.”
Ser No. 76632117
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Applicant’s brief at 7. The Examining Attorney asserts
that the relevant genus is “geotechnical construction
services, namely, foundation rehabilitation, drilled
foundations, earth retention/underpinning, injection
services for expansive soils, namely the injection of
products into soil for limiting heave due to expansive
clays, strengthening railroad subgrades, pavements and
landfills and stabilizing slopes, site improvement,
soil/slope stabilization, settlement control, excavation
support, liquefaction mitigation and groundwater control,
namely through chemical grouting and jet grouting service,”
that is, the services as identified in the application.
Examining Attorney’s Brief at 5. In the end, the
distinction between the two proposals is a distinction
without a difference. We would find FOUNDATION SERVICES
generic in either case.
The Examining Attorney proposes that we refer to the
identification of services to determine the genus, as the
Court did in Fire Chief. H. Marvin Ginn Corp. v.
International Assn. of Fire Chiefs, Inc., 228 USPQ at 532.
Applicant suggests a simpler and perhaps broader genus.
Based on the evidence in this case, we conclude that
“geotechnical construction services” is the appropriate
genus.
Ser No. 76632117
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In Fire Chief, because the evidence showed that there
were other “magazine[s] directed to the field of fire
fighting,” the goods identified in the application at
issue, use of the identification as the genus was
warranted. Here the evidence shows that there are other
“geotechnical construction services.” However, unlike the
Fire Chief case where the Court found that the FIRE CHIEF
mark did not identify a class of publication directed to
that field, here the evidence does establish that
FOUNDATION SERVICES identifies a class of services in that
field.
The fact that the genus is conceptually broader or
narrower than the identification of goods does not
inexorably lead to the conclusion that a term, such as
FOUNDATION SERVICES, is not generic. Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) (MASSFLO held
generic for flowmeters for the measurement of flow of mass
of fluids); In re Central Sprinkler Co., 49 USPQ2d 1194
(TTAB 1998) (ATTIC held generic for automatic sprinklers
for fire protection); Stromgren Supports Inc. v. Bike
Athletic Co., 43 USPQ2d 1100 (TTAB 1997) (COMPRESSION held
generic for hosiery); In re Reckitt & Colman, North America
Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS held generic
for soil and stain removers for permanent press fabrics);
Ser No. 76632117
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In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988),
aff’d, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held
generic for a wide range of electronic products in
International Class 92).
We now turn to the second question Fire Chief poses -
Is the term sought to be registered understood by the
relevant public primarily to refer to that genus of goods
or services?
The Examining Attorney states, “… the evidence of
record demonstrates that the relevant public commonly
understands and refers to this class of services [the
services identified in the application] as ‘foundation
services.’” Examining Attorney’s Brief at 6.

2 The goods include: “operational amplifiers, power supplies, active
filters, converters including analog-to-digital and digital-to-analog
converters, instrumentation and isolation amplifiers, analog
computational circuits, voltage references, transducers, sample track-
hold amplifiers, data-acquisition modules, switches, multiplexers,
monolithic chips, linear IC testers, analog multiplier/dividers, log-
analog amplifiers, signal conditioners, digital panel meters,
microcomputer I/O subsystems comprising input/output boards,
measurement and control systems comprising signal conditioners, signal
isolators and converters, computer programs for electronic data
processors for computer based measurement of signals, computer programs
for electronic data processors for computer based measurement and
display of input signals and computer programs for electronic data
processors for computer based measurement of input signals and
generation of output signals in response to measured input signals for
control thereof; computer programs for visual inspection of assembly
and production lines, quality control for production and assembly
lines, robot guidance of assembly operations, inventory control;
digital thermometers; computer interface products, namely, realtime
interfaces and data exchangers, serial transmittal card/modules, serial
receiver card/modules and serial multiplier card/modules.”

Ser No. 76632117
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The Examining Attorney submitted clear and substantial
evidence in support of this conclusion. The evidence
includes excerpts from websites related to companies in
relevant fields, for example:
localwin.com – “Who is a foundation contractor?
Foundation service providers are skilled
professionals who traditionally lay the
foundation in a home or building for the start of
the building process. … to provide foundation
services for professional buildings. … Top
Constructor will help you to find the best
corporations providing … complete foundation
services.”

atlanticcaisson.com – “… With our ability to
provide site and foundation services associated
with a complete design for your project.”

pmmacaygroup.com – “P.M. MacKay can provide
electrical, plumbing, and foundation services, as
well as finishing services…”

pouredbrickwalls.com – “Poured Brick Walls offers
a full range of commercial and industrial
trenching and foundation services.”

astlecorp.com – “Astle Corp. is a multidiscipline
general contracting company, formed in 1963 and
has provided complete structural foundation
services to a variety of bulk materials
industries. … [W]e will self-perform all of the
work for our client’s foundations…”

goldenconstructionx.com – “Premier Foundation
Contractor - Call Golden Construction in Houston,
Texas, for a variety of foundation services.”

builderonline.com – “BMC Construction, which
provides turnkey framing and foundation services
to 19 of the industry’s 25 largest home
builders.”

