In Re Dss Environmental, Inc.

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1041
(Serial No. 76/317,128)
IN RE DSS ENVIRONMENTAL, INC.
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DECIDED: October 20, 2004
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Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and BRYSON, Circuit
Judge.
BRYSON, Circuit Judge.
DSS Environmental, Inc., (“DSS”) seeks review of the Trademark Trial and
Appeal Board’s decision refusing to register its trademark, DUALSAND, on the ground
that the term is merely descriptive. Because we conclude that the Board’s decision was
supported by substantial evidence and was not otherwise legally erroneous, we affirm.
I
DSS filed an application with the Patent and Trademark Office to register the
mark DUALSAND as used for “water and wastewater filters.” The examining attorney
issued an office action requiring DSS to provide additional information consisting of
“samples of advertisements or promotional materials for the goods” and, if promotional
materials were unavailable, to provide a description of the “nature, purpose, and
channels of trade of the goods identified in the application.”
Relying on dictionary definitions of “dual” and “sand” and on two utility patents,
the examining attorney concluded that “[a]bsent any limitations in the identification of
the goods, it is presumed that the applicant’s ‘water and wastewater filters’ are used in
dual sand filtration systems.” Accordingly, the examining attorney concluded that the
term DUALSAND was “merely descriptive of the identified goods” under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1).
DSS responded that the term DUALSAND was not descriptive, but instead was
“merely suggestive” of DSS’s goods. DSS provided a list of third-party registrations
containing either the word “sand” or the word “dual” to illustrate how each word could be
used in a permissibly suggestive manner. DSS also argued that the term DUALSAND
is registrable because it is an invented mark creating a unique commercial impression
and because “DUALSAND is merely a small component of the entire wastewater
filtration system.” In support, DSS provided a list of third-party registrations describing
components of goods and services as well as a list of third-party registrations describing
“at least one attribute of [the registered] goods . . . .”
In the final office action, the examining attorney refused to register the proposed
mark. Relying on 13 articles found on the Internet, she concluded that “‘dual sand’ is a
term-of-art in the wastewater and water treatment industry used to describe a specific
filtration process.” In reaching that conclusion, the examining attorney cited four articles
to show how the terms “dual sand filters,” “dual sand filtration system,” and “dual sand
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filtration process” are used in the wastewater treatment industry. The examining
attorney also refused to consider the list of third-party registrations that DSS submitted,
because DSS did not provide copies of the registrations in order to make them of
record.
DSS appealed to the Trademark Trial and Appeal Board, which upheld the
examining attorney’s rejection of the proposed mark based on descriptiveness and her
refusal to consider DSS’s list of third-party registrations. Based on the two utility
patents and the 13 articles from the Internet, the Board found that dual sand “is a term
used in the water and wastewater treatment industries to describe a type of filtration
process.” The Board stated that DUALSAND “immediately conveys that the filters are
for the use in the ‘dual sand filtration’ system or process.” The Board explained that it
was unnecessary to analyze the component words “dual” and “sand” separately
because the words together convey information about the goods. “Far from being
unique in commercial impression,” the Board stated, “applicant’s term is already in use
by others in the water and wastewater treatment industry . . . .” Accordingly, the Board
held that the term DUALSAND is descriptive and therefore unregistrable.
The Board also rejected DSS’s argument that the examining attorney should
have considered DSS’s list of third-party registrations. The Board pointed out that DSS
was not entitled to have those registrations considered, because DSS had failed to
submit copies of the actual registrations or their electronic equivalents, as was required
by the rules of practice applicable to trademark registration proceedings. The Board
added that even if it had considered those registrations, it still would have found DSS’s
mark to be descriptive.
04-1041 3
II
On appeal to this court, DSS contends that the term DUALSAND is not merely
descriptive and that the Board should have considered its list of third-party registrations.
A
Pursuant to 15 U.S.C. § 1052(e)(1), the PTO may refuse to register a mark if the
mark, “when used on or in connection with the goods of the applicant,” is “merely
descriptive” of the applicant’s goods. A mark is merely descriptive if it “would
immediately convey to one seeing or hearing it the thought of appellant’s services.” In
re Bed & Bath Breakfast Registry, 791 F.2d 157, 159 (Fed. Cir. 1986), quoting In re Am.
