88640429 (T.T.A.B. Jul. 9, 2021)

Solar Sun, LLC

Trademark Trial and Appeal BoardJul 9, 2021

88640429 (T.T.A.B. Jul. 9, 2021)

This Opinion is not a Precedent of the TTAB Mailed: July 9, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re SOLAR SUN, LLC _____ Serial No. 88640429 _____ Frank R. Jakes, Esq. of Johnson, Pope, Bokor, Ruppel & Burns, LLP for Solar Sun LLC. Rebecca A. Smith, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Lykos, Goodman and Dunn, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Solar Sun, LLC (“Applicant”) seeks registration on the Principal Register of the mark Serial No. 88640429 - 2 - for the following services: Retail services through direct solicitation by salespersons directed to end-users featuring solar energy systems in International Class 35. Installation services of solar energy systems in International Class 37.1 The Trademark Examining Attorney refused registration of Applicant’s mark for failure to comply with a disclaimer requirement, under Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a). After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. I. Evidentiary Issues The Examining Attorney attached the dictionary definition of “solar” to her appeal brief. We take judicial notice of the definition: “of, derived from, or relating to, or caused by the sun” and that “solar” is an adjective. The Board may take judicial notice of dictionary definitions retrieved from online sources when the definitions 1 Application Serial No. 88640429 was filed on October 3, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon claim of first use anywhere and first use in commerce since at least April 30, 2019 for the Class 35 and a claim of first use and first use anywhere of March 15, 2019 for the Class 37 services. Applicant provided the following description of the mark: “The mark consists of Abstract sun forming top half of circle setting in abstract body of water forming lower half of circle. Right of circle is the literal term SOLAR in thick letters and SUN in thin letters.” Color is not claimed as a feature of the mark. Page references to the application record refer to the online database pages of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Applicant’s brief is at 6 TTABVUE. The Examining Attorney’s brief is at 8 TTABVUE. The Applicant’s reply brief is at 9 TTABVUE and refiled at 10 TTABVUE. Serial No. 88640429 - 3 - themselves are derived from dictionaries that exist in printed form. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). In its brief, Applicant lists a third-party registration that it previously listed in a response to Office Action but never properly made of record. See In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). Because the Examining Attorney discussed the registration in her brief, and treated the registration as being of record, we have considered the registration of record. In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017) (although the Board does not take judicial notice of registrations, because the examining attorney addressed applicant’s registrations in her brief and neither objected to the discussion of the other, the Board treated both registrations as though they are of record); TBMP § 1208.02 (2021). II. Disclaimer Requirement The sole issue in this appeal is whether the term “SOLAR SUN” in Applicant’s composite mark is merely descriptive of Applicant’s services and requires a disclaimer under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a). Applicant has acknowledged that SOLAR is merely descriptive of the recited services by virtue of the submission of a disclaimer of SOLAR but argues that SUN is not merely descriptive of its services. An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. 15 U.S.C. § 1056. See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015). A Serial No. 88640429 - 4 - “disclaimer” is a statement that an applicant does not claim exclusive rights to an unregistrable component of a mark: [A] disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark. Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954). Absent a showing of acquired distinctiveness, merely descriptive or generic terms are unregistrable under Section 2(e)(1), and therefore are subject to a disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. La. Fish Fry, 116 USPQ2d at 1264 (citing In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)) (“The PTO can condition the registration of a larger mark on an applicant’s disclaimer of an ‘unregistrable component of a mark otherwise registrable.’ 15 U.S.C. § 1056(a)”). See also In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (merely descriptive term unregistrable without a disclaimer). A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it immediately conveys information of a quality, feature, function, or characteristic of the goods or services in connection with which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a term is merely descriptive must be made “in relation to the goods [or services] for which registration Serial No. 88640429 - 5 - is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). For a finding of mere descriptiveness, it is sufficient if the term describes a “single feature or attribute” of the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). In support of the refusal, the Examining Attorney relies on third-party registrations for “solar goods/services” that include disclaimers of “sun.” May 23, 2020 Office Action at TSDR 1, 2-80.2 Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). “Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.” Institut National Des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). The Examining Attorney’s evidence shows that the term “sun” has been regarded as merely descriptive in a number of third-party marks, the registrations of which include disclaimers of the term “sun” in connection with solar energy goods and 2 Some of the submitted third-party registrations are cancelled. Cancelled registrations are not evidence of anything except that they issued. In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006). Serial No. 88640429 - 6 - services. See General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1972) (“Although the registrations are not evidence of use, the registrations show the sense in which the term ‘fiber’ is employed in the marketplace, similar to a dictionary definition.”). Thus, these registrations provide some support for the Examining Attorney’s argument that the term “sun” is merely descriptive of solar related goods or services. Additionally, a few of the registrations submitted by the Examining Attorney contain the non-combined terms “solar” and “sun” and include disclaimers for both terms; one registration containing the combined term “sun solar” includes a disclaimer of the combined term. May 23, 2020 Office Action at TSDR 31-33, 69-71, 79-80. Applicant criticizes this evidence as not showing the combined terms “solar sun” but only showing disclaimers of “sun” in “non-combined” format. 