Mueller Sports Medicine, Inc.

This Opinion is a

Precedent of the TTAB

Mailed: May 16, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re Mueller Sports Medicine, Inc.

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Serial No. 87209946

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Rick L. Abegglen, Esq. of Mueller Sports Medicine, Inc.

Barney Charlon, Trademark Examining Attorney, Law Office 104,

Dayna Browne, Managing Attorney.

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Before Mermelstein, Bergsman and Gorowitz,

Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Mueller Sports Medicine, Inc. (“Applicant”) seeks registration on the Principal

Register of the mark RECOIL (in standard characters) for the goods listed below:

Tape and taping supplies for medical purposes, namely,

medical cohesive tape, in International Class 5;

Tape and taping supplies for athletic purposes, namely,

athletic cohesive tape, in International Class 28.1

1 Application Serial No. 87209946 was filed on October 20, 2016, under Section 1(b) of the

Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide

intention to use the mark in commerce. On July 5, 2017, Applicant filed an Amendment to

Allege Use claiming first use anywhere and use in commerce since at least as early as July

1, 2017 for the goods in both classes.

Serial No. 87209946

The Trademark Examining Attorney refused registration of Applicant’s mark

under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

RECOIL, used in connection with medical and athletic cohesive tape, is merely

descriptive of a characteristic of the tape, its elasticity, because RECOIL refers to the

“property of being able to return to its original form when stretched.”2 In the

alternative, the Trademark Examining Attorney refused to register Applicant’s mark

under the same section but on the ground that the mark is deceptively misdescriptive

of the goods (i.e., if RECOIL is not descriptive, then it is a misdescription of an

attribute of the goods).3

After the Trademark Examining Attorney made the refusal final, Applicant

appealed to this Board. We affirm the refusal to register.

I. Evidentiary Issue

When submitting a webpage, the Trademark Manual of Examining Procedure

(“TMEP”) instructs an examining attorney to include the URL of the website and the

date the excerpt was accessed.

When making Internet evidence part of the record, the

examining attorney must both (1) provide complete

information as to the date the evidence was published or

accessed from the Internet, and its source (e.g., the

complete URL address of the website), and (2) download

and attach the evidence to the Office action. See Safer Inc.

v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).

2 Trademark Examining Attorney’s Brief (6 TTABVUE 4).

3 Id.

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TMEP § 710.01(b) (October 2017). Cf. Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546,

1550 (TTAB 2012) (webpages inadmissible because they did not include the URL).

In his January 11, 2017 Office Action, the Trademark Examining Attorney

submitted an excerpt purportedly from the Google Books website without including

the URL, the date the excerpt was accessed, or the title and author of the book

excerpted in the Google Books search result.4 Nevertheless, in its July 6, 2017

Response to the Office Action, Applicant did not object to the submission of the Google

Books Internet excerpt and discussed the probative value of that excerpt.5

In his July 31, 2017 Final Office Action, the Trademark Examining Attorney

submitted, inter alia, excerpts from the Ultimate Performance 3d Taping Guide

website (TSDR 6-7), the Authentic Kinesio website (TSDR 8-9), Google Books website

(TSDR 12), and the Athletic Tape Info website (TSDR 17-18) without providing the

URLs or the dates the webpages were accessed. In the body of the Office Action, the

Trademark Examining Attorney did not refer to these excerpts. In its Appeal Brief,

Applicant neither objected to the submission of these website excerpts as improper,

nor discussed them.

The Board has stated that “it is preferable that material obtained from the

Internet should be identified by the full address (url) for the webpage and the date it

was downloaded, either by the information printed on the webpage itself, or by

4 TSDR 12. References to the TSDR database are to the downloadable .pdf version.

In the body of the July 11, 2017 Office Action, the Trademark Examining Attorney stated the

attached excerpt is from Google Books. (TSDR 2).

5 TSDR 6.

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providing this information in an Office action or an applicant's response.” In re Max

Capital Grp. Ltd., 93 USPQ2d 1243, 1246 n.6 (TTAB 2010) (citing In re Int’l Bus.

Mach. Corp., 81 USPQ2d 1677, 1682 n.9 (TTAB 2006) (the Board considered

webpages without web addresses because applicant did not object)). However, until

Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010), there was no

requirement for the propounding party to include the web address when introducing

a webpage in a Board proceeding. By analogy, the TMEP adopted the requirements

identified in Safer for use by Examining Attorneys in ex parte proceedings.

