TreeRadar, Inc.

Trademark Trial and Appeal Board

Jul 15, 2011

No. 77579817 (T.T.A.B. Jul. 15, 2011)

Mailed: July 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TreeRadar, Inc.
________

Serial No. 77579817
_______

James C. Wray, Esq. for TreeRadar, Inc.

Kristina Morris, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Bucher, Holtzman and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

TreeRadar, Inc. (applicant) has filed an application to
register the standard character mark TREERADAR on the Principal
Register for goods and services ultimately identified as
follows:1
Radar imaging systems for non-invasive assessment of
tree and root health, comprised of radars, image
processors, software, mobile mounts, carriages,
printed instructions and carrying cases, all sold
together as a unit, in Class 9; and

1 Serial No. 77579817 filed September 26, 2008 based on an allegation
of first use and first use in commerce in May 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77579817
2
Scientific and technological services, namely,
measuring, imaging and analyzing internal and sub-
surface wood structure, viability and decay and root
masses, and quantitative analysis of tree health and
structural integrity, in Class 42.

The trademark examining attorney initially refused
registration under Section 2(e)(1) of the Trademark Act on the
ground that applicant's mark is merely descriptive of its goods
and services and, moreover, that applicant is barred by
res judicata from relitigating this issue in view of a decision
by the Board on its previous application (Serial No. 78714647).
In response, applicant amended the application to seek
registration under Section 2(f) of the Act, and subsequently
submitted a declaration of over five-years substantially
exclusive and continuous use of the mark in commerce. The
examining attorney rejected the 2(f) evidence as insufficient and
issued a new refusal under Section 2(e)(1) based on genericness.2
Applicant argued in response that the mark is neither generic nor
merely descriptive,3 and further that res judicata does not apply
because applicant is seeking registration under Section 2(f).

2 The examining attorney based the genericness refusal on Section 23 of
the Act, but because applicant is seeking registration on the Principal
Register and not the Supplemental Register, the appropriate basis for
refusal remains Section 2(e)(1).
3 Apart from the question of res judicata, we note that when applicant
initially amended the application to seek registration under Section
2(f) it was not an alternative one and thus applicant effectively
conceded that the mark is not inherently distinctive. See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988). It was not until after the examining
attorney issued a final refusal that applicant argued against the
Serial No. 77579817
3
The refusals were ultimately made final, and applicant
appealed. Applicant and the examining attorney have filed
briefs.
We turn first to the refusal based on res judicata. A
second suit is barred by res judicata if (1) there is identity of
parties (or their privies); (2) there has been an earlier final
judgment on the merits of a claim; and (3) the second claim is
barred on the same set of transactional facts as the first. See
Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.2d 1368,
79 USPQ2d 1376, 1378 (Fed. Cir. 2006; Mayer/Berkshire Corp. v.
Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1312
(Fed. Cir. 2005).
The prior case (application Serial No. 78714647) involved
the same applicant, the same term, TREERADAR, the same goods as
those herein, and substantially the same services.4 Applicant
does not argue otherwise. In a final decision issued September
18, 2008, the Board affirmed the examining attorney's refusal to
register the mark under Section 2(e)(1) of the Trademark Act on
the ground that the mark is merely descriptive of applicant's

