From: Snyder, Nelson

Sent: 1/11/2021 3:41:05 PM

To: TTAB EFiling

CC:

Subject: U.S. Trademark Application Serial No. 87854130 - AIR MACHINE - KEISER.062T - EXAMINER BRIEF

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Attachment Information:

Count: 6

Files: 85961627P001OF003.JPG, 85961627P002OF003.JPG, 85961627P003OF003.JPG, KeiserTVResponsePg1-2021-01-03_13-43-30.jpg, KeiserTVResponsePg2-2021-01-03_13-44-47.jpg, 87854130.doc

United States Patent and Trademark Office (USPTO)

U.S. Application Serial No. 87854130

Mark: AIR MACHINE

Correspondence Address: JEFFREY L VAN HOOSEAR

KNOBBE MARTENS OLSON & BEAR LLP

2040 MAIN ST 14TH FL

IRVINE, CA 92614

Applicant: KEISER CORPORATION

Reference/Docket No. KEISER.062T

Correspondence Email Address:

efiling@knobbe.com

EXAMINING ATTORNEY’S APPEAL BRIEF

INTRODUCTION

The applicant has appealed the trademark examining attorney's final determination that the

proposed amendment of the applied-for mark AIR MACHINE to KEISER AIR MACHINE constitutes an

unacceptable material alteration, and the final refusal to register the applied-for mark AIR MACHINE

because it merely describes the identified goods. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14; Trademark

Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).

REQUEST FOR JUDICIAL NOTICE OF EVIDENCE

The trademark examining attorney respectfully requests that the Trademark Trial and Appeal

Board take judicial notice of attached evidence consisting of: 1) a copy of Applicant’s prior U.S.

Application Serial No. 85961627, and 2) a copy of Applicant’s March 28, 2014 “Response to Office

Action” for the same Application Serial No. 85961627 [also found at Mar. 28, 2014 Response to Office

Action, TSDR pg. 1, and signed by Applicant’s same attorney in the present case]. TBMP §1208.04; see

also Fed. R. Evid. 201; 37 C.F.R. §2.122(a).

Applicant’s prior U.S. Application Serial No. 85961627 and the prosecution history of said

application are repeatedly referenced in Applicant’s Appeal Brief for the instant application, and are

raised by Applicant for the first time during its present Appeal Brief. The copies of Serial No. 85961627

and that application’s March 28, 2014 “Response to Office Action” comprise generally known facts that

can be accurately and readily determined from sources whose accuracy cannot reasonably be

questioned, and are necessary to clarify assertions made by the Applicant in its Appeal Brief for the

instant application. TBMP §§704.12, 1208.04.

FACTS

The applicant has applied on the Principal Register for the mark AIR MACHINE

(standard character form) for “exercise machines, manually operated exercise equipment, elliptical

exercise machines and stationary exercise cycles” in International Class 028.

The application was filed March 28, 2018 under Section 1(b) for the mark AIR

MACHINE (standard character form) for “exercise machines, manually operated exercise equipment,

elliptical exercise machines and stationary exercise cycles” in International Class 028. A non-final Office

Action issued July 18, 2018, in which registration was refused under Trademark Act Section 2(e)(1)

because the applied-for mark merely describes the identified goods. The Office Action also advised

Applicant that the applied-for mark appears to be generic in connection with the identified goods and,

therefore, incapable of functioning as a source-identifier for applicant’s goods. While Applicant’s

“Statement of Facts” lists the incorrect date of response, the applicant responded to the first Office

Action in a January 18, 2019 communication, in which it argued against the refusal to register.

Following Applicant’s January 18, 2019 response, the refusal under Trademark Act

Section 2(e)(1) (because the applied-for mark merely describes the identified goods) was maintained and

made final in a February 5, 2019 final Office Action. Applicant filed an appeal and request for

reconsideration of the final Office Action on August 2, 2019. Action on the appeal was suspended

pending consideration of Applicant’s request for reconsideration.

In the August 2, 2019 request for reconsideration, Applicant claimed ownership of

prior U.S. Reg. No. 3960319 for the mark KEISER for “exercise machines, manually operated exercise

equipment, elliptical exercise machines and stationary exercise cycles”. The claimed prior registration is

registered on the Principal Register based on a claim of acquired distinctiveness under Trademark Act

Section 2(f). Citing TMEP §807.14(b), Applicant’s request for reconsideration proposed an amendment of

the applied-for mark AIR MACHINE to KEISER AIR MACHINE.

