Royal Appliance Mfg. Co.

Trademark Trial and Appeal Board

Sep 18, 2000

No. 75165479 (T.T.A.B. Sep. 18, 2000)

Paper No. 13
GFR
9/18/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Royal Appliance Mfg. Co.
________
Serial No. 75/165,479
_______
Sandra M. Koenig of Fay, Sharpe, Fagan, Minnich & McKee,
LLP for Royal Appliance Mfg. Co.
Jason Turner, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
_______
Before Bucher, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant seeks registration of SWIVEL CASTERS on the
Supplemental Register for goods identified as "electric
vacuum cleaners for domestic use," in Class 7.1 The

1 Serial No. 75/165,479, filed based on applicant's allegation of
bona fide intention to use SWIVEL CASTERS as a mark in commerce,
and seeking registration on the Principal Register. The
application was later amended to allege use in commerce as of
April 1, 1997 and to seek registration on the Supplemental
Register. In addition, the identification of goods initially
included electric vacuum cleaners for commercial use, but was
restricted when the amendment to allege use was filed.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
Ser. No. 75/165,479
2
Examining Attorney has refused registration "in accordance
with Trademark Act Section 23, 15 U.S.C. 1091, on the
ground that the proposed mark is generic for the identified
goods and incapable of identifying the applicant's goods
and distinguishing them from others."
When the refusal of registration was made final,
applicant appealed. Briefs were filed, but an oral hearing
was not requested. We affirm.
Applicant, in its brief on appeal, alleges that the
final refusal of registration was premature, in that the
Examining Attorney's action immediately prior to the final
did not clearly refuse registration on the Supplemental
Register.2 In contrast, the Examining Attorney correctly
observes both that the third office action clearly stated
"the mark can not be registered on the Supplemental
Register," and that the applicant acknowledged the basis
for the refusal in its subsequent response. In any event,
we agree with the Examining Attorney that applicant should
have raised the issue prior to filing its brief on appeal.
The Examining Attorney argues that the "class or genus
of the 'central characteristic' of the applicant's goods"

2 Applicant amended its application to seek registration on the
Supplemental Register after the Examining Attorney had made final
a refusal of registration on the Principal Register, on the
ground that SWIVEL CASTERS is descriptive of a feature of
applicant's goods.
Ser. No. 75/165,479
3
is its swiveling casters. The Examining Attorney asserts
that this is the "most distinctive characteristic" of
applicant's vacuums, so that the goods "could be defined as
'swivel caster' vacuum cleaners." Under this theory, the
Examining Attorney views SWIVEL CASTERS as generic for a
class of vacuum cleaners with the "central characteristic"
of swiveling casters. In the alternative, the Examining
Attorney argues that even if "swivel caster" vacuums is not
considered a distinct class of vacuums, the applicant has
conceded that it uses the term in conjunction with a line
of vacuums, not a specific vacuum, and that the specimens
of use show that, for machines in this line, the term is
used not as a mark but to indicate that the vacuums utilize
swiveling casters. Finally, the Examining Attorney argues
that the general consumers who would purchase electric
vacuums for domestic use would not perceive the terms
"swivel" and "casters," as used by applicant, to have any
more significance than their normal dictionary meanings,
and that the combination of the terms would be no more
capable of distinguishing applicant's goods.
Applicant argues that the Office has previously
registered numerous "'swivel' formative trademarks on the
Principal Register for goods that include rotating
actions"; that "the mark itself does not describe vacuum
Ser. No. 75/165,479
4
cleaners"; that the mark has a "strong cadence" when spoken
and occupies a "prominent position" on its vacuum cleaner
bodies so that it "possesses a sufficient modicum of
variation from the ordinary to demonstrate a potential for
distinctiveness"; that the Examining Attorney's Internet
evidence is incompetent because it evidences use of swivel
casters in a descriptive sense only for commercial vacuums
or, in one instance, a high-end residential machine costing
at least four times the price of applicant's machines; that
the Examining Attorney's NEXIS evidence shows use of
casters in a descriptive sense for goods other than
residential vacuums; that the Examining Attorney "failed to
produce a single example where the overall mark SWIVEL
CASTERS is used generically or descriptively in connection
with a vacuum cleaner"; and that its mark "is an
incongruous word combination that reminds consumers of
movable carts."
In assessing the merit of these arguments, we have
considered dictionary definitions of "swivel" and "caster";
applicant's specimens of use; a copy of a page from a
catalog featuring applicant's goods and a color copy of the
front panel from a carton for the goods, both provided by
applicant; NEXIS articles made of record by the Examining
Attorney; and printouts of Internet web pages made of
Ser. No. 75/165,479
5
record by the Examining Attorney. We have not, however,
considered the third-party registrations which applicant
has referenced. Applicant first listed the marks and
registrations in a response to an office action, and
attached copies of a search service report listing
information about the registrations. The Examining
Attorney objected and noted that mere lists of
registrations or search service reports are not sufficient
to make third-party registrations of record. The
applicant, however, did not thereafter make proper copies
of the registrations of record and merely repeated the list
in its brief. The Examining Attorney again objected and we
find the objection well taken.
The relevant definition of "caster" is "a small wheel
on a swivel, set under a piece of furniture, a machine,
etc., to facilitate moving it." The Random House College
Dictionary 210 (Revised Ed. 1982). The relevant definition
of "swivel" is "a fastening device that allows the thing
fastened to turn round freely upon it." The Random House
College Dictionary 1330 (Revised Ed. 1982).
That these are the relevant meanings for these terms,
when considered in conjunction with applicant's goods, is
borne out by applicant's specimens. Photographs of
applicant's vacuums show that the phrase "EASY-PUSH Swivel
Ser. No. 75/165,479
6
Casters" is printed across the front of the base of these
upright machines and that at the rear of the base, above
each caster, is the phrase "Swivel Caster" encircled in
curved arrows that point to location of the caster.
Neither use includes a TM designation.
The page from applicant's catalog portrays three
machines, two of which feature casters. These machines are
touted with the following: "2 Rear Swivel Casters allow for
easy maneuvering on all types of floors." Also, the list
of features for each machine reads as follows: "SPECIAL
FEATURES: MAXIMUM VACUUM POWER, MOTORGUARD SYSTEM, CARRYING
HANDLE, 2 REAR SWIVEL CASTERS, POWER EDGER, QUICK CORD
RELEASE."3 Again, we note that no TM designations are used.
Only the carton panel includes any indication that
applicant claims trademark rights in "SWIVEL CASTERS." The
carton panel, under a photograph showing a caster, displays
the following: "*PATENTED SWIVEL CASTERSâ„¢ allow for
effortless maneuvering around furniture."
The Examining Attorney's Internet evidence reveals
ubiquitous use of "swivel casters" in connection with
commercial vacuums, but also reveals use of the designation
by the Miele company in conjunction with its machines for

