Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1291031
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`Filing date:
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`06/13/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex Parte Appeal -
`Serial No.
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`97060107
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`Appellant
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`Truckvault, Inc.
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`Applied for mark
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`TRUCKVAULT
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`Correspondence
`address
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`Submission
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`Attachments
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`Appealed class
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`CLARK A. PUNTIGAM
`JENSEN & PUNTIGAM, P.S.
`2033 6TH AVE, SUITE 990
`SEATTLE, WA 98121
`UNITED STATES
`Primary email: clark@jensenpuntigam.com
`Secondary email(s): docket@jensenpuntigam.com
`206-448-3200
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`Appeal brief
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`20230613090457131.pdf(61527 bytes )
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`Class 012. First Use: Jun 1, 1998 First Use In Commerce: Jun 1, 1998
`All goods and services in the class are appealed, namely: storage vaults spe-
`cially fitted for the cargo areas of cars, trucks, vans and sport utility vehicles
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Clark A. Puntigam
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`clark@jensenpuntigam.com
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`/Clark A. Puntigam/
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`06/13/2023
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`Appeai Brief 97060107
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`Trademark application 97060107 was filed on October 5, 2021. A non-final office
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`action was issued on July 14, 2022. Registration was refused undersection 2(e) (1) as
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`merely descriptive as it “merely describes a characteristic of applicant’s goods and/or
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`services.” In the action, the examineralso asserted that the mark“appears to be
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`generic” in connection with the identified goods and/or services. Applicant responded
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`to the office action on November7, 2022, traversing the examiner’s initial refusal of
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`registration on the basis that the mark is merely descriptive, and the examiner’s
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`assertion that the mark appears to be generic. A final office action was issued on
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`November7, 2022, again refusing registration on the basis that the mark is merely
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`descriptive undersection 2(e) (1) of the Act, and again asserting that the mark appears
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`to be generic in connection with the identified goods and/orservices. In the final
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`action, the examinerincluded a numberof attachments, listed on the first page of the
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`office action. The refusal of registration was appealed on May 5, 2023 and was
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`instituted on the same date.
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`In the final action, the examinerhas adjusted his reasons for refusal of registration
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`by asserting that the mark is a “telescoped mark”, citing “In re Omaha Nat’l Corp.
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`(FIRSTIER) and In re Greenland Sys. Ltd. (NANDRIVE)”’. The basic point which
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`remains on this appeal is, however, that refusal of registration of a mark as “merely
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`descriptive” must be based on an analysis of the mark as a whole, In viewing the mark
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`as a whole (TRUCKVAULT}, applicant again asserts that there is no recognized
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`definition of TRUCKVAULTasa single term (as a whole), whichis the case here, nor
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`is there a generally understood meaning of the single term. The refusal of registration
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`is an example of not taking into account use and registration of applicant’s mark in the
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`industry, a “real world” understanding of applicant’s mark. The only use of
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`TRUCKVAULTinthe industry is by the applicant, which as indicated in the filed
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`application has been consistently used for more than 20 years, The examiner has been
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`unable to identify any use of “truckvault” in the industry other than by applicant. It is
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`significant that there are many ways to “describe” truck storage units other than by
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`using applicant’s mark. The mark is thus not merely descriptive within the meaning of
`the Trademark Act. Even if the mark is considered to be merely descriptive,it has
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`becomedistinctive after more than 20 years of consistent use in the industry and
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`recognition in the industry.
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`Further, not only is the mark not “merely descriptive” within the meaning of
`Trademark Act, it is certainly not “highly descriptive” as asserted by the examiner. The
`mark cannot be considered generic under the common meaningof that termin the
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`world of trademarks and the Trademark Act, since the mark is not generally known as
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`the name for the goods, noris it used in the industry as the name for the goods. There
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`is no evidence in the record of genericness of the mark, only the examiner’s
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`unsupported assertion.
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`Accordingly, applicant’s mark is not “merely descriptive” within the meaning of
`the Trademark Act of the specified goods, noris the mark “generic” relative to the
`goods, The refusal of registration should thus be overturned, and applicant’s mark
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`approved for publication.
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