The proposed drawing amendment raised a new issue, and was determined to be an

unacceptable material alteration in an August 19, 2019 non-final Office Action. The Office Action also

advised Applicant that the claim of ownership of U.S. Reg. No. 3960319 will not be printed on any

registration that may issue from this application because the marks are different, and continued the

refusal under Trademark Act Section 2(e)(1) (because the applied-for mark AIR MACHINE merely

describes the identified goods).

In a February 18, 2020 communication, Applicant argued against the determination

that the proposed drawing amendment constitutes an unacceptable material alteration. However, the

determination that the proposed drawing amendment constitutes an unacceptable material alteration

and the previously continued refusal under Trademark Act Section 2(e)(1) were both maintained and

made FINAL in a March 11, 2020 final Office Action.

The Appeal resumed on August 31, 2020, and Applicant filed a motion for extension of

time to file its Appeal Brief on October 23, 2020. While Applicant’s motion indicated that it also filed a

request for remand, there is no record that the request for remand was in fact filed, and the Board

denied Applicant’s request for extension of time on October 27, 2020. Nevertheless, the Board

exercised its discretionary authority to allow Applicant until November 10, 2020 to file its Appeal Brief.

Applicant’s Appeal Brief was subsequently filed on November 10, 2020.

This is the examining attorney’s Appeal Brief.

ISSUES

The primary issue on appeal is whether the proposed amendment of the applied-for mark to

KEISER AIR MACHINE constitutes an unacceptable material alteration of the applied-for mark AIR

MACHINE.

If the proposed drawing amendment is in fact an unacceptable material alteration of the

applied-for mark, the secondary issue on appeal is whether the applied-for mark AIR MACHINE merely

describes the identified goods.

ARGUMENT

(1) The proposed drawing amendment constitutes an unacceptable material alteration.

Contrary to Applicant’s arguments, the proposed drawing amendment from AIR

MACHINE to KEISER AIR MACHINE would materially alter the mark in the drawing filed with the original

application. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.

The USPTO cannot accept an amendment to a mark if it will materially alter the mark

in the drawing filed with the original application, or in a previously accepted amended drawing. 37

C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would

need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present

the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir.

2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP

§807.14.

That is, an amendment is material if the altered mark does not retain “the essence of

the original mark” or if the new and old forms do not “create the impression of being essentially the

same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v.

Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57

USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material

alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to

just the typed word TURBO without design a material alteration).

When determining materiality, the addition of any element that would require a

further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online

LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB

1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.

While Applicant is correct that TMEP §807.14(b) discusses the addition of previously

registered matter to a mark, the applicant’s assertion that TMEP §807.14(b) lacks relevant “restrictions”

for such an addition is incorrect. Contrary to Applicant’s assertions, the plain language of TMEP

§807.14(b) makes clear that such a proposed addition is not a given:

An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted … An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark.

[Emphasis added.]

The Board clarified appropriate considerations for such an amendment in In re John

LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r Pats. 1992):

Whether republication would be required is only one consideration in the determination of whether a mark has been materially changed. Moreover, the test for whether a mark has been materially altered does not depend on whether the dominant portion of the original mark is still present in the amended form. The question is whether the proposed mark has a different commercial impression.

[Emphasis added.] Similarly, the proposed amendment in this case would result in a mark with a

different commercial impression.

In this case, the commercial impression created by the wording AIR MACHINE is

arguably not a source identifier at all, but is instead that of a class or type of exercise equipment:

The best machines for strength training for men over 60 are air machines or hydraulic machines. (July 18, 2018 Office Action, TSDR pg. 47.)

Air machines function like an exercise machine with a hydraulic system. These low-impact machines absorb shock so that they reduce the amount of stress put on joints. (July 18, 2018 Office Action, TSDR pg. 54.)

Rowing machines are manufactured with four different types of resistance: air, water, magnetic and piston … Air and magnetic machines allow for the fastest change in resistance … The air machines should have a cover made of narrow mesh … (February 5, 2019 Office Action, TSDR pg. 91.)

I used air equipment years ago while going through rehab … I guess a big plus to air machines being used in a gym is that there are no weight plates to fall on someone and hurt them. (February 5, 2019 Office Action, TSDR pg. 78.)

The third Gazelle product on our list and the third best air machine we’ll talk about has all the hallmarks that we found on the other machines from the company. (February 5, 2019 Office Action, TSDR pg. 74.)