3 In addition, the list of features for one of the machines
includes "FULL BAG INDICATOR, HEADLIGHT."
Ser. No. 75/165,479
7
home use. Applicant argues that the Miele 434i White Pearl
FullSize Vacuum, with a $749 retail price, is more akin to
a commercial machine than one for home use, but the
Internet evidence reveals that Miele uses "swivel casters"
on vacuums other than its self-proclaimed "top of the line"
machine. In addition, the Examining Attorney's NEXIS
evidence reveals that upright vacuums for home use can cost
up to $1500, albeit when packed with features not found on
lesser-priced models. Thus, it is clear that vacuums for
domestic use vary widely in price and features. Since
applicant's identification of goods is not limited in any
way, we must read it to be inclusive of all such vacuums.
Moreover, the important point to note is that even at
different price points vacuums for domestic use may include
swiveling casters as a feature.
The NEXIS stories made of record by the Examining
Attorney include a description of applicant's Royal Swivel
Ultra Glide model: "Hard-bodied upright with increased
hose suction, rear swivel casters; height adjustment, on-
board tools…." The Plain Dealer, April 7, 1997 (Headline:
Descriptions of Uprights, Specialty Products From
Cleveland-Area Companies). Applicant argues that the
newspaper erred in not treating the designation as a
trademark. This is not, however, the only reference to
Ser. No. 75/165,479
8
applicant's machines that uses "swivel casters" as a
generic designation for a feature of applicant's vacuums.
The Examining Attorney also made of record the following:
"Dirt Devil's [applicant's] Ultra Swivel Glide upright
vacuum has swivel casters, making it easy to maneuver."
The Florida Times-Union, November 21, 1998. Even if these
publications have misused the term, the stories contribute
to our conclusion on how consumers will perceive "SWIVEL
CASTERS." Moreover, there are other references to the use
of casters and swiveling casters on cleaning machines used
in or around the home: "Besides the usual work of sucking
up sawdust, dirt, and liquids, many shop vacs have
accessories now for cleaning gutters and grooming animals,
inflating air mattresses and vacuuming the car. …They are
found in 25 to 30 percent of American households…. All of
these vacs roll on wheels or casters." The Christian
Science Monitor, February 17, 1999; "This water broom
attaches to a garden hose and can be pushed in any
direction on its two wheels with swivel casters. Price:
$29.95." Chicago Tribune, August 30, 1991.
It is well settled that a designation must be capable
of serving as an indicator of source to be registrable on
the Supplemental Register. Whether a designation has the
capacity necessary for registration on the Supplemental
Ser. No. 75/165,479
9
Register is determined by considering the meaning thereof
as applied to the goods or services, the context in which
it is used on the specimens filed with the application, and
the likely reaction thereto by the average customer upon
encountering the designation in the marketplace. See In re
Cosmetic Factory, Inc., 208 USPQ 443, 447 (TTAB 1980). "The
test is not whether the mark is already distinctive of the
applicant's goods, but whether it is capable of becoming
so." In re Bush Brothers & Co., 884 F.2d 569, 12 USPQ2d
1058, 1059 (Fed. Cir. 1989), citing In re Simmons Co., 278
F.2d 517, 126 USPQ 52, 53 (CCPA 1960).
A generic designation, as noted in H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc.,
728 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986), is
incapable of registration on either the Principal Register
or the Supplemental Register. The Examining Attorney
argues that terms that are generic designations for, or
highly descriptive of, a central characteristic or feature
of goods or services, also may be found incapable. We
agree.
Highly descriptive terms, such as those that name the
type, or a distinctive characteristic, of a product or
