TTAB Finds SUSTAINABLE WATER Generic for ... Guess What?

The Board affirmed a refusal to register the term SUSTAINABLE WATER (in standard character form), finding the term to be generic for "sustainable on-site water recycling and wastewater treatment services." Applicant sought registration on the Supplemental Register, but Examining Attorney Edward Nelson maintained that the term is "incapable of identifying [the source of] Applicant’s services." In re Aquei Technologies LLC, Serial No. 86034765 (June 17, 2015) [not precedential].

The Board found that the genus of services is adequately defined by applicant's recitation of services. It observed that the term SUSTAINABLE WATER is generic "if the relevant public understands it to refer to this type of water recycling and wastewater treatment services."

Applicant asserted that it was not seeking to register the term for the sale of water but rather it is providing a service that is "indirectly related to the words 'SUSTAINABLE WATER.'" Third-party uses, according to applicant, show the term used as an adjective "in different contexts and with additional word(s)." And so, applicant contended, the USPTO had failed to prove genericness by the required clear and convincing evidence.

The Board pointed out that applicant uses the term "sustainable water" in its own recitation of services. Applicant's website states that its services make the "'water' supply of large water users, like college campuses and manufacturing centers, 'sustainable.'"

Extensive evidence submitted by the Examining attorney demonstrated that the term SUSTAINABLE WATER "directly names the most important or central aspect or purpose of Applicant’s services, which are treating, recycling and reusing water." The Board noted that it has frequently ruled that a term that names the "central focus" or "key aspect" of a service is generic for the service itself, and the CAFC has approved this approach. [See the HOTELS.COM decision, In re Hotels.com LP, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009)].

The Board rejected Applicant's noun-versus-adjective argument because "this 'part of speech' test does not accurately describe the case law results." [See, e.g., the ATTIC sprinkler case, In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998). The fact that applicant is not selling water does not put an end to the inquiry.

With a nod to the CAFC's recent PRETZEL CRISPS decision [Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 114 USPQ2d 1827 (Fed. Cir. 2015), the Board recognized that a genericness determination must be made on the record as a whole:

However, in the face of the overwhelming case of genericness put forward by the Trademark Examining Attorney, and Applicant’s failure to present convincing contradictory evidence (as opposed to mere argument), we find that Applicant has failed to call into question our ultimate finding.

And so the Board affirmed the refusal to register.

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TTABlog note: Is this a WYHA? In other words, were applicant's arguments likely to be sustainable? Did they hold water?

Text Copyright John L. Welch 2015.