descriptiveness refusal in the alternative. Nevertheless, because the
examining attorney did not treat the matter as conceded, we will not do
so here.
4 The services in the prior application were identified as "scientific
and technological services, namely, measuring, imaging and analyzing
sub-surface tree viability and decay and internal structure of trees
and root masses, and quantitative analysis of tree health and
structural integrity." The present application, which substitutes
"internal and sub-surface wood structure" for the wording "internal
structure of trees," is broad enough to encompass the earlier services.
Serial No. 77579817
4
goods and services. Thus, the doctrine of res judicata applies
and precludes relitigation of the issue of descriptiveness.
Accordingly, we turn to the question of whether the mark is
generic and, if not, whether the evidence is sufficient to
establish that the mark has acquired distinctiveness under
Section 2(f).
The test for determining whether a mark is generic involves
a two-step inquiry. First, what is the genus (category or class)
of goods or services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to refer
to that genus (category or class) of goods or services? See In
re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378,
1380 (Fed. Cir. 2007) (quoting H. Marvin Ginn Corporation v.
International Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)).
The Office has the burden of proving the genericness of a
term by "clear evidence" of the public's understanding thereof.
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
There is no dispute that the category or class of goods and
services is the wording used in the application to identify the
goods and services. See Magic Wand, Inc. v. RDB, Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) ("...a proper
genericness inquiry focuses on the description of services [or
Serial No. 77579817
5
goods] set forth in the [application or] certificate of
registration"). As set forth in the application, the category of
goods comprises "radar imaging systems for non-invasive
assessment of tree...health"; the category of services comprises
"imaging...internal and sub-surface wood structure, viability and
decay..."
The question, then, is whether TREERADAR is understood by
the relevant public, in this case professional arborists and
other tree care specialists, primarily to refer to the category
of goods and/or services. See Magic Wand, 19 USPQ2d 1551;
Marvin Ginn, 228 USPQ at 530.
Evidence of the relevant public's understanding of a term
may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. See Merrill Lynch, 4 USPQ2d at 1143. See also In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007) (online sources are probative of how a term
would be perceived); In re Reed Elsevier Properties Inc., 482
F.3d 1376, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007) ("third-party
websites are competent sources to show what the relevant public
would understand a term to mean").
We note that TREERADAR is properly considered a compound
word for purposes of the genericness analysis rather than a
phrase, as the two terms appear without any space or separation
Serial No. 77579817
6
between them. See In re American Fertility Society, 188 F.3d
1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) regarding the
genericness test set forth in In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (finding SCREENWIPE generic
for premoistened, antistatic cloth for cleaning computer and
television screens).
Where a mark is a compound word (such as SCREENWIPE) the
USPTO may satisfy its burden of proof with dictionary definitions
or other evidentiary sources that each of the constituent words
is generic, and "if the compound word would plainly have no
different meaning from its constituent words, ... then the
compound word too has been proved generic. No additional proof
of the genericness of the compound word is required." Id. at
1836. See also In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92
USPQ2d 1682, 1685 (Fed. Cir. 2009).
The examining attorney submitted dictionary definitions of
the individual words "tree" and "radar," including the following:
TREE: Any perennial woody plant of considerable
size (usually over twenty feet high) and
growing with a single trunk.5

RADAR: A device or system consisting usually of a
synchronized radio transmitter and receiver
that emits radio waves and processes their
reflections for display and is used
especially for detecting and locating objects

5 Webster's Revised Unabridged Dictionary (1996, 1998).
Serial No. 77579817
7
(as aircraft) or surface features (as of a
planet).6

The term RADAR is generic for applicant's goods and
services. Applicant's goods are radar, and its "imaging"
services are broad enough to include imaging using radar.
Applicant's RADAR is used on a TREE. The term TREE names the
focus or object of applicant's radar imaging system and services.
As described in the identification of goods, applicant's radar is
used to assess the health of trees. The services, described
broadly as "imaging...internal and subsurface wood
structure...for viability and decay," would include imaging of
the internal and subsurface structure of a tree for viability and
decay.7
The generic meaning of the individual terms "tree" and
"radar" is confirmed by applicant's own use of the terms on its
specimen label and the promotional information on its website,
examples of which are reproduced below.

6 Merriam-webster.com.
7 The radar detects, for example, hollows and cracks inside the trunk
which indicate conditions of decay in the tree. See App's. Resp. dated
June 15, 2010; exh. 117 (printout from applicant's website,
treeradar.com). The definition of "radar" suggests that radar detects
only "surface" objects. However, applicant's radar system uses
technology that enables the detection of "subsurface" objects as well.
As described on applicant's website, the technology is known as "ground
penetrating radar (GPR)" which, according to the website, "is an
established technology that is used worldwide to non-destructively
investigate subsurface objects. Here, 'subsurface' means 'below the
bark', i.e., inside the solid wood, or 'below the grade', i.e., root
bed, for the trunk and subsurface scans, respectively."
Serial No. 77579817
8

