Williams

Trademark Trial and Appeal Board

Dec 30, 2008

No. 77100894 (T.T.A.B. Dec. 30, 2008)

Mailed:
December 30, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Williams
________

Serial No. 77100894
_______

John S. Egbert of Egbert Law Offices, PLLC for Kevin
Williams.

Jay C. Besch, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Zervas, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Kevin Williams (Applicant) has applied to register the
mark HYBRID HEAVE in standard characters for goods
identified as “energy storage and recovery system for
active heave comprised primarily of a machine flywheel and
a motor-generator for generating electricity” in
International Class 7.1

1 Serial No. 77100894, filed February 2, 2007, based on
applicant’s statement of his bona fide intention to use the mark
in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77100894
2
The Examining Attorney has finally refused
registration on the ground that the mark merely describes
the goods under Trademark Act Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1). Applicant has appealed. Both applicant and
the Examining Attorney have filed briefs.
We reverse.
A term is merely descriptive of goods 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. See, e.g.,
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 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 in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute or function of the goods. See In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods identified in
the application, and the possible significance that the
term would have to the average purchaser of the goods. In
re Polo International Inc., 51 USPQ2d 1061, 1062 (TTAB
Serial No. 77100894
3
1999); and In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). The question whether a mark is merely
descriptive is not determined by asking whether one can
guess from the mark what the goods are, but rather by
asking, when the mark is seen on or in connection with the
goods, whether it immediately conveys information about
their nature. See In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998).
The Examining Attorney argues that HYBRID is merely
descriptive of the identified goods because the goods
combine two or more technologies. With regard to HEAVE the
Examining Attorney argues, “… the term ‘HEAVE’ is merely
descriptive of the environment that the goods are used in
and/or utilized in, and the identification of goods clearly
indicates this environmental limitation as a feature and/or
characteristic of the goods.” Examining Attorney’s Brief
at 3. The Examining Attorney argues further, “Consumers
who purchase the goods will know that the goods are limited
to environments in which the ocean is moving up and down,
and the mark immediately conveys this
feature/characteristic of the goods…” Id. The Examining
Attorney also notes that the copy of the patent application
for the relevant goods, which applicant provided, contains
numerous references to HEAVE. Finally, the Examining
Serial No. 77100894
4
Attorney argues, “The terms ‘HYBRID’ and ‘HEAVE’ are not
incongruous and are not nonsensical when combined, because
the terms both convey significant features of the
identified goods when the mark as a whole is viewed in
connection with the identified goods… Specifically,
applicant’s mark immediately conveys that the goods feature
the combination of two or more technologies for use in
environments where the ocean rises and falls.” Id. at 4.
On the other hand, Applicant argues, “… the mark is
incongruous, susceptible to multiple connotations, or
requires imagination, cogitation, or gathering of further
information in order for the relevant public to perceive
any significance of the mark as it relates to a significant
aspect of Applicant’s goods.” Applicant’s Brief at 4.
Applicant acknowledges that, “the word ‘hybrid’ refers to a
myriad of products that contain two or more different
technologies.” Id. Applicant argues further, “Applicant’s
goods are simply not typical of the types of goods on which
the word ‘hybrid’ is found.” Id. at 5. Applicant also
argues that HEAVE does not describe a feature or purpose of
its goods. Applicant states that HEAVE merely suggests the
identified goods are “only useful is an environment where
the ocean is actively moving up and down.” Id. at 6.
However, Applicant’s most compelling arguments address the
Serial No. 77100894
5
combination of HYBRID and HEAVE in the mark. Applicant
argues that the combination is not only incongruous, but
nonsensical. That is, the use of HYBRID as an adjective
modifying HEAVE makes no sense. Applicant states, “… it is
possible that a consumer may perceive the mark as a good
that combines or mixes two different types of heaving
motions… [or] the mark could possibly elicit thoughts of a
combination of two types of ocean heaves or thoughts about
clean energy that is somehow elated to ocean heave.” Id.
at 7. Applicant wraps up its argument by stating, “Since
the ‘HYBRID HEAVE’ mark will at most elicit thoughts of
clean energy at sea, and does not immediately convey to the
consumer the thought of the Applicant’s goods, it is
suggestive and does not, as a whole, describe an
ingredient, quality, characteristic, function, feature,
purpose or use of the goods.” Id. at 8 (citations
omitted).
Other than dictionary definitions, the only
significant evidence of record is the patent application
related to the identified goods which we referenced above.
The patent is helpful in understanding the general type of
goods at issue here and applicant’s goods, in particular.
Applicant’s goods are used in offshore oil and gas
