Thursday, March 21, 2024

Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles

In a dubiously precedential ruling, the Board upheld a Section 2(e)(1) refusal to register the proposed mark ZPILE, finding it to be merely descriptive of "Metal sheet piles, metal sheet pile sections, and metal sheet pile connectors for joining metal sheet piles." The Board declined to reach the Office's failure-to-function refusal, but in obvious dictum, discussed the issue anyway. In re Sheet Pile, LLC, Serial No. 97010763 (March 19, 2024) [precedential] (Opinion by Judge Christopher C. Larkin).

The term "sheet piling" refers to a type of retaining wall that is installed in the ground by driving or pushing, rather than pouring or injection. "Sheet piles" are interlocking sections of steel used to create retaining walls and cofferdams, typically to create a rigid barrier between earth and water.

In the context of the involved goods, the word “pile” in Applicant’s proposed mark ZPILE means “[a] heavy post of lumber, concrete, or steel, driven into the earth as a foundation or support for a structure.” The record shows that the letter “Z” that precedes and modifies PILE in the proposed mark ZPILE refers to sheet piling that is roughly in the shape of the letter “Z.”

Numerous website references led the Board to conclude that, in the context of the involved goods, "the letter 'Z' describes and refers to a particular shape and type of sheet pile know by construction project engineers and construction companies." The combination of "Z" and "PILE" "immediately describes for construction project designers and construction companies a feature or characteristic of the goods, namely, that they are or pertain to the well-known 'Z' shape of sheet pile."

The Office thus established a prima facie case of mere descriptiveness, which Applicant Sheet Pile LLC failed to overcome. And so, the Board affirmed the Section 2(e)(1) refusal.

Although the Board declined to reach the failure-to-function refusal, it did provide comments thereon. The refusal was "effectively" based on the same evidence as the mere descriptiveness refusal. The examining attorney maintained that "consumers would perceive the applied for mark Z PILE [sic] to convey information about the goods, namely, that they are Z-shaped piles," and therefore failed to function as a source indicator. According to the Board, however, the "impact" of the two refusals is different:

an applicant may overcome a mere descriptiveness refusal by submitting sufficient evidence of acquired distinctiveness under Section 2(f) or by amending to seek registration on the Supplemental Register, but a failure-to-function refusal based on a finding that a term is merely informational would be an absolute bar to registration, affording the applicant no such option to overcome the refusal.

Rather than a failure-to-function analysis, the USPTO should apply the "distinctiveness continuum," which includes "a threshold absolute bar to registration for generic terms—terms that by definition fail to function as source identifiers." This continuum "provides the appropriate framework for the assessment of registrability based on the rationale articulated by the Examining Attorney in this case—i.e., that the goods at issue 'are Z-shaped piles.'"

Read comments and post your comment here.

TTABlogger comment: What's the distinction between a proposed mark being merely descriptive and being informational? Doesn't a descriptive term provide information? Yet a descriptive term may be registered under Section 2(f) or on the Supplemental Register, according to the Board, but an "informational" term cannot be.

Text Copyright John L. Welch 2024.


At 7:34 AM, Blogger David M. Adler said...

Hi Tom. I agree with you. It’s a distinction without a difference.

At 8:35 AM, Anonymous Anonymous said...

I’ve seen the informational rejection be used as a substitute for generic. In some ways it’s more direct than a merely descriptive rejection that omits the Supplemental Register as an option.

At 9:49 AM, Anonymous Anonymous said...

Genericness and mere descriptiveness are specific subcategories of the broader category of “merely informational.” Merely descriptive [informational] terms are the only subcategory for which the Lanham Act specifically provides a route to trademark status.

At 11:29 AM, Blogger RT said...

I think the difference is real in the right circumstances. Consider "Hours of Energy Now" might merit a descriptiveness refusal if it were obviously being used in the "trademark spot," and the product had no other obvious name, but it was appropriately determined to fail to function as 5 Hour Energy was in fact using it.

At 1:11 PM, Blogger John L. Welch said...

I think the broad category is "Failure to Function." Genericness is a sub-category. So is mere descriptiveness without secondary meaning. "Informational" may just mean that the applicant is not using the proposed mark in a TM manner and therefore it won't be recognized as a trademark. Akin to that refusal is the refusal based on a faulty specimen of use: e.g., no association of the mark with the goods or services.

What about "TEXAS LOVE"? That was refused on failure-to-function grounds because it is a "widely used phrase that merely conveys a well recognized and commonly expressed concept or sentiment." It's not informational. So, is that another sub-category: i.e., commonplace phrases?


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