service may also be found incapable of serving a trademark
function. See, e.g., Miller Brewing Co. v. G. Heileman
Ser. No. 75/165,479
10
Brewing Co., 561 F.2d 75, 195 USPQ 281, 285, cert. denied,
434 U.S. 1025, 196 USPQ 592 (1978) ("The fact that 'light'
is an adjective does not prevent it from being a generic or
common descriptive word."); In re Helena Rubinstein, Inc.,
410 F.2d 438, 161 USPQ 606 (CCPA 1969) (PASTEURIZED and
PASTEURIZED FACE CREAM SPECIAL for face cream held so
highly descriptive of applicant's goods as to be incapable
of registration on Supplemental Register); In re Hask
Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA 'N'
PLACENTA held unregistrable on the Supplemental Register
for hair conditioner); and, In re Harcourt Brace
Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS
held unregistrable on Supplemental Register for arranging
and conducting seminars). See also, In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991) (MULTI-VIS held
unregistrable for "multiple viscosity motor oil"; "…we
conclude that consumers and prospective customers of
applicant's goods would not regard the term 'MULTI-VIS' as
a trademark but, instead, would attribute to such term the
ordinary, straightforward meaning provided by its component
parts and manner of use-namely, multiple viscosity. The
term, therefore, should remain available for use by
applicant's competitors since it primarily signifies and
aptly describes multiple viscosity motor oil.").
Ser. No. 75/165,479
11
In this case, we find no support for the Examining
Attorney's argument that "swivel casters" is generic for a
class of vacuum cleaners.4 In contrast, we find that
"swivel casters" is a generic designation for a prominent
feature of applicant's goods and that, as the designation
is used by applicant, it would only be perceived as such by
consumers.5 We are not persuaded otherwise by applicant's
argument that "SWIVEL CASTERS" is an incongruous composite.
We acknowledge that the Bush Brothers case, on which
applicant relies, alludes to policy considerations which
militate in favor of registering a mark on the Supplemental
Register. See Bush Brothers, supra, 12 USPQ2d at 1059. In
the case at hand, however, "SWIVEL CASTERS" is not
amorphously laudatory, as DELUXE was held to be in Bush
Brothers, when used for canned pork and beans. Rather,
applicant's proposed mark directly and primarily signifies
a prominent feature of applicant's goods.
We also acknowledge that this Board has, in the past,
resolved doubts in favor of registration. See In re Volvo

4 The Examining Attorney's evidence shows that "canister,"
"upright" and other terms are recognized classes of vacuums, but
reveals no class of "swivel caster" vacuums.
5 We rely on the nature of applicant's use of "SWIVEL CASTERS,"
as illustrated by its specimens, catalog and carton, and on
public familiarity with casters in general and swiveling casters
in particular on cleaning machines used in or around the home.
Ser. No. 75/165,479
12
White Truck Corp., 16 USPQ2d 1417, 1421 (TTAB 1990)
(INTEGRAL SLEEPER allowed on Supplemental Register despite
grave doubts of panel therein as to whether designation was
apt descriptive or generic term for trucks with a sleeper
integrated into the cab). In this case, unlike the case
presented to the panel in Volvo, we have no doubt.6
Under the circumstances in this case, as in the
Pennzoil case, the designation sought to be registered is
incapable of designating source and should remain available
for use by applicant's competitors.
Decision: The Examining Attorney's refusal to allow
registration on the Supplemental Register is affirmed.
D. E. Bucher
C. M. Bottorff
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

6 This case is also unlike Volvo because, in Volvo, there was no
evidence of generic use of INTEGRAL SLEEPER when the applicant
therein adopted it for its goods and, after adoption, applicant
aggressively policed use of the designation.