Keith Roberts

Trademark Trial and Appeal Board

Apr 3, 2009

No. 76670534 (T.T.A.B. Apr. 3, 2009)

Mailed:
3 April 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Keith Roberts

Serial No. 76670534
_______

Carl L. Johnson of Jacobson & Johnson for Keith Roberts.

Verna Beth Ririe, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Drost, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 19, 2006, applicant Keith Roberts applied
under the intent to use provisions of the Trademark Act to
register the mark EVENING SYSTEM (in standard character
form) for a “device for maintaining continuous positive
pressure to the airways of a person while sleeping” in
Class 10. Serial No. 76670534.
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that the
mark EVENING SYSTEM is merely descriptive of applicant’s
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76670534
2
goods. 15 U.S.C. § 1052(2)(e)(1). When the examining
attorney made the refusal to register final, this appeal
followed.
The question in this case is whether EVENING SYSTEM is
merely descriptive of applicant’s device for maintaining
continuous positive pressure to the airways of a person
while sleeping. A mark is merely descriptive if it
immediately conveys “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Quik-
Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009 (Fed. Cir. 1987) and
Mechanize Metal Corp. v. International Nickel Co., 262 F.2d
806, 120 USPQ 293, 294 (CCPA 1959). Mere descriptiveness
of a mark is not considered in the abstract, but in
relation to the particular goods or services for which
registration is sought. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
In support of the merely descriptive refusal, the
examining attorney made of record dictionary definitions of
Ser. No. 76670534
3
the terms “evening” and “system.” The most pertinent
definitions are:
Evening – The period of decreasing daylight between
afternoon and night.

System – A group of interacting, interrelated, or
interdependent elements forming a complex whole.

First Office Action, attachments.
The examining attorney has also asked that we take
judicial notice of the definition of “continuous positive
airway pressure” or CPAP, which is “a technique of
respiratory therapy for individuals with or without
mechanical assistance in which airway pressure is
maintained above atmospheric pressure throughout the
respiratory cycle by pressurization of the ventilatory
circuit.” American Heritage® Stedman’s Medical Dictionary
(2002). We take judicial notice of this definition.
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
The examining attorney’s position is:
It appears that applicant intends to provide a device
to assist an individual’s breathing utilizing the CPAP
respiratory therapy technique. Regardless of whether
or not this is the applicant’s intent, the applicant’s
device is defined within its own identification of
goods as being for use while a person is sleeping. In
order for this device to be used while a person
sleeps, it must necessarily be put on before bedtime,
or, as the dictionary defines, in the time period
Ser. No. 76670534
4
commonly referred to as the “evening.” The term
“evening” thus describes the time of day when the
device will most commonly be utilized.

The term “system” merely describes the CPAP device as
being made up of a group of interacting mechanical or
electrical components. The term provides no source-
identifying distinction between the applicant’s device
and any other device made up of a group of components.

