Test Your TTAB Judge-Ability: Is STORMWATER NEUTRAL Merely Descriptive of Environmental Consulting?
Keiser & Associates sought to register the mark STORMWATER NEUTRAL for "environmental consulting in the field of environmental service regarding engineering protocols for ascertaining and quantifying net-zero stormwater loading status following implementation of best management practices with respect to a quantifiable baseline condition for a physical stormwater drainagearea," but Examining Attorney Linda E. Blohm refused registration on the ground of mere descriptiveness under Section 2(e)(1). Keiser appealed, arguing that some degree of imagination is required to associate the mark with its services, and that competitors have no need to use the mark exact terminology in describing their own services. How do you think this came out? In re Keiser & Associates, LLC, Serial No. 85576511 (January 22, 2014) [not precedential].
The examining attorney argued that applicant's services "are for quantifying, and achieving 'stormwater neutral' loading status," that is, "the overall effect of stormwater on the environment is neither beneficial nor harmful."
The most probative evidence came from third-party websites showing use of the terminology "stormwater neutral" in the environmental field. For example:
The gardens will capture rainwater in the ponds. The water will be used by the plants in the ponds and will infiltrate into its native soil, making the site storm water neutral. (examiner.com)
These websites convinced the Board that the term "stormwater neutral" is "commonly used and understood in the environmental field to describe the treatment of stormwater runoff to neutralize its impact, thereby resulting in a site that is known as 'stormwater neutral.'"
Both applicant and the examining attorney submitted third-party registrations, but in view of the website evidence the Board saw no need to focus on "how the Office has treated (at times, inconsistently) the terms 'stormwater' or 'neutral' in the past." Moreover, the Board is not bound by the decisions of examining attorneys in other cases, but rather must decide each case on its own facts.
No imagination is required by a prospective purchaser or user to discern that a purpose or feature of applicant's environmental consulting services is to provide advice to achieve a condition known and understood as 'stormwater neutral.' That is, applicant's consulting services feature practices that render neutral the impact of runoff of stormwater.
And so the Board affirmed the refusal.
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TTABlog note: Is this another WYHA? Sometimes when I'm in the middle of a blog post concerning a really boring case like this one, I just want to throw in the towel and quit blogging altogether.
Text Copyright John L. Welch 2014.