In re SFS Intec Holding AG

• Decision Date: 16 November 2015
• Docket Number: Serial 79109409
• Court: Trademark Trial and Appeal Board
• Parties: In re SFS Intec Holding AG

In re SFS Intec Holding AG

Serial No. 79109409

United States Patent and Trademark Office, Trademark Trial and Appeal Board

November 16, 2015

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

John J. O'Malley of Volpe & Koenig P.C., for SFS Intec Holding AG.

Rebecca A. Smith, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney.

Before Lykos, Shaw and Greenbaum, Administrative Trademark Judges.

OPINION

Greenbaum, Administrative Trademark Judge.

SFS Intec Holding AG ("Applicant") seeks registration on the Principal Register of the mark SOL-R (in standard characters) for goods ultimately identified as

Common metals and their alloys; building materials of metal namely, metal hardware, namely, screws, rivets, bolts; metal transportable buildings; articles of small ironware, namely bolts, nails, rivets, screws; metal goods, namely, nuts, washers; fixed installations of metal, namely, for solar installations; metal construction materials for solar panels, namely, braces, supports, and cladding; metal roof covering materials, namely, flashing, panels, and tiles incorporating metal frames for solar panels; retaining systems comprised of metal cable wires and metal cantilevered brackets for solar panels; ground supports of metal for solar panels; steel rods for use with solar panels in International Class 6,

Non-metallic building materials, namely, roofing elements, non-metallic reinforcements for concrete and wood building construction, namely, rods; non-metal roof cladding and roofing elements for photovoltaic elements, namely, non-metal roofing panels, tiles, and roof covering; structural component parts of the aforementioned goods; roofing, not of metal, incorporating solar cells in International Class 19, and

Non-metal fasteners, namely, screws, rivets, and bolts in International Class 20.^[1]

The Trademark Examining Attorney has refused registration of Applicant's mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant's mark is merely descriptive of the identified goods in all three classes.

When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register.

I. Applicable Law

Section 2(e)(1) of the Trademark Act provides for the refusal of registration of "a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them." 15 U.S.C. § 1052(e)(1). A term is merely descriptive of goods or services within the meaning of Section 2(e)(1) "if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007)). See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 U.S.P.Q.2d 1370, 1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm'r, 252 U.S. 538, 543 (1920) ("A mark is merely descriptive if it 'consist[s] merely of words descriptive of the qualities, ingredients or characteristics of' the goods or services related to the mark.")), cited with approval in In re TriVita, Inc., 783 F.3d 872, 114 U.S.P.Q.2d 1574, 1575 (Fed. Cir. 2015).

The determination of whether a mark is merely descriptive must be made "in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use." Bayer Aktiengesellschaft, 82 U.S.P.Q.2d at 1831 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 U.S.P.Q. 215 (CCPA 1978)). In other words, the question is not whether someone presented only with the mark could guess the goods listed in the identification of goods. Rather, the question is whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 U.S.P.Q.2d 1753, 1757 (Fed. Cir. 2012); Abcor Dev. Corp., 200 U.S.P.Q. at 218. In addition, it is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods. Chamber of Commerce of the U.S., 102 U.S.P.Q.2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77 U.S.P.Q.2d 1087, 1089 (Fed. Cir. 2005)); In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987).

II. Evidence and Argument

The Examining Attorney asserts that SOL-R simply is a novel spelling of the word "solar." The Examining Attorney relies on the following dictionary definition of the word "solar: "[o]f, relating to, or proceeding from the sun: solar rays; solar physics."^[2] As the identification of goods in the application features products that are used specifically with solar installations and solar panels, and roofing that incorporates solar cells, the Examining Attorney contends that the proposed mark describes a significant feature of the identified goods.

In addition, the Examining Attorney introduced excerpts from two third-party websites showing that others use "sol-r" as an alternate spelling of the term "solar" for other solar products ( sells SOL-R-FLOR "active solar water heaters, "^[3] and sells SOL-R-THERM "solar thermal domestic hot water heating" systems^[4]), and a third-party registration that issued on the Supplemental Register for the mark SOL-R-WASH for "cleaning and maintenance of solar panels, solar tubes, solar troughs and solar mirrors."^[5]

Based on this evidence, it is the Examining Attorney's position that the word "solar" is merely descriptive of solar products such as those identified in the application, and Applicant's proposed mark SOL-R also is merely descriptive because SOL-R is the equivalent of the word "solar."

In traversing the refusal, Applicant argues that consumers who view SOL-R alone would not immediately know that Applicant's goods are used with solar panels and installations, and therefore the proposed mark is suggestive rather than descriptive. However, this is not the standard. As noted above, we must consider the context in which the mark is used in connection with the goods identified in the application, and understand the significance that the mark would have to the average purchaser of the goods in the marketplace. See DuoProSS Meditech Corp., 103 U.S.P.Q.2d at 1757. As discussed below, purchasers seeking Applicant's solar products would immediately understand Applicant's proposed mark SOL-R to mean that Applicant's products are used with solar installations and solar panels, and roofing that incorporates solar cells.

In a similar vein, Applicant also argues that SOL-R "by itself does not immediately convey the word 'solar, '" and even if "SOL-R indicates some relationship to 'solar' or even the sun, there is nothing about the mark or the identification of goods that definitely indicates the products' function, characteristics, or use with specificity."^[6] However, Applicant's use of the term "solar" throughout Applicant's identification of goods belies this contention. Again, the test is not whether a purchaser who views Applicant's proposed mark SOL-R in a vacuum could guess what Applicant's products are. See Chamber of Commerce of the U.S., 102 U.S.P.Q.2d at 1219.

On this record, we find that SOL-R is an alternative spelling of the word "solar" and would be perceived as such, and that SOL-R would be pronounced as "solar."^[7]We further find, and Applicant does not dispute, that Applicant's goods are used on or in connection with solar panels and installations, and roofing that incorporates solar cells.^[8]

Based on the identification of goods and...