Soc’y of Clinical Pathologists, Inc., 442 F.2d 1401, 1407 (CCPA 1971); see also In re
Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987) (“Whether a given mark is suggestive or
merely descriptive depends on whether the mark ‘immediately conveys . . . knowledge
of the ingredients, qualities, or characteristics of the goods . . . with which it is used’”),
quoting In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 525 (CCPA 1980). A term
may be either descriptive or suggestive depending on its usage, the context, and other
factors affecting the purchasing public’s perception of the term. In re Nett Designs, Inc.,
236 F.3d 1339, 1341 (Fed. Cir. 2001), citing Zatarains, Inc. v. Oak Grove Smokehouse,
Inc., 698 F.2d 786 (5th Cir. 1983).
Substantial evidence supports the Board’s determination that the term
DUALSAND is descriptive of the goods in this case. Thirteen articles from the Internet
and two utility patents, including DSS’s own patent, support the finding that the mark
immediately conveys to prospective customers that DSS’s goods feature wastewater
filters. The articles show the terms “dual sand filters” and “dual sand filtration” being
04-1041 4
used with reference to the water and wastewater treatment industry. DSS’s patent uses
the term “dual sand-filtration system” to describe an invention that treats wastewater by
using two filters connected in series, “[t]he first sand-filter unit compris[ing] large-grained
sand,” and “[t]he second sand-filter unit compris[ing] a fine-grained sand” and
“receiv[ing] its influent from effluent weir of the first sand-filter unit.” The record also
includes a utility patent that covers a “dual sand removal chamber” used for removing
solids from wastewater. Accordingly, the evidence supports the Board’s conclusion that
DUALSAND is a descriptive term as used in the water and wastewater filtration industry.
DSS argues that “dual sand” is not a descriptive term as used in the water and
wastewater filtration industry, because the term does not have one specific meaning but
is subject to multiple interpretations. DSS contends that the references cited by the
examining attorney used the term “dual sand” to describe different types of water and
wastewater filter systems, including systems that use two filters or just one and systems
that are delivered to purchasers with or without sand. DSS also contends that the third-
party utility patent’s “dual sand removal chamber” lacks filters and instead uses two
settling chambers to remove solids from what DSS described in its brief as “unfiltered
waste water.” DSS further points to use of the term “dual sand” outside of the
wastewater filtration context, citing as an example the use of “dual sand connections” to
provide traction in locomotives. Based on that evidence, DSS argues that the
combination of the words “dual” and “sand” is a “fairly common occurrence, ranging in a
number of meanings that do not identify the same noun, system, or concept.” Because
DUALSAND “does not have a commonly understood meaning,” DSS argues, the mark
04-1041 5
is not a term of art and cannot convey an immediate idea of the characteristics of the
goods.
While the term “dual sand” may refer to different types of wastewater filters and
filtration systems, the term is nonetheless descriptive of a wastewater filter or filtration
system. The differences among such systems relate primarily to the number of filters
being used, but the differences do not prevent the term from being descriptive as used
in this case. In all cases, “dual sand” describes filters and filtration systems that are
used for treating water and wastewater. To the extent that the third-party utility patent
does not use “dual sand” to refer specifically to filters, the patent still helps to
demonstrate that the use of the term “dual sand” is descriptive of treatment technologies
in the wastewater treatment industry. Other items to which DSS argues the term “dual
sand” can refer, such as “dual sand connections” in the context of locomotives, are
irrelevant in the context of DSS’s goods. Accordingly, we affirm the Board’s finding that
the term DUALSAND is descriptive.
In addition to its central argument pertaining to descriptiveness, DSS makes
three additional arguments. First, DSS argues that the articles in the record lack
credibility because their source was the Internet. However, the examining attorney was
not relying on the articles for their accuracy, but merely to ascertain how the term “dual
sand” is used in the context of water wastewater filtration. In making such a
determination, the examining attorney may obtain evidence from “any competent
source, such as dictionaries, newspapers, or surveys.” Bed & Breakfast Registry, 791
F.2d at 160, citing Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed. Cir.