[Emphasis added in all.]

Before turning to the commercial impression created by the proposed additional term KEISER, it

is first noted that Applicant’s discussion of a Section 2(e)(4) evidentiary burden is premature and

without merit. There is no Section 2(e)(4) evidentiary burden at this time because the mark in the

instant application has not been refused under Trademark Act Section 2(e)(4). If the proposed addition

of the term KEISER to the applied-for mark was permitted, a Section 2(e)(4) refusal (and disclaimer

advisory for the apparently generic wording AIR MACHINE) would issue at that time. The new issue

arising from such a Section 2(e)(4) Refusal is itself evidence that the proposed addition of KEISER to the

applied-for mark results in a mark with a different commercial impression, namely, that of a surname.

Furthermore, while a Section 2(e)(4) evidentiary burden is not appropriate at this time, the record is

hardly lacking in evidence that the commercial impression created by the added term KEISER is that of a

surname.

The record is clear that Applicant owns active U.S. Registration No. 3960319 for the

mark KEISER for “exercise machines, manually operated exercise equipment, elliptical exercise machines

and stationary exercise cycles”. (See copy at August 19, 2019 Office Action, TSDR pgs. 2-3.) In this case,

Applicant has proposed adding the same term to the applied-for mark AIR MACHINE for identical goods.

In its prior U.S. Registration No. 3960319, Applicant claimed acquired distinctiveness

under Trademark Act Section 2(f) unconditionally and not in the alternative for KEISER in the initial

application. Thus, Applicant conceded that this wording was not inherently distinctive but was rather

primarily merely a surname. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1479 (TTAB

2016) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d

1626, 1629 (Fed. Cir. 2009)); TMEP §1212.02(b)-(c). Accordingly, applicant’s prior registration is

probative to show that applicant’s proposed mark is not inherently distinctive in this case. See In re

Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); TMEP §1212.02(c).

With respect to Applicant’s prior Application Serial No. 85961627, the applicant repeatedly

references the application (and its prosecution history) in its Appeal Brief but has unsurprisingly failed to

provide a copy of said application or any prosecution history. While Applicant asserts the Office’s

treatment of its prior KEISER TV mark equates to the term KEISER now being inherently distinctive, even

a cursory review of Serial No. 85961627 belies Applicant’s arguments. As was true with Applicant’s prior

U.S. Reg. No. 3960319, Applicant similarly claimed acquired distinctiveness under Section 2(f)

unconditionally (and not in the alternative) in a subsequent amendment [after the mark KEISER TV had

been refused as a surname under Trademark Act Section 2(e)(4)]. (See Serial No. 85961627 Mar. 28,

2014 Response to Office Action, TSDR pg. 1.) This was again a concession by Applicant that KEISER (even

when combined with other wording) was not inherently distinctive but was rather primarily merely a

surname.

The August 19, 2019 Office Action also included evidence from LEXISNEXIS®,

establishing the surname significance of KEISER. This evidence shows the applied-for mark appearing

more than 12,000 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated

directory of cell phone and other phone numbers (such as voice over IP) from various data providers.

(August 19, 2019 Office Action, TSDR pg. 1.)

If a mark combines a surname with an additional term, the mark will be evaluated to

determine if the primary significance of the mark as a whole in connection with applicant’s goods and/or

services is still that of a surname. See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123

USPQ2d 1411, 1413 (Fed. Cir. 2017); TMEP §1211.01(b). A key element in this determination is the

relative distinctiveness of the additional term in the mark. [Emphasis added.] Earnhardt v. Kerry

Earnhardt, Inc., 864 F.3d at 1377, 123 USPQ2d at 1413 (citing In re Hutchinson Tech. Inc., 852 F.2d 552,

554-55, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01(b)(vi).

A nondistinctive term is typically accorded less weight and is not likely to detract from

the primary surname significance of the mark. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481

n.9, 1482 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d at 554, 7 USPQ2d at 1492-93);

TMEP §1211.01(b)(vi). Although individual components of a mark may be weighed to determine the

mark’s overall commercial impression, the combination of the individual parts must be viewed as a

whole to determine if the additional term alters the primary significance of the mark to the purchasing

public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1378-79, 123 USPQ2d at 1414 (quoting In re

Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)).

