Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

The applicant, KING KOIL LICENSING COMPANY, INC., has appealed the trademark examining attorney’s refusal to register the mark “THE BEATHABLE MATTRESS” on the basis that it merely describes the goods, within the meaning of Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

STATEMENT OF FACTS

 

7-25-2003 Applicant applied to register the mark “THE BREATHABLE MATTRESSS”  for Beds, mattresses, box springs and pillows in International Class 20.

 

2-10-2004 The examining attorney issued an office action wherein the mark was refused registration under Trademark Act Section 2(e)(1).  In addition, a disclaimer of "mattress" was required.

 

7-30-2004 The Applicant responded by arguing against the descriptiveness refusal and entering a disclaimer statement.

 

8-25-2004 The examining attorney made final the refusal under Trademark Act Section 2(e)(1).

 

3-14-2005 This appeal followed.

 

ISSUE

WHETHER THE APPLICANT’S MARK, THE BREATHABLE MATTRESS MERELY DESCRIBES THE GOODS: Beds, mattresses, box springs and pillows

 

ARGUMENT

Applicant argues that the Examining Attorney has failed to furnish competent evidence supporting a finding of descriptiveness in that the examiner's support for the refusal is based upon dictionary definitions and Google internet results that contain the words "breathable" and "mattress."  Applicant goes on to argue that such reliance on the part of the examiner is misplaced because several pieces of evidence demonstrate usage of "breathable" in connection with unrelated goods.  Applicant supports this reasoning by maintaining that they examining attorney has improperly dissected Applicant's mark into two components and that Applicant's mark is at very least suggestive of Applicant's goods.  In addition Applicant has introduced a declaration of Larry McKay with the appeal brief.  The examining attorney objects to the introduction of this last piece of  evidence. The record in any application must be complete prior to appeal. 37 C.F.R. §2.142(d). Accordingly, the examining attorney requests that the new evidence be excluded from the record. TBMP §§1207 et seq. See Rexall Drug Co. v. Manhattan Drug Co ., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd. , 51 USPQ2d 1594 (TTAB 1999).

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

 

Applicant asserts, without merit, that the examining attorney has included evidence from domain names outside the United States.  Such is not the case.  While some of the evidence may refer to places and things outside the United States, each of the webpages that they examining attorney attached as evidence, are ".com", and originate from within the United States.  Furthermore, the degree to which the Google searches point to foreign evidence is slight, and its exclusion from the record has little if any effect on the descriptiveness of Applicant's mark. 

 

Applicant argues that the examiner's evidence does not support a finding that the mark is descriptive simply because the evidence does not strictly refer breathable mattresses.  The examiner disagrees.  It is well settled that the term BREATHABLE refers to a the ability of a given item to allow air to flow through (see evidence of record.) The examining attorney has found ample evidence to demonstrate that breathable is used as an adjective to modify an item that is "breathable."  For example, breathable waders, breathable mattress pads, breathable bedding all use breathable in the same way, to indicate that a feature of the goods is their ability to "breath," that is, allow air to pass through.  Therefore, while Applicant may discount the evidence that demonstrates usage of the term "breathable" in relation to various goods, the examining attorney maintains that this evidence firmly establishes a common practice of using the term breathable in a descriptive sense to modify a given item, be it waders, mattress pads or in the case of Applicant, mattresses.  Therefore, using the common understanding of the term breathable, it can easily be said that a feature of Applicant's goods is that they are "breathable."

 

That not withstanding, Applicant maintains that the examining attorney has improperly dissected the mark.  While it is true that combinations of merely descriptive components are registerable if the juxtaposition of the words evokes a unique commercial impression, such is not the case here.  As has already been established, consumers are accustomed to usage of the term BREATHABLE in conjunction with various goods.  In each instance, the connotation is the same, that the "BREATHABLE"+"NAME-OF-GOODS" combination means that those particular goods feature technology that allows them to "breath."  Therefore, Applicant's usage of the terms together, does not evoke a unique commercial impression but rather constitutes a continuation in the usage of the term breathable.  Furthermore, even though Applicant places great weight on the fact that they are the only users of these terms together, the fact that an applicant may be the first and sole user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services.  In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c).

 

A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefore, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts). Applicant has applied to register the mark THE BREATHABLE MATTRESS.  This is nothing more than a combination of descriptive terms that immediately convey a feature of the goods, namely, that they are breathable mattresses.  Applicant's mark is not suggestive because no thought or imagination is required to arrive at the conclusion that the goods are nothing more than mattresses with the ability to breath. 

 

CONCLUSION

A mark is merely descriptive if it describes a feature of the relevant goods. 

 

A feature of Applicant's goods is that they are breathable, namely, Applicant produces breathable mattresses.

 

Therefore when used in the context of Applicant's goods, the mark "THE BREATHABLE MATTRESS" does nothing more than describe the fact that Applicant's goods are mattresses that are breathable.

 

For the foregoing reasons, the examining attorney respectfully requests that the refusal to register on the basis of Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), be affirmed.

 

 

                        Respectfully submitted,

/tmm/

Theodore McBride

HELP LINE: 571-272-9250

theodore.mcbride1@uspto.gov

phone: 571-272-9281

fax: 571-273-5281

 

Michael Hamilton

Managing Attorney

Law Office - 103