These materials state, for example, that applicant provides
"Radar Imaging For...Assessment of Tree...Health"; that
Serial No. 77579817
9
applicant's "radar imaging system creates...[an] image of the
internal structure of a tree..."; and that applicant's "TRU [Tree
Radar Unit]...can detect...early stage decay." Applicant's own
use of the individual words in a generic manner is strong
evidence that the combined term is generic. See, e.g., Gould
Paper Corp., 5 USPQ2d at 1112 ("[applicant's] own submissions
provided the most damaging evidence that [the word SCREENWIPE is
generic]."); In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) ("Evidence of the context in which a
mark is used...in advertising material...is probative of the
reaction of prospective purchasers to the mark"); In re
Educational Communications, Inc., 231 USPQ 787, 790 (TTAB 1986)
("applicant's own highly descriptive usages of the components of
its asserted mark...is strong evidence of its generic nature").
Under the analysis in Gould, where the term SCREENWIPE was
held generic for cloth for cleaning computer and television
screens, the term TREERADAR is generic for radar imaging goods
and services used to assess the health of trees. Based on the
dictionary definitions and applicant's own labeling and
promotional materials, the individual words "tree" and "radar"
are generic, and the relevant public would not understand
TREERADAR to have any meaning apart from the meaning of the
individual terms combined. TREERADAR "immediately and
Serial No. 77579817
10
unequivocally describes the purpose, function and nature of the
goods" and services. Gould Paper Corp., 5 USPQ2d at 1112.
The record also includes evidence showing use of the
combined term "tree radar" by others in a generic manner to refer
to the same type of goods and services provided by applicant.
This evidence consists of excerpts of articles from the
LexisNexis database (supplemented by applicant's submission of
the full text of the articles) and printouts from third-party
websites. Pertinent portions of these materials are reproduced
below (emphasis added):
HEADLINE: Downtown tree on chopping block
BODY: ... Tree radar tests, performed in 2003 and
2006, showed irreparable damage, said Ray Weaver, a
spokesman for the city. The non-invasive tests
shoots electromagnetic waves into the trunk and
produces a cross-sectional image of the tree, showing
the amounts of hard and soft wood present, he said.
The Capital (Annapolis, MD) (August 17, 2006)

HEADLINE: Device helps show whether trees are
dangerous
BODY: .... Today, new technology would allow
arborists to see inside such a tree to precisely
gauge the extent of the damage. ... "It's basically
a virtual drill," Tony Mucciardi of TreeRadar Inc.
told local arborists Tuesday during a visit to
Rochester. ... At $17,500, tree radar isn't
something to rush out and buy at the local hardware
store. ... Within a few years, the company expects
that arborists across the country will be offering
tree radar analysis to homeowners for a few hundred
dollars. ... Rochester won't likely make the
investment in tree radar any time soon but Nolan can
see its benefit.
Rochester Democrat and Chronicle (New York) (October
27, 2005)

Serial No. 77579817
11
AUSTIN NEWS - KXAN.COM
[Heading] City: 30 high-risk Zilker trees must go:
... "Compared to some of the trees in the pool area,
that's one of the better ones," said Passmore. "That
tree in particular was one that rated 100 percent
sound wood at every tree radar point that we took."
... The analysis included ... using radar imaging to
determine the internal wood structure.
kxan.com

AUSTIN CITY COUNCIL - AGENDA
Subject: ...tree assessment services for the Barton
Springs Pool area in an amount not to exceed $56,456.
... [T]rees were identified as needing additional
assessment to better determine their health,
including the use of advanced techniques, such as
tree radar. ... The Consultant will...investigate
the structural integrity of the lower and upper trunk
sections and branches using non-invasive technology
such as a tree radar....
ci.austin.tx.us

PEOA Forum at Nillumbik 06 September 2007 Newsletter:
Vegetation enforcement and tree identification:
Arborist Nick Archer
Nick Archer, an arborist that has worked with
Nillumbik Shire gave an excellent presentation on
tree poisoning, tree protection fences, reducing
construction impacts and hazardous trees. However he
ran out of time and has not covered tree radar or DNA
testing of trees.
http://planning-enforcement.com/doc/PEOA_Newsletter_No_1.doc

Tree Checks, Tree Management Systems - Professional
Arboricultural Consultants
We provide: ... Root tracking and mapping services
(tree radar); Internal trunk cavity detection (tree
radar)....
homeimprovementpages.com.au

Tree Micro-Ecology: Perceptions of Disease & Decay
in Trees
TEP'S TREE MICRO-ECOLOGY SEMINAR - HIGHLIGHTS
TEP had put together a very compact, in-depth
programme covering the micro-ecology of the living
soil, use of innovative devices for tree decay
Serial No. 77579817
12
detection (thermal imaging and tree radar), and tree
condition surveys in the UK and USA.
treeworks.co.uk

