Friday, January 31, 2014

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 In re Keiser & Associates, LLC, Serial No. 85576511 (January 22, 2014) [not precedential].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. (

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.

Read comments and post your comment here.

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.


At 9:38 AM, Anonymous Anonymous said...

Please don't quit blogging! We love your posts. Susan Goldsmith

At 9:42 AM, Anonymous Dave Oppenhuizen said...

As an attorney, I can appreciate when an Examining Attorney goes the extra step to see if the mark has some descriptive meaning within the specific industry. My biggest issue with the trademark examining corp is the inconsistency from one examiner to the next. I bet this application would have sailed off the desk straight to publication for about 30-50% of the examiners. And as a result, some competitor could have been put in the defensive position of showing that the "trademark" is really just an industry-specific descriptor.

Even though it can make my job harder at times, I appreciate cases like this where I see the Examining Attorney did the job correctly and made it an obvious decision for the Board.

(John, thank you for the blog. Please don't lose the faith, you're providing a great service.)

At 9:50 AM, Anonymous Anonymous said...

Use that towel to mop-up the stormwater, but no, no, no -- please don't quit blogging!

At 10:50 AM, Anonymous Anonymous said...

Wish there was a way to wring out lots of those towels in California! Keep on blogging.

At 11:46 AM, Anonymous Anonymous said...

Well, I know the examiner in that case is a USPTO "lifer" (been there at least or about 20 years) so she knows her stuff and probably knows how to spend time on a case that needs it while still making her quota.

I'm just surprised at how many of these applicants are really willing and able to invest in prosecuting these WYHA cases through appeal, or could that be the attorney encouraging that? Or I guess the attorney isn't charging that much for the case because arguments/evidence is recycled from the first or request for recon response.

At 3:57 PM, Anonymous Patricia said...

I agree with the Board’s decision affirming the refusal to register the mark STORMWATER NEUTRAL as merely descriptive under § 2(e)(1) because they, essentially, offer consulting services for achieving “neutral impact of the runoff of stormwater.” (Board opinion p.8) The Board based its decision on evidence and case law that stated that a mark is merely descriptive when “it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose, or use of goods or services.” (p.3) Case law also stated that the mark’s mere descriptiveness must be determined in relation to the goods and services, the context it is being used in, and the possible significance that the mark would have to the average consumer. (p.4) The examining attorney also submitted website examples where “stormwater neutral” was used in the environmental field to mean just what STORMWATER NEUTRAL is attempting to convey with their mark: the process and treatment of stormwater runoff to neutralize its impact.
With this in mind, I agree with the Board that “no imagination is required by a prospective purchaser to discern that a purpose or feature of applicant’s environmental counseling services is to provide advice to achieve a condition known and understood as “stormwater neutral.” (p.8) I understand that “stormwater neutral” is not always used in that word order to describe the condition because it seems easier to say “the stormwater effect is neutral” or “the stormwater effect is zero,” but I still think it is merely descriptive because there is no jump a brain has to make in order to find out what services this consulting firm offers. It would be like having a weight loss service called WEIGHT BALANCE and claiming it’s not descriptive because people don’t ordinarily talk about weight loss or a healthy weight as “weight balance.” STORMWATER NEUTRAL needed to go a step further to make it suggestive.

At 1:51 PM, Anonymous Zak said...