9 TTABVUE 4. Applicant points to a third-party registration for SOLAR SUN RINGS for floating solar heaters for pools that only required a disclaimer of “solar” as evidence that “sun” in its mark need not be disclaimed. Id. Applicant argues that the SOLAR SUN RINGS registration is more probative than the third-party registrations submitted by the Examining Attorney. Id. However, the existence of a third-party registration containing the term “solar sun” that does not include a disclaimer of the term “sun,” does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“[e]ven if some prior registrations had some characteristics similar to (applicant’s) Serial No. 88640429 - 7 - application, the PTO’s allowance of such prior registrations does not bind the Board.”). The Examining Attorney also provided third-party website evidence to show that “sun and solar energy are essentially synonymous and that solar energy systems utilize the sun’s energy and the term is therefore descriptive for the applicant’s service[s].” 8 TTABVUE 5. The Examining Attorney submits that this evidence shows that “solar and sun energy are used interchangeably.” Id. Following are excerpts from these webpages: The website re-volv-org explains that “solar energy is fueled by the sunlight that shines every single day. . . . Solar photovoltaics … turn sunshine (‘photons’) directly into electricity. … In the summer, the sun rises higher in the sky, generating more power at midday when it shines directly on the solar panels. The sun also stays out longer allowing more sunshine to hit the panels over the course of the day and more electricity to be generated.” May 23, 2020 Office Action at TSDR 85, 87. The website nwwindandsolar.com states “[s]olar power is arguably the cleanest, most reliable form of renewable energy available. . . . Solar- power photovoltaic (PV) panels convert the sun’s rays into electricity . . . ” Id. at TSDR 92. The website seia.org states “[s]olar power is energy from the sun that is converted into thermal or electrical energy. . . . Photovoltaics generate electricity directly from sunlight via electronic process . . . ” Id. at TSDR 96. The website archive.epa.gov states “solar energy is simply the light and heat that come from the sun.” The website lists three ways to harness the sun’s energy: Photovoltaic cells “convert sunlight into electricity.” Solar thermal technology uses “heat from the sun” “to make hot water or steam,” and passive solar heating “can be as simple as letting the sun shine through windows to heat the inside of a buildng.” Id. at TSDR 102. Applicant contends that because “sun” is “ubiquitous as a mark” and “relatively weak,” “consumers will not readily reason that ‘sun’ relates to the source of the energy Serial No. 88640429 - 8 - powering the systems in question.” 4 TTABVUE 9. Applicant also argues that the composite term SOLAR SUN is not merely descriptive because “consumers will not immediately connect the term [sun] with a feature of the solar energy systems offered under the mark.” Id. Applicant submits that “solar sun” is suggestive because “solar” is an adjective and “sun” is a noun and that “[t]his linguistic distinction is significant when conducting a ‘merely descriptive vs. suggestive’ analysis.” Id. Applicant also argues that mult-stage reasoning is required to connect SOLAR SUN to the offered services. Id. Applicant has not argued that “solar” is not merely descriptive of its services. As shown by the evidence, the individual words “solar” and “sun” in the applied- for mark are merely descriptive of Applicant’s solar energy services. Moreover, the clearly descriptive nature of the individual words, “solar” and “sun” is not lost when the words are combined to form “solar sun.” When viewed in connection with sun- derived solar energy services it takes no imagination or multi-stage reasoning to conclude that “solar sun” describes characteristics or features of Applicant’s solar energy services. Although Applicant argues otherwise, the combination of the adjective “solar” and the noun “sun” does not create any incongruity nor does it make the combined term any less descriptive than the terms taken alone. Rather, these descriptive terms, when combined as “solar sun,” describe or name a feature or characteristic of the services, with “sun” merely emphasizing the the nature of the solar energy services which are derived from the sun. See In re Monsanto Company, 151 UPSQ 509, 510 Serial No. 88640429 - 9 - (TTAB 1966) (‘“LEVN’ is the phonetic equivalent of ‘LEAVEN’ and ‘LITE’, as applied to applicant’s goods, will have no significance other than ‘LIGHT’ meaning weight; ‘LEVN LITE’ will immediately indicate to purchasers of leavening agents the nature and character of such goods; and while the word ‘LITE’ may be somewhat redundant in view of the definition of ‘leaven’, the addition thereof to the term ‘LEVN’ serves to emphasize rather than lessen the descriptive connotation of the composite mark.”). See also In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716 (TTAB 1992) (DJDJ held merely descriptive of disc jockey services, “the combinations of these words [DJ] would not, simply because of their repetition, be rendered something more than descriptive.”). III. Conclusion We conclude that, when used in connection with Applicant’s services, the term SOLAR SUN is merely descriptive of the identified services. Decision: We affirm the refusal to register Applicant’s mark based on the requirement, made under Trademark Act Section 6(a), for a disclaimer of the wording “solar sun.” However, if Applicant submits a disclaimer of SOLAR SUN to the Board within thirty days of the mailing date of this decision, the requirement for the disclaimer will have been met and the application will proceed to publication for opposition in Serial No. 88640429 - 10 - the Official Gazette.3 Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1218 (2021). 3 The disclaimer should read as follows: “No claim is made to the exclusive right to use “solar sun” apart from the mark as shown.”