No. 76620777 (T.T.A.B. Feb. 23, 2009)

Vector Products, Inc.

Trademark Trial and Appeal BoardFeb 23, 2009

No. 76620777 (T.T.A.B. Feb. 23, 2009)

Mailed: February 23, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Vector Products, Inc. ________ Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 _______ George W. Lewis of Jacobson Holman PLLC, for Vector Products, Inc. Judith M. Helfman, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Quinn, Drost and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Vector Products, Inc., applicant herein, filed applications on the Principal Register to register each of the three respective marks shown below, for goods identified as “spotlights and flashlights”: THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 2 1.1 2.2 1 Application Serial No. 76620780, filed November 16, 2004, under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), claiming a bona fide intent to use in commerce. 2 Application Serial No. 76620777, filed November 16, 2004, under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), claiming a bona fide intent to use in commerce. Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 3 3.3 The trademark examining attorney issued a requirement in each of the three applications for applicant to disclaim the phrase “MILLION POWER SERIES.” Trademark Act Section 6, 15 U.S.C. §1056. When the requirement was made final in each case, applicant appealed. Both applicant and the examining attorney filed briefs. The examining attorney has suggested in her briefs that the three appeals involve common questions of law and fact, and that they are therefore appropriate for consolidation. We agree. Thus, we issue this single opinion in the three appeals. Upon careful consideration of the evidence of record and the 3 Application Serial No. 76620779, filed November 16, 2004, under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), claiming a bona fide intent to use in commerce. Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 4 arguments of counsel, we affirm the requirement for a disclaimer in the three applications. A term must be disclaimed from a mark if it is deemed to be merely descriptive of the subject goods or services. In particular, the Office may require a disclaimer of words individually or together if they “form a grammatically or otherwise unitary whole with a single descriptive significance.” Trademark Manual of Examination Procedure §1213.08(b) (5th ed. 2007) (TMEP); See in re Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006). A term is deemed to be merely descriptive within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 5 Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive. In re Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 6 MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). A composite of descriptive terms is registrable only if as a unitary whole it has a separate, non-descriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of bakery products). Thus we consider first whether the words “million,” “power,” and “series” are descriptive of applicant’s goods, and if so, whether together they form a non-descriptive whole. The examining attorney submitted dictionary definitions of “power,” and “series,” which are set forth in relevant part below (American Heritage Dictionary of the English Language (4th ed. 2000)): “Power”: 9a. The energy or motive force by which a physical system or machine is operated; b. The capacity of a system or machine to operate. c. Electrical or mechanical energy. d. Electricity supplied to a home, building or community. 10. Physics The rate at which work is done, expressed as the amount of work per unit of time, and commonly measured in units such as the watt and horsepower. “Series”: 1. A number of objects or events arranged or coming one after the other in succession. The examining attorney further submitted evidence of Internet articles and advertisements with the words “million,” “power,” and “series” used together to describe Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 7 flashlights or spotlights. A sampling of the evidence includes the following: “This Father Has a Soft Spot for Hardware: . . . I have for several years been on the verge of buying – and heavily hinting at – one of those manly million- candle-power rechargeable spotlights. And now they’re up in the 2 million and 3 million candle-power range.” The Seattle Post-Intelligencer, June 15, 2002. “Koehler-Bright Star’s Nite Guard Outshines Other Spotlights; Gotta Have It: . . . This spotlight packs a million candlepower, and its 10-foot cord plugs in to any 12-volt, negative-grounded AC adapter.” Trailer Boats, June 1, 2003. Anchor Express: ACR RCL-600 6,000,000 candela Remote Controlled Searchlight. www.anchorexpress.com. NORSElight: Halogen Searchlight SH 310 D Specifications . . . Intensity: 2.3 million Candela. www.austin-insulators.com. VEC124 SUPER SPORT® ONE MILLION CANDLE POWER by VECTOR [applicant]. www.vectormfg.com. VEC117 VECTORLITE ONE MILLION POWER SERIES SPOTLIGHT by VECTOR [applicant]. www.vectormfg.com. By way of explaining the relevance of the evidence that refers to millions of “candela” or “candlepower,” the examining attorney submitted American Heritage Dictionary definitions of “candela” and “candle power” as units of “luminous intensity.” Accordingly, the examining attorney argues that the words “million,” “power,” and “series” in applicant’s marks would be understood by consumers as indicating that the spotlights or flashlights “are part of Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 8 a series of lighting products available in a range of luminous power levels measured in increments of millions.” (Examining Attorney’s Brief at unnumbered page 9). Based on the evidence of record, we agree that each of the three words is merely descriptive of a feature or function of applicant’s spotlights and flashlights. Furthermore, there is no evidence of record that the words together have a separate, non-descriptive meaning. Applicant has indicated in a declaration that the phrase “million power series” has no technical or other non- source-indicating meaning as applied to applicant’s, or anyone else’s, spotlights and flashlights. (Powell decl. para. 9). However, we note that applicant’s own website refers to its products with the words “million” and “candle power” (see VEC124 SUPER SPORT® ONE MILLION CANDLE POWER” advertised at vectormfg.com as of 6/27/2005). There are no limitations in the identifications of applicant’s flashlights and spotlights. Therefore, the term “Million Power Series” in its three applications can describe a series of spotlights or flashlights in the million candle power range. Judge Rich noted that “the users of language have a universal habit of shortening full names -- from haste or laziness or just economy of words.” Abcor, 200 Serial No. 76620780 Serial No. 76620777 Serial No. 76620779 9 USPQ at 219 (Rich, J., concurring) (GASBADGE merely descriptive of full name “Gas Monitoring Badge”). Accordingly, we have no doubt that the relevant public would understand the words “million,” “power,” and “series,” individually and in their entirety, to convey information about applicant’s goods. Decision: We affirm the requirement to disclaim “MILLION POWER SERIES” in Application Nos. 76620780, 76620777, and 76620779 as well as the refusal to register in absence of a disclaimer. However, if applicant submits the required disclaimer to the Board within 30 days, then the decision will be set aside, and the application will proceed to publication.