1985); see also Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 641 (Fed. Cir. 1991)
04-1041 6
(“Evidence of purchaser understanding may come from direct testimony of consumers,
consumer surveys, dictionary listings, as well as newspapers and other publications.”).
The Internet articles in this case, including on-line copies of newspaper articles, fully
satisfy that requirement.
Second, DSS argues that ten of the article references do not provide sufficient
information to clarify the actual meaning of the term “dual sand.” However, there is no
requirement that, in order to show that a mark is merely descriptive, each reference
must clarify the meaning of a proposed mark. An examining attorney only needs to
provide references showing that a prospective purchaser would understand the
descriptive significance of the term. See In re MBNA Am. Bank, N.A., 340 F.3d 1328,
1332 (Fed. Cir. 2003) (“The perception of the relevant purchasing public sets the
standard for determining descriptiveness”), citing In re Nett Designs, Inc., 236 F.3d
1339, 1341 (Fed. Cir. 2001). All ten articles show how the term is used to describe
filters or filtration in the wastewater treatment industry, and they demonstrate that a
prospective purchaser of a wastewater filter would readily recognize the descriptive
significance of DUALSAND when used in connection with the identified goods.
Third, DSS argues that, with respect to its own patent, the term “dual sand” was
not used in a descriptive manner, because the term appeared only once in the
“Background of Invention” section of the patent. Had it actually been a descriptive term,
DSS argues, “dual sand” would have appeared throughout the patent instead of just
once. DSS’s argument fails. Whether a term is descriptive does not depend on how
frequently it is used within a reference. A reference provides sufficient support for
descriptiveness if it shows that a term has descriptive significance to the purchasing
04-1041 7
public. See MBNA Am. Bank, 340 F.3d at 1332. DSS’s patent shows that the use of
the term “dual sand” has descriptive significance. In the Background of Invention
section, DSS’s patent states that a “dual sand-filtration system affords an outstanding
level of removal of phosphorus, total suspended solids, turbidity and biochemical
oxygen demand (BOD5).” Prior to that statement, the patent does not describe the
filtration system as using two filter tanks or two types of sand. That description does not
appear until three paragraphs later. The use of term “dual sand” in the patent is thus
clearly descriptive.
B
We turn next to DSS’s argument that the PTO should have considered DSS’s list
of third-party registrations. DSS characterizes its failure to submit physical copies of the
registrations from its list as “a harmless procedural error,” contending that the PTO’s
requirement for copies constitutes an arbitrary policy that denied DSS due process. We
disagree.
The Trademark Manual of Examining Procedure (“TMEP”), Trademark Trial and
Appeal Board Manual of Procedure (“TBMP”), and relevant case law all make clear that
merely listing third-party registrations is not sufficient to make them of record; rather,
trademark applicants must submit actual copies of registrations or their electronic
equivalents. TMEP § 710.03; TBMP § 703.02(b); In re Volvo Cars of N. Am., Inc., 46
USPQ2d 1455, 1461 (TTAB 1998) (“copies of the official records themselves, or the
electronic equivalent thereof, that is, printouts of the registrations taken from the
electronic records of the Patent and Trademark Office’s own data base, must be
submitted”), citing In re Smith & Mehaffey, 13 USPQ2d 1531, 1532 n.3 (TTAB 1994). In
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its brief, the PTO provides a rationale for the policy, explaining that given the high
volume of applications with which each examiner works, an expectation that examiners
should bear the burden of printing copies of listed registrations is unreasonable. In light
of that rationale, we cannot find that the policy itself was so arbitrary as to constitute a
denial of due process. In any event, DSS had an opportunity to submit copies of the
third-party registrations after the PTO issued its final action and prior to filing its notice
of appeal with the Board, but it failed to do so. And finally, DSS has failed to show that
the rejection of the third-party registrations prejudiced it, because the Board explained
that it would have reached the same conclusion with respect to the descriptiveness of
the mark even if it had considered the third-party registrations. Accordingly, we uphold
the Board’s refusal to consider the third-party registrations, and we sustain the Board’s
decision rejecting DSS’s registration application.
04-1041 9