drilling operations aboard ships specially designed to
Serial No. 77100894
6
perform drilling while anchored. In the patent
application, The Field of Invention states, “… the present
invention relates to offshore drawworks that include heave
compensators so as to cause the drill string to move in
relation to the heave of the vessel upon which the
drawworks is located. Additionally, the present invention
relates to flywheels that can be used for energy storage
and used, in particular, in association with the cyclic
loads.” Attachment to Request for Reconsideration of June
2, 2008.
Applicant’s goods are identified as, “energy storage
and recovery system for active heave comprised primarily of
a machine flywheel and a motor-generator for generating
electricity.” The identified goods function as an integral
part of the complex drawworks to provide for an efficient
and safe means to “pay in” or “pay out” the drill string
which extends through the floor of the ship and which is
supported by a wire rope connected to a sheave system. The
system is necessary to maintain proper “weight-on-bit”
during drilling. Id. In particular, it is necessary to
pay out or pay in the drill string with the up and down
movements of the ship as a result of waves impacting the
ship. The drawworks is not only complex but massive in
weight and size.
Serial No. 77100894
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The process of paying in or paying out the drill
string involves systems of drums, winches, brakes, multiple
motors and other components, all involving significant
energy-consuming actions. The operations also involve
potential energy-producing actions, including, in some
instances, the need to dissipate excess energy.
Applicant’s system, and others, have substituted AC
motors for DC motors to control the compensation
activities. AC motors offer a number of advantages,
including, greater torque, a fixed gearbox ratio and the
elimination of the need for a clutch. The AC motors can
also operate to perform a braking function and even to
capture some of the braking energy. Applicant has added a
flywheel to the system to convert electric energy into
kinetic energy and for storing the kinetic energy.
We hasten to add that this explanation is
oversimplified and incomplete, though sufficient for our
purposes here. Our purpose in providing this much
explanation is to illustrate that applicant’s complex
system, and all other systems serving the same purpose,
employs multiple technologies. Therefore, while the term
“hybrid” may well literally describe the system because it
incorporate multiple technologies, it provides little, if
any, useful information.
Serial No. 77100894
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The explanation of the system also illustrates the
nature of the relationship between the up and down
movements, or active heave, of the waves and the ship on
the one hand, and the energy storage and recovery system
the application identifies on the other hand. We note that
the Examining Attorney, quite understandably, struggles
with this explanation, for example, in referring to “heave”
as an “environmental limitation.” We conclude that the
relationship between HEAVE, as used in the mark, in
relation to the identified goods is indirect at best.
More importantly, we conclude that the HYBRID HEAVE
mark, when viewed in its entirety as applied to the
identified goods, is suggestive, not merely descriptive.
Under the circumstances, we find reasonable applicant’s
argument that potential purchasers would perceive HYBRID,
as used here, as suggesting “clean energy at sea” or
something similar, based on the general use of hybrid in
relation to motor vehicles and other goods. Also, we
likewise find reasonable applicant’s argument that
potential purchasers would find the combination of HYBRID
and HEAVE in the mark incongruous, if not nonsensical.
The Firestone Tire & Rubber Company v. The Goodyear Tire &
Rubber Company, 186 USPQ 557 (TTAB 1975) (BIASTEEL held not
merely descriptive of tires); In re Wisconsin Tissue Mills,
Serial No. 77100894
9
173 USPQ 319 (TTAB 1972) (POLYTISSUE held not merely
descriptive of a combination paper and plastic table
cover). HYBRID makes no sense as a modifier of HEAVE. Any
attempt to make sense of the combination of terms in the
mark would require a complex, multistage mental process.
The HYBRID HEAVE mark is conspicuously unlike other
marks where the combination of terms makes immediate
descriptive sense. See, e.g., In re Tower Tech, Inc., 64
USPQ2d 1314, 1317 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers);
In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX
PHONE held merely descriptive of facsimile terminals
employing electrophoretic displays).
We also note that HYBRID HEAVE also involves an
element of alliteration. Cf. Safe-T Pacific Company v.
Nabisco, Inc., 204 USPQ 307 (TTAB 1979). The alliteration,
though not the necessary to our determination, provides
further support for our conclusion that HYBRID HEAVE is
distinctive.
Lastly, we note that in our consideration of this mark
we have assumed that the potential purchasers of these
expensive and sophisticated systems are themselves
technically sophisticated. Indeed, as sophisticated
Serial No. 77100894
10
purchasers they are more likely to perceive the HYBRID
HEAVE mark as incongruous or nonsensical.
Accordingly, we conclude that HYBRID HEAVE is not
merely descriptive of “energy storage and recovery system
for active heave comprised primarily of a machine flywheel
and a motor-generator for generating electricity.”
Decision: We reverse the refusal under Trademark Act
Section 2(e)(1).