As was true with Applicant’s prior KEISER TV mark, the proposed combination of the

surname KEISER with the (at best) highly descriptive wording AIR MACHINE does not alter the primary

significance of the proposed mark as a whole from that of a surname. Combining a surname with a

term that is merely descriptive, primarily geographically descriptive or deceptively misdescriptive, or

generic of an applicant’s goods and/or services typically does not “detract from the primary surname

significance” of the mark. Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481-82, 1481 n.9 (TTAB 2017)

(construing In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492-93 (Fed. Cir. 1988)); see

TMEP §1211.01(b)(vi). In this case, the record contains ample third party descriptive and generic use of

the wording AIR MACHINE such that it would not detract from the surname significance of the proposed

added surname KEISER.

Applicant also relies on Florasynth Labs., Inc. v. Mülhens, 122 USPQ 284 (Comm’r Pats.

1959) in support of its contention that the proposed mark amendment is acceptable. However,

Florasynth Labs is readily distinguishable from the case at hand. Unlike the mark in that case, the

proposed amendment in the present case would raise an entirely new issue, namely, a surname refusal

under Trademark Act Section 2(e)(4), and result in an amended mark with a different commercial

impression.

As was true in LaBatt, the “nature of the [proposed] changes to the mark” in this case

supports the conclusion that “Applicant has created a new mark with a different commercial

impression”. LaBatt at 1079. See also In re Vienna Sausage Manufacturing Co., 16 USPQ2d 2044, 2047

TTAB 1990). Accordingly, the proposed amendment of the applied-for mark constitutes an unacceptable

material alteration.

(2) The applied-for mark AIR MACHINE merely describes the identified goods.

As discussed above, the evidence of record clearly demonstrates that the applied-for

mark AIR MACHINE is (at best) highly descriptive of exercise products such as those identified by the

applicant.

A mark is merely descriptive if it describes an ingredient, quality, characteristic,

function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g.,

In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl &

Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415

F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of

Patents, 252 U.S. 538, 543 (1920)).

The determination of whether a mark is merely descriptive is made in relation to an

applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices,

Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of

the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b). “Whether

consumers could guess what the product [or service] is from consideration of the mark alone is not the

test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

In this case, the mark wording identifies key characteristics or features of the

identified goods, namely, that they comprise “a mechanically … operated device” that uses “the mixture

of invisible odorless tasteless gases (such as nitrogen and oxygen) that surrounds the earth”. See

dictionary entries from www.merriam-webster.com and web page screen capture from

http://greatist.com, confirming that Applicant’s goods use air for resistance. (July 18, 2018 Office

Action, TSDR pgs. 2-21.) Moreover, Applicant’s own product documents and website use the term

“machine” in a generic manner, while “air” is used to identify a key characteristic or feature of the

goods:

Air flows into the machine through this hose … The more air let into the machine the greater the resistance will be.

Powered by air resistance.

(February 5, 2019 Office Action, TSDR pgs. 63-64. Emphasis added in all.)

Applicant has argued that any doubt regarding the mark’s descriptiveness should be

resolved on applicant’s behalf. E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571

4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB

2006). However, in the present case, the evidence of record is replete with third party descriptive and

generic use of the wording in question, and leaves no doubt that AIR MACHINE is (at best) merely

descriptive for the identified goods.

In addition to above-referenced examples showing generic use of AIR MACHINE, the

webpage screen capture from http://homecareassistance.com provides a list of “five types of exercise

equipment that are recommended for safe senior exercise”. [Emphasis added.] The wording “Air

Machines” is listed among other generic types of exercise equipment that include “Trampolines” and

“Aquatic Fitness Equipment”. (July 18, 2018 Office Action, TSDR pgs. 53-54.) For purposes of evaluating a

trademark, material obtained from the Internet is generally accepted as competent evidence. See In re

Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier

Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP

§710.01(b).

Two major reasons for not protecting descriptive marks are (1) to prevent the owner

of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of

costly infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588

F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be

free to use descriptive language when describing their own goods and/or services to the public in

advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

CONCLUSION

The evidence of record clearly demonstrates that the proposed mark drawing amendment

constitutes an unacceptable material alteration, and that the applied-for mark AIR MACHINE merely

describes the identified goods. Accordingly, the examining attorney respectfully requests the

determination that the proposed drawing amendment comprises an unacceptable material alteration

and the refusal under Trademark Act Section 2(e)(1) both be upheld.

Respectfully submitted, January 11, 2021

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

J. Leslie Bishop

Managing Attorney

Law Office 107