Contrary to applicant's contention, the fact that some of
the websites are from foreign sources does not detract from their
probative value. These websites are readily accessible and
available to arborists in the United States, and the information
about new technology in their field would likely be of interest
to them, regardless of the country of origin. See In re Remacle,
66 USPQ2d 1222, 1224 n.5 (TTAB 2002) ("[I]t is reasonable to
assume that professionals in medicine, engineering, computers,
telecommunications and many other fields are likely to utilize
all available resources, regardless of country of origin or
medium."). See also In re Bayer Aktiengesellschaft, 82 USPQ2d at
1835. Furthermore, applicant itself has relied on foreign
websites to support its contention that TREERADAR is recognized
as a mark.
Applicant argues that these materials "mistakenly" refer to
applicant's mark without capitalization and that the "incorrect"
spellings and usage of applicant's mark are reporter's errors
"which have been corrected." Br., p. 5. There is no evidence
that the asserted errors have been corrected, and in any event,
these materials still provide evidence of the context of use, the
exposure of the term in a generic manner to the relevant public,
Serial No. 77579817
13
and the meaning the public is likely to associate with the term
as a result of such use.
Applicant also argues that every mention of the term in
these materials refers to applicant and its product.8 This is
not surprising considering that applicant apparently holds a
patent for its particular use of GPR technology (i.e., to detect
internal decay in a tree),9 and appears to be one of the only
producers of this type of radar device. Further, to the extent
that some of these third parties may be customers of applicant,
as applicant claims, we view this as evidence that even
applicant's own customers do not recognize "tree radar" as a
mark. They may recognize applicant as a producer of a "tree
radar" device but the term "tree radar" is used by these third
parties in a generic manner to denote a particular type of device

8 Applicant has resubmitted a declaration by its president, Anthony N.
Mucciardi, that was originally submitted in the prior application but
rejected by the Board in that case as untimely. The declaration
attests to applicant's business relationships with entities identified
in certain evidence made of record by the examining attorney in that
case. Mr. Mucciardi ultimately states in the declaration that "There
is no attachment in the examining attorney's Attachments 1-32
which...does not refer to Applicant's TreeRadar." Inasmuch as none of
the referenced attachments was made of record in the present case, the
declaration is of little probative value. Nevertheless, we will assume
for purposes of considering applicant's argument that Mr. Mucciardi's
statement applies to the examining attorney's evidence in the present
case.
9 Mr. Mucciardi, states: "TreeRadar is a novel application - novel
enough that we got a patent - of that technology [GPR] to provide a
noninvasive way of looking into the tree trunk for internal decay and
below ground for mapping of roots." App's. Resp., June 15, 2010, exh.
104 (Tree Services magazine, April 2007; article entitled "Radar Vision
- New technology offers arborists a noninvasive look").
Serial No. 77579817
14
used for assessing tree health, not to indicate the source of
such goods.
Even if the record reflected no use of this term by others,
it would not be dispositive where, as here, the term clearly
would be understood as having a generic meaning. See In re
Active Ankle Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007)
("Even if applicant was the first and/or sole user of a generic
term or phrase,...that does not entitle applicant to register
such a term or phrase as a mark."); In re National Shooting
Sports Foundation, 219 USPQ 1018, 1020 (TTAB 1983). As we noted
earlier, the relevant inquiry is whether the relevant public
would understand the term to have generic significance. It is
not necessary to show that the relevant public actually uses the
term generically. See In re 1800Mattress.com IP LLC, 586 F.3d
1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).
The examining attorney has established prima facie that the
relevant public would understand TREERADAR to identify a type of
radar imaging system and service. Applicant's arguments and
evidence fail to rebut this showing.10

10 Contrary to applicant's contention, the examining attorney's
suggestion in the previous application that applicant amend its
application to the Supplemental Register is not evidence in the present
case that the mark is not generic. Suffice it to say that the issue in
that case was descriptiveness, not genericness, and an amendment to the
Supplemental Register was neither proffered by applicant nor accepted
by the examining attorney.
Serial No. 77579817
15
Applicant has submitted evidence from various news sources
and other publications, as well as third-party websites which,
according to applicant, demonstrates that these words have been
used by applicant's customers and others as a trademark to
indicate source or origin in applicant for its radar imaging
goods and services. Representative examples of applicant's
evidence are excerpted below (emphasis added).
Tree Services: For Tree Care/Landscape Contractors &
Arborists:
[article entitled] Radar Vision - New technology
offers arborists a noninvasive look:
Why, then, would a tree care professional pull out a
drill or boring device to check on the health status
of a prized tree? Tony Mucciardi wondered the same
thing, and from his questioning, TreeRadar
(www.treeradar.com) was born. ... "TreeRadar is a
novel application...of [GPR] technology to provide a
noninvasive way of looking into the tree trunk for
internal decay...."
Tree Services [magazine] (April 2007)
DNR Forest Service to Test Health of Trees at
Government State House Using Special MRI-LIKE
Equipment:
Three linden trees and two magnolia trees will be
evaluated for possible decay using a Tree Radar unit,
the most advanced technology available for the
management of historic trees in our state's capital.
dnr.state.md.us (July 13, 2005)

