Hoover Group, Inc.Download PDFTrademark Trial and Appeal BoardSep 22, 2008No. 78773959 (T.T.A.B. Sep. 22, 2008) Copy Citation Mailed: September 22, 2008 jtw UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Hoover Group, Inc. ________ Serial No. 78773959 _______ F. William McLaughlin of Wood, Phillips, Katz, Clark & Mortimer for Hoover Group, Inc. Nicholas A. Coleman, Trademark Examining Attorney, Law Office 115 (J. Brett Golden, Acting Managing Attorney).1 _______ Before Walsh, Mermelstein and Ritchie de Larena, Administrative Trademark Judges. Opinion by Walsh, Administrative Trademark Judge: Hoover Group, Inc. (applicant) has applied to register the mark RIG RACK in standard characters on the Principal Register for goods identified as “metal frame for housing an intermediate bulk container, portable tank, or the like, 1 A different Exaamining Attorney acted on this application prior to this appeal. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 78773959 2 used for storing and transporting materials” in International Class 6.2 Applicant has disclaimed “RACK.” The Examining Attorney has finally refused registration on the grounds that RIG RACK merely describes the identified goods. Applicant has appealed. Applicant and the Examining Attorney have filed briefs. We affirm. A term is merely descriptive of goods or services within the meaning of 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, 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 or function of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services 2 Application Serial No. 78773959, filed December 15, 2005, asserting first use of the mark anywhere and first use of the mark in commerce on April 27, 2006 in an amendment to allege use. Serial No. 78773959 3 identified in the application, and the possible significance that the term would have to the average purchaser of the goods or services. In re Polo International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). The Examining Attorney argues that RIG RACK is merely descriptive because the goods are racks used in connection with oil-drilling rigs, as disclosed in applicant’s specimen. The Examining Attorney provided dictionary definitions of both “RIG” and “RACK” from the online version of the Random House Unabridged Dictionary (1997) to support the refusal. In relevant part, the definition for “rig” states, ”… 3. Also called drill rig, the equipment used to drill an oil well. 4. Any combination trucking unit in which vehicles are hooked together, as a tractor trailer. 5. Any kind of truck.” Attachment to Final Refusal. Applicant does not argue that RACK is not merely descriptive, and consequently Applicant effectively acknowledges that RACK, which it disclaimed, is merely descriptive. Applicant’s principal argument is that the definitions of RIG which the Examining Attorney relies on fail to establish that RIG merely describes applicant’s “metal frame for housing an intermediate bulk container, Serial No. 78773959 4 portable tank, or the like, used for storing and transporting materials.” Applicant first argues that the Examining Attorney arbitrarily selected certain definitions of “RIG” while ignoring others. There is no need to consider definitions which are not relevant to the facts of the case at hand. The fact that a term may have a different meaning in another context is not relevant to our determination regarding the mark and goods at issue here. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB 2007). Accordingly, there is no need to discuss the definitions which are not relevant here. Next applicant argues, “The third definition references a drill rig as is used in drilling an oil well. Again, Applicant’s frame is not used for housing a drill rig. The fourth and fifth definitions relate to trucks or trucking units and the like. Again, the mark RIG RACK is not used for a metal frame for housing a truck or tractor/trailer or the like.” Applicant’s Brief at 6. The Examining Attorney never suggested the possibility that applicant’s goods would be used to “house” oil rigs or trucks. Rather, the Examining Attorney argues, “… Applicant’s product is a rack used on an off-shore oil rig.” Examining Attorney’s Brief at 5 (emphasis added). Serial No. 78773959 5 In its replay brief applicant finally addresses, though still in somewhat tortured fashion, the use of its metal frames in connection with offshore drilling rigs, stating, “While the RIG RACK frame may be used in offshore oil applications, including on an oil rig, in no way is the RIG RACK frame so limited. Applicant’s product can be used in any offshore application for storing and transporting materials. In fact, RIG RACK frames can be used with inland applications for storing and transporting materials.” Applicant’s Reply Brief at 2. In its argument, applicant fails to discuss either its specimen of use or excerpts from offshore-technology.com which the Examining Attorney made of record. The first statement in applicant’s specimens is: “Hoover’s Rig Rack provides additional protection when handling limited-use composite Intermediate Bulk Containers in offshore applications.” No other applications are discussed specifically. The web page provided by the Examining Attorney includes the following heading: “offshore-technology.com - The website for the offshore oil and gas industry.” Under “Products and Services” the web page includes an advertisement for applicant’s product. The advertisement states, “Hoover Materials Handling Group Inc. offers over Serial No. 78773959 6 50 years of experience manufacturing metal and rotationally moulded intermediate bulk containers (IBCs), spare parts and accessories used in the offshore industry to store and transport liquids.” The advertisement displays a picture applicant’s product next to this statement with the wording “Rig-rack offshore IBC transport frame.” The record is more than sufficient to show that RIG RACK merely describes “metal frame for housing an intermediate bulk container, portable tank, or the like, used for storing and transporting materials.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (ULTIMATE BIKE RACK held merely descriptive of carrying racks for mounting on bicycles, accessories for bicycle racks, namely attachments for expanding the carrying capacity of a carrying rack for mounting on bicycles, and bungee cords sold together as a unit with such carrying racks); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and industrial cooling towers. The evidence shows that the identified goods are suitable for use with offshore oil rigs and that applicant, in fact, markets the goods for such use. Accordingly, we reject applicant’s arguments that the identified goods are used in some other context, whether exclusively or primarily. On this record, it is Serial No. 78773959 7 evident that the identified goods are used in the offshore oil and gas industry, on drill rigs, to a significant degree. We also reject applicant’s argument that some degree of imagination is required to discern the descriptive meaning of RIG RACK as applied to the identified goods. On the contrary, the meaning is readily apparent in view of evidence as to how applicant markets its products. In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006) (ERGONOMIC held merely descriptive of ceiling fans). We also reject applicant suggestion that the “combined term,” RIG RACK, is not merely descriptive. The combination of RIG with RACK is nothing more than the sum of its parts. The combination, like each of the component terms, merely describes the identified goods. In re Bright-Crest, Ltd., 204 USPQ at 593. There is nothing incongruous or distinctive about the combination. In re Tower Tech, Inc., 64 USPQ2d 1314, 1317 We likewise reject applicant’s argument implying that, because it is the first to use this combination, RIG RACK is not merely descriptive. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY held merely descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) Serial No. 78773959 8 (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held generic for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field). Finally, after considering all of the evidence and arguments presented, including those we have not discussed specifically, we conclude that RIG RACK is merely descriptive of “metal frame for housing an intermediate bulk container, portable tank, or the like, used for storing and transporting materials.” Decision: We affirm the refusal to register RIG RACK on the grounds that it is merely descriptive under Trademark Act Section 2(e)(1). Copy with citationCopy as parenthetical citation