Ser No. 76632117
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yellowusa.com – “Foundation Contractor Kingman
Arizona – Individuals who want to make their
sidewalks, garages, or driveways look better or
safer often consult contractors for foundation
services.”

corporateinformation.com – “Syntec Construction…
The Group’s principal activities are the
provision of building construction and civil
engineering contracting services, … piling and
foundation services…”

Office Action, dated August 21, 2007. These examples are
representative of the website excerpts in the record.
The Examining Attorney also provided brief excerpts
from articles obtained through a search of the NEXIS data
base. See Office Action, dated January 26, 2007. Although
the NEXIS excerpts also support the conclusion that
FOUNDATION SERVICES is generic for the identified services,
we found the examples we presented above, which provided
more context, more probative.
The Examining Attorney has also provided a definition
of “geotechnical engineering” from wikipedia.com, an online
encyclopedia. In relevant part, it states, “Geotechnical
engineering includes investigating existing subsurface
conditions and materials, assessing risks posed by site
conditions, designing earthworks and structure foundations,
and monitoring site conditions, earthwork and foundation
construction. … A geotechnical engineer then determines
and designs the type of foundation and/or pavement
Ser No. 76632117
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subgrades required for the intended man-made structure to
be built. … Geotechnical engineers design foundations
based on the load characteristics of the structure and the
properties of the soils and/or bedrock at the site.”
Office Action, dated August 21, 2007.
We have consulted additional dictionaries.3 The
Dictionary of Civil Engineering (4th ed. 1993) defines
“geotechnical engineer as “an engineer who specializes in
rock mechanics, soil mechanics, foundations, groundwater,
etc.” The Construction Dictionary Illustrated (2001)
defines “Geotechnical Engineer” as “an engineer who
specializes in rock and soil mechanics, groundwater and
foundations.” The Contractors’ Dictionary of Equipment,
Tools, and Techniques (1995) defines “foundation” as “1.
solid mass designed to support a superstructure; 2.
material that supports a structure, cut or fill, whether
strengthened or not by piles, mats or other means, to
secure adequate bearing.” The Means Illustrated
Construction Dictionary (3rd ed. 2002) defines “foundation
engineering” as “The category of engineering concerned with
evaluating the ability of a locus to support a given

3 The Board may take judicial notice of dictionary definitions. See
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Ser No. 76632117
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structural load, and with designing the substructure or
transition member needed to support the construction.”
We find the totality of the evidence more than
sufficient to conclude that FOUNDATION SERVICES is generic
for a class or category of services in the genus of
“geotechnical construction services” and for “geotechnical
construction services, namely, foundation rehabilitation,
drilled foundations, earth retention/underpinning,
injection services for expansive soils, namely the
injection of products into soil for limiting heave due to
expansive clays, strengthening railroad subgrades,
pavements and landfills and stabilizing slopes, site
improvement, soil/slope stabilization, settlement control,
excavation support, liquefaction mitigation and groundwater
control, namely through chemical grouting and jet grouting
service.”
Applicant argues that FOUNDATION SERVICES is not
generic for its services because a fair presentation of the
uses of FOUNDATION SERVICES indicates that the term is used
primarily in connection with “charitable planning and
giving solutions.” Applicant’s Brief at 7. However, we
must analyze the significance of FOUNDATION SERVICES to
relevant purchasers, not in a vacuum, but in relation to
the identified services. The fact that FOUNDATION SERVICES
Ser No. 76632117
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may have a different meaning in another context is not
relevant for purposes of our analysis. Accordingly, we
reject this argument.
Applicant also argues, “In this case, the term
FOUNDATION SERVICES is not understood by relevant
purchasers to primarily refer to the genus of services
known as Geotechnical Construction Services.” Id. at 7-8.
Applicant points to examples, primarily from the NEXIS
evidence, to argue that the various companies identified in
those examples are engaged in different types of work, for
example, foundation repairs versus shoring systems.
Applicant then states, “While it appears that the Examiner
is correlating ‘foundation’ with a building foundation, the
cited evidence cannot be correlated to any particular type
of foundation and hence fails to make the requisite
substantial showing that the term is in fact generic to
Appellant’s genus of goods.” Applicant’s Brief at 8.
Applicant then argues that FOUNDATION SERVICES is only
suggestive of the identified services, stating, “It
[FOUNDATION SERVICES] vaguely suggests services related to
foundations, but does not specify what type(s) of
foundations or specifically what Appellant’s services are.”
Id.
Ser No. 76632117
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We find these arguments unpersuasive. Again, we must
analyze the significance of FOUNDATION SERVICES to relevant
purchasers in context, not in a vacuum. Applicant uses the
term “foundation” twice in its identification of services
in identifying “foundation rehabilitation” and “drilled
foundations” as among its services. Most, if not all of
the balance of the identified services, can also relate in
some sense to foundations. The definitions cited above
consistently identify “foundations” as a significant, if
not the most significant, category of services performed by
geotechnical engineers in providing “geotechnical
construction services.” The evidence cited above from the
websites of companies in the relevant field show uses of
FOUNDATION SERVICES as a class or category of services
which includes some or all of the services in the
identification of services.
Applicant’s suggestion that FOUNDATION SERVICES is too
vague or not specific enough to be generic misses the
point. The record establishes beyond question that
FOUNDATION SERVICES identifies a category or class of
services which comprehends most, if not all, of the
services applicant identified in its application and a
class or category of services within the genus of
“geotechnical construction services.”
Ser No. 76632117
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Accordingly, we conclude that the Examining Attorney’s
evidence clearly establishes that FOUNDATION SERVICES is
generic for “geotechnical construction services, namely,
foundation rehabilitation, drilled foundations, earth
retention/underpinning, injection services for expansive
soils, namely the injection of products into soil for
limiting heave due to expansive clays, strengthening
railroad subgrades, pavements and landfills and stabilizing
slopes, site improvement, soil/slope stabilization,
settlement control, excavation support, liquefaction
mitigation and groundwater control, namely through chemical
grouting and jet grouting service.”
Decision: We affirm the refusal under Trademark Act
Section 23 to register FOUNDATION SERVICES on the
Supplemental Register on the grounds that FOUNDATION
SERVICES is generic.