The Washington Post
Scar-Free Diagnoses For Trees in Trouble
Radar Device Allows Gentler Exams
The tree-exam invention, called a Tree Radar Unit,
looks like a small shoebox and is built around the
principles of ground-penetrating radar, which is
used, among other functions, to scan for underground
utility pipes.
washingtonpost.com (November 10, 2005)

Serial No. 77579817
16
DTS Dynamic Tree Systems
Tree Radar Evaluations
Scanning A Tree
Scanning a tree is a straightforward process at the
site. For trunk scans, several elevations designated
for measurement are marked on the tree. The handheld
transceiver of the TRU is moved around the tree at
these markers as the equipment sends pulses into the
trunk and records all signals reflected from the
interior.
dynamictreesystems.com
FRONTIER TREE SERVICES - "We'll go out on a limb for
you!"
Tree Radar Unit (TRU) and ground penetrating radar
(GPR)
TreeRadar also scans below ground to examine the
number, location, length and density of tree
roots.... ... Use of GPR instrumentation for
internal trunk decay detection and subsurface
structural root mapping is now being used in the
arboricultural field via a patented Tree Radar Unit.
frontiertreeservices.com

TREERADARAUSTRALIA
The only non-invasive method of decay detection in a
tree:
[the web page lists "Tree Radar Services" along with
categories such as "Home" "Reports and Surveys" "FAQ"
and "Enquiries"]
Tree Radar Australia also uses Tree Radar Unit™
(TRU™) to provide the only, completely non-invasive
method of tree decay detection and tree root
detection available in Australia.
treeradaraustralia.com.au

pba solutions
Ground Penetrating Radar (GPR) - TreeRadar for tree
decay and locating tree roots:
Using the latest radar technology we can under take
[sic] non-invasive tree decay assessments. ...
Other services for GPR - TreeRadar:
Our TreeRadar software has been specifically designed
to locate tree roots and assess tree decay.
pba-solutions.com

Serial No. 77579817
17
Matthew's Tree Service & Landscaping
[lists "Tree Radar Evaluations" and "Noninvasive Tree
Radar" along with other categories of services, e.g.,
"Construction," "Habitat," and "Crane Removal"]
Noninvasive Evaluation Using Tree Radar™
Overcoming disadvantages of past techniques:
Matthew's Tree Service Inc. now provides an
innovative and noninvasive means for tree evaluation
using Tree Radar™.
matthewstreeservice.com

SORBUS INTERNATIONAL LIMITED
TreeRadar Root Survey System:
Ground penetrating radar system for the detection and
mapping of tree roots and other underground targets.
sorbus-intl.co.uk

Tree Associates Services
[The navigation pane of the website lists "Tree Radar
Service" along with other service categories, e.g.,
"Evaluation of Tree Health," "Tree Preservation
Programs" and "Tree and Plant Appraisal"]
Tree Radar Unit (TRU) Services:
Tree Associates is one of the few companies that own
a Tree Radar Unit (TRU) which utilizes ground
penetrating radar to map decay and locate tree roots
in a non-invasive manner. Being one of the first
users of and conducting grant-funded research with
this cutting-edge technology has given Tree
Associates an intimate knowledge of this tool's
capabilities.
treeassociates.net

Arborist OnSite, Inc.
Tree Radar is a non-invasive imaging system that will
show you the internal structure of a tree....
arboristonsite.com

