TreeRadar, Inc.

Trademark Trial and Appeal Board

Sep 18, 2008

No. 78714647 (T.T.A.B. Sep. 18, 2008)

Oral Hearing: July 15, 2008 Mailed: September 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TreeRadar, Inc.
________

Serial No. 78714647
_______

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

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

Before Hohein, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

TreeRadar, Inc. has applied to register on the
Principal Register the mark TREERADAR in standard
characters for “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 International Class 9; and “scientific and
technological services, namely, measuring, imaging and
analyzing sub-surface tree viability and decay and internal
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78714647
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structure of trees and root masses, and quantitative
analysis of tree health and structural integrity” in
International Class 42.1
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark is merely descriptive of a
feature or quality of applicant’s goods and services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs and
applicant filed a reply brief. In addition, applicant and
the examining attorney presented arguments directed toward
the issue on appeal in an oral hearing held on July 15,
2008.
Evidentiary Issues
Before turning to the substantive ground for refusal,
we note that applicant has submitted four exhibits with its
main brief. Exhibits 101, 102 and 104 consist of materials
that previously were made of record by applicant and the
examining attorney during prosecution of the involved
application. As such, the materials comprising Exhibits

1 Application Serial No. 78714647 was filed on September 16,
2005, based on applicant’s assertion of August 2004 as the date
of first use of the mark anywhere and in commerce on the goods
and May 2004 as the date of first use of the mark anywhere and in
commerce in connection with the services.

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101, 102 and 104 are at best duplicative and cumulative of
evidence timely made of record, and thus need not and
should not be resubmitted. See Life Zone, Inc. v.
Middleman Group, Inc., ___USPQ2d___, (TTAB July 15, 2008).
Exhibit 103 consists of an October 10, 2007
declaration of applicant’s president that was not
previously made of record. Applicant argues that by
submitting evidence with her denial of applicant’s request
for reconsideration, the examining attorney has introduced
evidence “after Appeal” and that, as a result, “the
Examining Attorney has opened the door to rebuttal evidence
by Applicant and has waived any objection to its
introduction” (reply brief, p. 1). Applicant’s argument is
unpersuasive. When a timely request for reconsideration of
an appealed action is filed (with or without new evidence),
the examining attorney may submit, with his or her response
to the request, new evidence directed to the issue(s) for
which reconsideration is sought. However, the applicant
may not submit additional evidence in response to any
evidence submitted by the examining attorney unless the
examining attorney’s action is a nonfinal action to which a
response may be filed. Otherwise, if the applicant wishes
to submit additional evidence, it must file a request for
remand. See TBMP §1207.04 (2d ed. rev. 2004) and the
Ser No. 78714647
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authorities cited therein. Inasmuch as the examining
attorney’s September 4, 2007 denial of applicant’s request
for reconsideration was not a non-final action, and
applicant did not request remand of the instant case in
order to submit additional evidence, the October 10, 2007
declaration submitted with applicant’s appeal brief is
untimely, and it has not been considered. See Trademark
Rule 2.142(d) (the record in the application should be
complete prior to the filing of an appeal). We note,
however, that had we considered this exhibit in our
determination of the issue on appeal, the result would be
the same.
Issue on Appeal
As noted above, the issue on appeal in this case is
whether applicant’s mark, TREERADAR, merely describes a
function, feature or characteristic of the goods and
services recited in the involved application.2

2 We note that with its June 7, 2007 response to the examining
attorney’s final Office action, applicant submitted the June 1,
2007 declaration of its president stating that the TREERADAR mark
has been in use since September 8, 2004 on its goods and August
9, 2003 in connection with its services. We further note,
however, that applicant has not requested an amendment to seek
registration under Section 2(f) of the Trademark Act based upon a
showing of acquired distinctiveness. Nor do we construe the June
1, 2007 declaration as constituting such a request. Accordingly,
the issue of acquired distinctiveness is not before us.

