Wednesday, July 25, 2012

TTAB Affirms Disclaimer Requirement of WET TECHNOLOGIES in Design Mark for Wet Blasting Machines

In a 37-page decision, the Board affirmed a requirement that Applicant disclaim the phrase WET TECHNOLOGIES in the mark shown immediately below, for "particle blast cleaning machines; machine tools for water blasting, descaling, derusting, wet lapping, wet peening, slurry processing, and deburring; wet etching machines;" and for rust removal. The application contained three classes of services, but Applicant failed to pay the full $300 appeal fee; since it paid only $200, the Board considered only the first two classes, and it dismissed the appeal as to the third class. In re Wet Technologies, Inc., Serial No. 77135323 (July 20, 2012) [not precedential].

Applicant disclaimed the words "WET" and "TECHNOLOGIES" separately, but the PTO insisted on a disclaimer of the phrase "WET TECHNOLOGIES." Applicant refused, claiming that the PTO was "estopped" from requiring the disclaimer and that the phrase is a unitary, non-descriptive term.

As to the estoppel argument, Applicant was all wet. It maintained that the Board cannot require a disclaimer of the phrase two years after requiring separate disclaimers of "wet" and "technologies."Had the PTO made the requirement earlier, Applicant asserted, the matter would have been resolved "in a much timelier fashion."

The Board pointed out that Applicant cited no authority for its argument, and the Board found none. With only one exception, the PTO is not barred from raising a new refusal or requirement after a first Office action: that is in the case of a Section 66(a) or Madrid Protocol application, as to which the PTO must raise any ground for refusal within 18 months from receipt of the application from the International Bureau of WIPO. Indeed, the PTO has a duty to correct its own errors to avoid issuing a registration contrary to law. The PTO is expected to raise all potential issues in a first Office action, but in cases of "clear error" new refusals or requirements may be made. The determination of "clear error" is left to the discretion of the Examining Attorney and his or her supervisors.

As to its "unitary" argument, Applicant urged that the wording "wettechnologies" is a single compound word, not a phrase. The Board, however, noted that the words "wet" and "technologies" are displayed in different colors, one inside and one outside the circle design. Moreover, the words and the design are not so integrated as to comprise a visual or conceptual whole that cannot be separated.

As to whether WET TECHNOLOGIES is merely descriptive of Applicant's services, the Board declined to treat the earlier disclaimer of "WET" and "TECHNOLOGIES" as a concession that those words are descriptive, but it nonetheless found that the words are indeed descriptive. Discovery definitions and website evidence demonstrated same. Furthermore, the combination of the two words conveys no meaning different from the two separate words. The Board rejected Applicant's argument that the words are "unusually arranged," have a "rhyming pattern," or have "other sound" so as to create a distinct impression.

And so the Board affirmed the refusal to register based on Applicant's failure to disclaim WET TECHNOLOGIES. Applicant' was allowed the usual thirty days to submit a proper disclaimer, in which case this decision will be set aside.

Text Copyright John L. Welch 2012.


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