While the evidence submitted by the examining attorney
clearly shows use of TREERADAR in a generic manner, most of
applicant's evidence of claimed trademark use and recognition is
ambiguous, at best. The evidence states, for example, that "Tree
Serial No. 77579817
18
Radar is a non-invasive imaging system that will show you the
internal structure of a tree"; that the "Tree Radar Unit"
provides "a method of decay detection." The evidence refers to
"a patented Tree Radar Unit"; and the "cutting edge technology"
of "a Tree Radar Unit"; and lists "Tree Radar" as a type of
service, e.g., "Tree Radar Service"; "Tree Radar Evaluation,"
along with other generic categories of services. In one instance
the term is used in the manner of a verb ("TreeRadar for tree
decay") which indicates generic use rather than trademark use.
Mr. Mucciardi himself states, in his interview with Tree Services
magazine, that "TreeRadar...provide[s] a noninvasive way of
looking into the tree trunk for internal decay...."
We note applicant's claim that Tree Radar Australia may be a
customer of applicant. However, that entity is using "Tree
Radar" not as identifying a product or service from applicant but
as part of its own company name. Another entity ("pba
solutions") appears to be using TreeRadar to refer to its own
product ("Our TreeRadar software has been specifically designed
to...assess tree decay"). This evidence suggests that the term
may not be viewed as identifying any one source, or source in
applicant alone.
Furthermore, the mere fact that the term is depicted with
initial capital letters in these materials, while perhaps serving
to highlight this new product and technology (e.g., "tree-exam
Serial No. 77579817
19
invention called a Tree Radar Unit"; "a Tree Radar unit, the most
advanced technology available"), does not change it into a
registrable term. See In re Noon Hour Food Products Inc., 88
USPQ2d 1172, 1173 n.2 (TTAB 2008) ("[M]inor variations in the
display of a generic term...typically are legally
insignificant."); In re Hannifin Corporation, 122 USPQ 298 (TTAB
1959) ("An apt descriptive name of a product remains an apt
descriptive name irrespective of how it is spelled or
displayed").
We find that the clear and unambiguous meaning of the
components comprising the term "TREERADAR" as well as the generic
manner of use of the term by others is far more convincing
evidence of public perception of the term than applicant's
evidence which at most shows that a handful of customers view
TREERADAR as a mark.
Although we have determined that TREERADAR is generic, in
the interest of completeness, we will address the question of
whether, assuming the mark is not generic, the evidence of
acquired distinctiveness is sufficient to support registration
under Section 2(f).
The burden is on applicant to show acquired distinctiveness,
and the more descriptive the term, the heavier that burden.
Yamaha International Corp., 6 USPQ2d at 1008. It is clear based
on the foregoing evidence that the term TREERADAR, if we had not
Serial No. 77579817
20
found it to be generic, is certainly highly descriptive of
applicant's goods and services. Thus, strong proof of acquired
distinctiveness is required, and applicant has not provided it.
To establish acquired distinctiveness, "an applicant must
show that 'in the minds of the public, the primary significance
of a...term is to identify the source of the product [or service]
rather than the product [or service] itself.'" In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812
(Fed. Cir. 2001), quoting Inwood Labs., Inc. v. Ives Labs., 456
U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).
Applicant has submitted, in addition to the examples of
purported trademark usage noted above, the declaration of Mr.
Mucciardi attesting to substantially exclusive and continuous use
of the mark since 2004 on the goods and since 2003 in connection
with the services.
It has been consistently held that a claim of continuous and
substantially exclusive use as a mark for a number of years,
without specific evidence of the extent of use and exposure of
the mark to the relevant public, is insufficient in and of itself
to support registration under Section 2(f) where the term sought
to be registered is highly descriptive in nature. See Noon Hour
Food Products, Inc., 88 USPQ2d at 1181 (evidence of nearly a
hundred years of use in commerce insufficient to establish
acquired distinctiveness in light of the highly descriptive
Serial No. 77579817
21
nature of BOND-OST for cheese); In re Synergistics Research
Corporation, 218 USPQ 165, 167 (TTAB 1983) and cases cited
therein. See also In re Kalmbach Publishing Co., 14 USPQ2d 1490,
1492 (TTAB 1989) (claim of 12-years' use insufficient); In re
Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) (PROTECTIVE EQUIPMENT
highly descriptive of burglar and fire alarms; "a showing
considerably stronger than a prima facie statement of five years’
substantially exclusive use is required.").
Applicant did not attempt to show that its mark has been the
subject of substantial sales or advertising, or to provide any
other evidence which would help determine the actual extent of
purchaser exposure to and/or recognition of the mark.
Considering the highly descriptive nature of TREERADAR,
applicant's minimal evidence of use and recognition of the mark
is far from sufficient to demonstrate that the primary
significance of TREERADAR "in the minds of the public" is to
identify the source of applicant's goods and services.
Therefore, we find that applicant has not shown that its mark has
acquired distinctiveness.
Decision: The refusals under Section 2(e)(1) of the Act on
the grounds that the mark is generic, that based on res judicata
the mark is merely descriptive, and that the evidence is
insufficient to establish acquired distinctiveness are affirmed.