Ser No. 78714647
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Applicant contends that its proposed mark is
suggestive and does not immediately describe its goods or
services or a characteristic thereof. Applicant further
argues that the examining attorney’s evidence points to use
of TREERADAR as applicant’s mark rather than use of such
designation as a merely descriptive term.
With its application, applicant submitted a label,
reproduced below, as a specimen of use for the goods
identified by the subject mark.

In addition, applicant submitted an advertising flier,
reproduced below, as a specimen of use for the services
identified by the subject mark.

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Applicant further relies upon the above-referenced
June 6, 2007 declaration of its president, and additional
advertisements taken from its Internet website
(www.TreeRadar.com).
The examining attorney maintains that the mark merely
describes a feature or quality of the goods and services.
In support of the refusal, the examining attorney has made
of record dictionary definitions of “tree” and “radar.”
According to these definitions, “tree” may be defined as “a
perennial woody plant having a main trunk and usually a
distinct crown”3 and “radar” may be defined as “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 (as aircraft)
or surface features (as of a planet).”4 The examining
attorney has further made of record articles and
advertisements retrieved from Internet webpages. Excerpts
from these webpages follow (emphasis added):
Tree Radar
Tree roots can cause a variety of problems and
there are a number of reasons why you might want
to find out where tree roots are. Previously,
without labour intensive investigations, it has

3 American Heritage Dictionary of the English Language, 4th ed.
Houghton Mifflin Company, 2000.
4 Merriam-Webster OnLine, www.m-w.com.
Ser No. 78714647
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been difficult to determine where tree roots are.
More recently air lances or spades have been
developed that can expose roots. However use of
the air spade necessitates disturbance and is
only practicable when there is access to the soil
around the tree. In hard landscapes, tree radar
will provide information cost effectively and
quickly.
(www.treeradar.co.uk)5

Correspondent, Julie Carey, reported during WRC
4’s December 2nd 4pm news broadcast on the Barnaby
Woods tree task force, use of tree radar and
changes in the city’s procedure for tree removal.
The operation of the tree radar was shown, and
was described as a tool to be used when the
conclusion, arising from the visual inspection
was a “close call.”

The city is using the tree radar unit first on
Barnaby Street, where outraged residents won a
reprieve for most of the old oaks that define the
neighborhood.
(www.barnabywoods.org)

Tree Radar
Pogo Technicians use tools much like an MRI,
which solves a critical medical need with a very
high-resolution, non-invasive imaging of the
body. The Tree Radar imaging system creates the
same type of high-resolution, non-invasive image
of the internal structure of a tree and its root
mass. This image fills a critical gap in the
quantitative analysis of tree health and

5 Foreign publications may be considered in determining how a
term can be perceived in the United States. See In re Remacle,
66 USPQ2d 1222, 1224 n.5 (TTAB 2002). More recently, the Federal
Circuit has explained that “[i]nformation originating on foreign
websites or in foreign news publications that are accessible to
the United States public may be relevant to discern United States
consumer impression of a proposed mark.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir.
2007). Thus, we have considered this article in our
determination herein.

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structural integrity. This instrument will scan
the trunk, the limbs, as well as the roots of a
tree.
Trunk Scan:
Typically arborists drill into trees to assess
the condition of trunks and by doing this they
are potentially spreading existing decay or
introducing new decay organisms into the tree.
Equipped with radar, Pogo Tree experts can
harmlessly obtain multiple high resolution trunk
scans which identify and characterize structural
defects including decay and cracks.
Limb Scan:
Pogo’s radar system can also detect internal
cracks and cracks that have progressed to the
outer surface, but are not yet visible.
Root Scan:
Most trees fall over because of compromised
roots. The Pogo radar system can non-invasively
inspect soils either covered or uncovered to
provide images of the layout and density of
subsurface structural roots.
(www.pogoorganics.com)

So, how thick is the healthy wood in a trunk or
branch? Researchers are working to address this
big question. At the present time, arborists are
limited in their ability to measure and evaluate
the internal structure of a trunk or limb. The
following are procedures with limited potential
to evaluate the internal structure of trees.