Brief at unnumbered pp. 3-4.
Applicant maintains that a “search of the term
‘evening system’ through the internet search engine
www.google.com … although yielding a plethora of results,
failed to [yield] the ‘evening system’ as describing the
same or related goods to that of the present application.”
Brief at 4 (parenthetical omitted). We note that Google
and other truncated search results are entitled to little
weight. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine results
— which provide little context to discern how a term is
actually used on the webpage that can be accessed through
the search result link — may be insufficient to determine
the nature of the use of a term or the relevance of the
search results to registration considerations”). See also
In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002)(“The
examining attorney's print-out of the results of an
Internet search by the Yahoo search engine are of little
probative value, largely because insufficient text is
Ser. No. 76670534
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available to determine the nature of the information and,
thus, its relevance”).
In addition, applicant argues that its “device is not
specific for use in the evening as stated by the Examiner
but is a product that is used at nighttime when the user is
asleep or any other time of the day or night that the user
sleeps, which could include also naps during the morning,
noon, and afternoon.” Brief at 9.
It is often said that the “line between descriptive
and suggestive marks can be difficult to draw.” Nautilus
Group Inc. v. ICON Health and Fitness Inc., 372 F.3d 1330,
71 USPQ2d 1173, 1181 (Fed. Cir. 2004).
In this case, the examining attorney has relied on
definitions of the common words “Evening” and “System.”
While we also “may look to use by competitors of the same
term, because if there are numerous synonyms for a common
trademarked word, others will have less need to use the
trademarked term” (Nautilus Group, 71 USPQ2d at 1181),
there is no evidence that the term “evening” is used in
association with applicant’s goods to describe the fact
that these goods are used while sleeping.
Also, as applicant points out, there are numerous
other terms that are equally or even better suited to
describe the fact that applicant’s products are to be used
Ser. No. 76670534
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while sleeping, such as “bedtime,” “sleep,” “night,” or
“p.m.” The examining attorney’s own definition indicates
that evening is the period of decreasing daylight between
afternoon and night. This is not necessarily the most
common sleeping period, which would appear to be night.
While a mark can have more than one descriptive or even
generic term associated with it, this does not mean that
any term that some consumers may understand to refer to a
feature of the product is necessarily descriptive of the
goods. See In re Electro-Nite Co., 167 USPQ 127 (TTAB
1970) (THE MAYDAY PROTECTION SYSTEM not merely descriptive
of an electro-mechanical alarm system adapted for
connection to telephone lines in homes and other buildings
for requesting emergency assistance from a preselected
source by way of a prerecorded message) and In re Air-Beep
Corp., 185 USPQ 191, 191 (TTAB 1974) (BEEP and AIR BEEP
“equally suggestive of a radio paging system”). We are
reluctant to conclude that the term “evening” is synonymous
with “sleeping” or that it is descriptive of any goods that
are used immediately prior to sleeping.
The Federal Circuit’s binding precedent recognizes
that descriptive marks must “immediately convey knowledge”
of a quality, feature, function, or characteristics of the
goods. Bayer, 82 USPQ2d at 1831. See also In re MBNA
Ser. No. 76670534
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America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003). With the limited evidence of record, we
admit that we have our doubts that consumers will conclude
that the term EVENING SYSTEM immediately describes the
goods. “It is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork.” Remacle, 66 USPQ2d at 1224. In
this case, there is no evidence that the word “evening,”
much less the term “evening system” is used to describe a
device for maintaining continuous positive pressure to the
airways of a person while sleeping. Also, it has not been
shown that the term “evening” is used to describe
medically-related products that are used at bedtime.
Therefore, we are left with little but guesswork if we were
to conclude that the mark is merely descriptive.
We find that the case of In re Gourmet Bakers, Inc.,
173 USPQ 565, 565 (TTAB 1972), provides guidance on the
issue in this case.
It has been recognized by this and other tribunals
that there is no easy applicable objective test to
determine whether or not a particular mark, as applied
to specific goods, is merely descriptive or merely
suggestive. The distinction between marks which are
“merely descriptive” and marks which are “suggestive”
is so nebulous that more often than not it is
determined largely on a subjective basis with any
doubt in the matter being resolved in applicant’s
behalf on the theory that any person who believes that
he would be damaged by the registration will have an
Ser. No. 76670534
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opportunity under Section 13 to oppose the
registration of the mark and to present evidence,
usually not present in the ex parte application, to
that effect.

It is believed that a borderline situation exists
herein in determining whether or not “THE LONG ONE” is
merely descriptive [or] just suggestive of the nature
and character of applicant's bread. But, since it has
not been shown that the notation “THE LONG ONE”, as
distinguished from “the long loaf” or “the longer
bread”, has been commonly used or is necessary to be
used in the bakery trade; the term “THE LONG ONE” does
not with any degree of particularity describe the
nature of applicant’s bread even as to length; the
term “THE LONG ONE” is being used on applicant’s
wrappers as the trademark for its goods; and the
registration sought by applicant will not inhibit
anyone in the trade from properly describing the
length of its bread loaf, it is concluded that the
mark should be published in accordance with Section
12(a) for opposition purposes.

Our decision here is based on the record created by
the examining attorney and applicant. Because a review of
the record has not resolved our doubts as to whether
applicant’s mark is merely descriptive, as we are required
to do, we resolve those doubts in applicant’s favor. In re
Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB
1981) (The Board's practice is “to resolve doubts in
applicant's favor and publish the mark for opposition”).
See also Remacle, 66 USPQ2d at 1224.
However, we do find that the term “system” is merely
descriptive of applicant’s goods. A “device for
maintaining continuous positive pressure to the airways of
Ser. No. 76670534
9
a person while sleeping” could consist of “a group of
interacting, interrelated, or interdependent elements
forming a complex whole.” Accord In re Biesseci S.p.A., 12
USPQ2d 1149, 1150 (TTAB 1989) (“[I]f applicant’s goods came
from the United States, ‘AMERICAN SYSTEM’ and design would
be seen as nothing more than a primarily geographically
descriptive term as applied to applicant’s goods”). The
term “system” would immediately describe devices that would
have interacting elements forming a complex whole, even if
the interacting or interrelated parts are enclosed within a
single device. Therefore, a disclaimer of this term is
required.
Decision: The refusal to register on the ground that
applicant’s mark EVENING SYSTEM, as a whole, is merely
descriptive is reversed, but, in view of our finding that
the word SYSTEM is merely descriptive of applicant’s goods,
the mark may not be registered absent a disclaimer of that
word under Section 6 of the Trademark Act. If applicant
submits a disclaimer of the word SYSTEM within 30 days, the
disclaimer will be entered and the application will be
forwarded for publication of the mark for opposition. If
applicant fails to submit the required disclaimer within 30
days, the board will enter a decision affirming the refusal
Ser. No. 76670534
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of registration based on the applicant’s failure to enter
the disclaimer.