I also agree with the TTAB in this instance, determining that the mark is merely descriptive under 15 u.s.c. § 1052(e)(1). As stated by the Board, a mark is descriptive if it “conveys an immediate idea of [a] . . . purpose . . . of the . . . services.” In re Keiser & Associates, LLC at 3. Notwithstanding the applicant’s assertions to the contrary, STORMWATER NEUTRAL environmental consulting brings immediately to mind a service that renders storm runoff harmless. This being the applicant’s business, the mark is clearly descriptive.
This is bolstered by the evidence found by the examining attorney that the phrase “stormwater neutral” is already being used by the public (particularly the environmental field) to describe the art of eliminating the impact of stormwater at a given site. Keiser at 6-7. While this use is certainly indicative of “stormwater neutral” being descriptive, it might even go so far as to indicate that the phrase “stormwater neutral” is a generic term for the sort of engineering services provided by the applicant. The applicant also asserts that “competitors have no need to use the exact terminology in describing their own services.” Keiser at 2. Particularly in light of the evidence of use of the term by the public found by the examining attorney, this assertion seems rather far-fetched.
The only situation in which I may have filed this appeal was if the applicant had been using the STORMWATER NEUTRAL mark for a substantial length of time in order to develop a secondary meaning in the mark, rendering it registerable under § 1052(f). Presumably, since the TTAB’s opinion makes no mention of acquired distinctiveness, this argument was not applicable. After the first rejection the applicant should have realized that, much like CHICK-FRI, STORMWATER NEUTRAL was cooked. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 789 (5th Cir. 1983).

At 9:46 AM, Blogger Brittany Nicole said...

In this situation, I agree with the TTAB’s decision that the mark STORMWATER NEUTRAL is merely descriptive under § 2(e)(1).

Taken for its literal definitions, “stormwater neutral” would mean “excess water from a meteorological event which has limited interaction with the landscape and flows to surface water or to drainage systems that is neither good nor bad.” (Paraphrased from and definitions). The applicant defines “stormwater neutral” as follows: An achievement associated with “net zero” stormwater discharge loading following implementation of best management practices with respect to a quantifiable baseline condition (including volume of runoff and/ or pollutants of concern discharged to surface water). In re Keiser at 5. Sure the actual words used above are different, but the meaning is clearly the same: a description of a process and treatment of stormwater that is meant to neutralize its impact.

I spent a good deal of time playing devil’s advocate and attempting to come up with an imaginative way to view “stormwater neutral” that would be beneficial to the applicant and came up empty handed. There is not a second of hesitation in my mind as to what this term could possibly mean. As mentioned in the case, a mark does not need to immediately convey each and every detail of a good or service to be descriptive. In re Keiser at 3-4. Whether a mark is merely descriptive is not determined in the abstract but “in relation to the goods or services for which registration is sought.” In re Keiser at 4.

With the examiner submitted website examples and third party definitions, I feel as though I have no choice but to agree with the Board on this. The Board stated that the reason this is merely descriptive is because it “conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose, or use of goods or services.” In Re Keiser at 3. The Board is right in stating that “no imagination is required” to discern the purpose of the consulting services. There is not even a second of hesitation when thinking about the term where I wonder if I am confused by what it means and if I should look back and see what the definition if.

At 2:42 PM, Anonymous AHMAD said...

I agree that STORMWATER NEUTRA is merely descriptive under § 2(e)(1).
IT does not required an imagination to tell what it is business. See Abercrombie & Fitch Co., supra, quoted from Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968).Therefore it can not be protected under Lanham Act §2 until it has secondary meaning

At 7:34 AM, Anonymous Kyle C. said...

I agree with the Board’s conclusion in this case. The applicant’s use of the mark STORMWATER NEUTRAL is intended to describe an aspirational characteristic of the service being offered. Namely, the service is for the management of stormwater such that it has neither a beneficial nor harmful effect on the environment. Absent a showing of secondary meaning under § 2(f), this mark should not be protected.
The applicant’s argument that “neutral” requires some imagination to derive the meaning is rendered ineffective by the Examining Attorney’s reference to dictionaries offering the intended use as a definition. Further evidence from the field demonstrates that the term “stormwater neutral” is in use by third parties to describe Applicant’s use. This third party usage suggests the proposed mark STORMWATER NEUTRAL is either generic or descriptive. While Applicant may be correct that competitors need not use the term “neutral” to describe their own services, Applicant misunderstands the distinction between generic and descriptiveness. Applicant appears to argue that the term is not generic, while the Examining Attorney is concerned about mere descriptiveness.


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