Coring devices:
Increment Borer…
Drill with small drill bit…
Resistograph…
Digital Microprobe…

Listening and radar devices:
Rubber mallet…
PiCUS Sonic Tomography…
Tree Radar – A hand held radar device is run
around the trunk/branch. The computer database
is sent to the company for evaluation.
(www.cmg.colostate.edu/gardennotes)

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It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality, feature or
characteristic thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test.” In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
In the instant case, the evidence made of record by
the examining attorney and applicant supports a finding
that, as applied to applicant’s goods and services, the
Ser No. 78714647
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term TREERADAR would immediately describe, without
conjecture or speculation, a significant characteristic or
feature of such goods and services, namely, that they
utilize radar imaging to measure and assess the internal
and sub-surface health of trees. The above-referenced
dictionary definitions establish that TREERADAR merely
describes an imaging system consisting in part of a
synchronized radio transmitter and receiver – RADAR - that
uses radio waves to locate and analyze the roots, trunk and
crown of a perennial woody plant – a TREE. Applicant’s
goods are radar imaging systems used to assess tree and
root health. Applicant’s services involve using radar for
measuring, imaging and analyzing tree and root health,
viability, decay and structural integrity. Thus, as
defined, TREERADAR merely describes a central function,
feature or characteristic of the recited goods and
services.
Further, applicant’s specimens, submitted with the
involved application and reproduced above, indicate that
TREERADAR is used in connection with goods and services
that provide “radar imaging for non-invasive assessment of
tree and root health.” The specimens further indicate that
applicant’s goods and services provide scans producing both
two dimensional and three dimensional images that allow
Ser No. 78714647
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“rapid, non-invasive inspection” of tree trunks and roots.
As such, applicant’s own specimens support a finding that
TREERADAR merely describes a function or feature of the
recited goods and services.
In addition, the Internet articles and advertisements
submitted by the examining attorney establish that the
goods and services identified by applicant’s TREERADAR mark
are useful, inter alia, to arborists seeking a non-invasive
method of assessing the health of trees and their roots.
Certain of the Internet materials made of record by the
examining attorney further establish that “tree radar” is
used not as a trademark, but as a merely descriptive term
as applied to such goods and services. Material obtained
from the Internet is acceptable in ex parte proceedings as
evidence of potential public exposure to a term. See In re
Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002).
We note applicant’s argument that the Internet
material submitted by the examining attorney refers to its
own goods and services. However, the Internet articles and
advertisements of record do not display TREERADAR as
applied for in the involved application. Rather, the
Internet evidence either displays “tree radar” as a
descriptive term or displays “Tree Radar” in a manner that
is not clearly trademark usage. Thus, even if applicant
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was the first and/or at one time the only user of the term
TREERADAR in connection with its goods and services, it is
well settled that such does not entitle applicant to the
registration thereof where, as here, the term has been
shown to immediately convey only a merely descriptive
significance in the context of applicant’s goods and
services. See, e.g., In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In
re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972).
Finally, we are not persuaded that the telescoping of
the terms “tree radar” into TREERADAR imbues such a merely
descriptive term with distinctiveness as a trademark.
Numerous cases have held that telescoping two words which
as a whole are merely descriptive of the goods or services
into a single term does not avoid a finding of mere
descriptiveness for the combined term. See, for example,
In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987) (FIRSTIER, the equivalent of “first
tier,” is merely descriptive of banking services); In re A
La Vieille Russie Inc., 60 USPQ2d 1895, 1897, n. 2 (TTAB
2001) (“the compound term RUSSIANART is as merely
descriptive as its constituent words, ‘Russian art.’”); In
re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE
merely descriptive of wire rope); In re Gagliardi Bros.,
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Ind., 218 USPQ 181 (TTAB 1983) (BEEFLAKES is merely
descriptive of thinly sliced beef); and In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED is merely
descriptive of jellies and jams).
Accordingly, we find that applicant’s mark is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.