Wednesday, November 17, 2004

Ho-Hum! CAFC Affirms TTAB's "DUALSAND" Decision

When the CAFC issues an uncitable decision affirming an uncitable decision of the TTAB, one can hardly expect scintillating reading.

In In re DSS Environmental, Inc., Appeal No. 04-1041 (Fed. Cir. 2004) [not citable], the CAFC affirmed the TTAB's uncitable decision in Application Serial No. 76317128, in which the Board upheld a Section 2(e)(1) mere descriptiveness refusal of the mark DUALSAND for "water and wasterwater filters."

The Board relied on two utility patents (one belonging to Applicant DSS) and 13 Internet articles in finding that "dual sand" is a term "used in the water and wastewater treatment industries to describe a type of filtration process." In fact, Applicant's own patent "uses the term 'dual-sand filtration system' to describe an invention that treats wastewater by using two filters connected in series."

DSS complained that the PTO should have considered its list of third-party registrations purportedly showing how "dual" and "sand" may be used in a "permissibly suggestive manner." The CAFC pointed out, however, that the TMEP, the TBMP, and relevant case law make clear that submission of a list of third-party registrations is not sufficient to make the registrations of record. The court agreed with the PTO's rationale for that policy: "given the high volume of applications with which each examiner works, an expectation that examiners should bear the burden of pringint copies of the listed registrations is unreasonable." In any event, the CAFC noted that, according to the Board, the third-party registrations would not have made a difference anyway.

Therefore, the CAFC upheld the Board's refusal to consider the third-party registrations, and sustained "the Board's decision rejecting DSS's registration application."


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