Because there are no precedential cases regarding an examining attorney’s failure

to properly submit Internet evidence, we turn to an analogous situation for guidance.

If the applicant, during the prosecution of the application,

provided a listing of third-party registrations, without also

submitting actual copies of the registrations, and the

examining attorney did not object or otherwise advise the

applicant that a listing is insufficient to make such

registrations of record at a point when the applicant could

cure the insufficiency, the examining attorney will be

deemed to have waived any objection to the admissibility

of the list.

Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1207.03 (June

2017); see also TBMP § 1208.02. Accordingly, if an examining attorney fails to include

the website URL and the date that the webpage was accessed but the applicant fails

to lodge an objection on that ground, then the Board will consider the website for

whatever probative value it may have.

In this case, because Applicant did not object to the Internet excerpts from the

Ultimate Performance 3d Taping Guide website, the Authentic Kinesio website, the

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Google Books websites, and the Athletic Tape Info, Applicant waived its objection to

the submission of those websites.6

Moreover, in view of the TMEP’s extension to examining attorneys of the

requirements set forth in Safer v. OMS for the URL and date to be displayed on

website excerpts, we further extend these requirements to both examining attorneys

and applicants in ex parte proceedings. Similar to the submission of third-party

registrations, Examining Attorneys have a responsibility to make sure that

applicants properly submit Internet evidence. If the applicant’s response includes

Internet evidence without a URL or date it was printed, the examining attorney must

object to the evidence in the first Office action following the response and advise the

applicant as to the proper way to make the Internet evidence of record. Otherwise the

Board may consider the objection to be waived. Cf. In re ActiveVideo Networks, Inc.,

111 USPQ2d 1581, 1594 n.40 (TTAB 2014) (objection waived where examining

attorney, in a continuing refusal, failed to advise applicant that mere listing of third-

party registrations was insufficient to make them of record); In re City of Houston,

101 USPQ2d 1534, 1536 (TTAB 2012) (“[T]he examining attorney’s failure to advise

applicant of the insufficiency of the list of registrations when it was proffered during

6 The other evidence is sufficient to show that RECOIL in connection with tape and taping

supplies for medical and athletic purposes is merely descriptive. Thus, our decision would not

change even if we struck the websites without URLs.

The GOOGLE BOOKS Internet excerpts did not include the name of the book from which it

was taken or the book’s author. Besides including the URL and date the GOOGLE BOOKS

Internet excerpt was accessed, to provide better context for the excerpt, the Trademark

Examining Attorney should have included the front or cover page showing the book title and

author’s name and the page showing the copyright notice.

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examination constituted a waiver of any objection to consideration of that list.”); In

re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007) (allowing evidence of

a list of third-party registrations because the examining attorney did not advise

applicant of the insufficiency of the list while there was still time to correct the

mistake). If the applicant files an appeal, the Examining Attorney should continue

the objection to the evidence in his or her appeal brief.

II. Applicable law for determining whether a term is merely

descriptive.

Section 2(e) of the Trademark Act prohibits registration on the Principal Register

of “a mark which, (1) when used on or in connection with the goods of the applicant

is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely

descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys

knowledge of a quality, feature, function, or characteristic of the goods or services

with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,

102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,

82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise

mature thought or follow a multi-stage reasoning process in order to determine what

product or service characteristics the term indicates, the term is suggestive rather

than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB

1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal

Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980).

Whether a mark is merely descriptive is determined in relation to the goods or

services for which registration is sought, not in the abstract or on the basis of

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guesswork, and we must consider “the context in which [the mark] is being used, and

the possible significance that the term would have to the average purchaser of the

goods [or services] because of the manner of its use or intended use.” In re Chamber

of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d

at 1831). In other words, we evaluate whether someone who knows what the goods or

services are will understand the mark to convey information about them. DuoProSS

Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757

(Fed. Cir. 2012); In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).

III. Whether RECOIL for medical and athletic cohesive tape is

merely descriptive?

The word “Recoil” is defined, inter alia, as “to spring or come back, as in

consequence of force of impact or the force of the discharge, as a firearm,” and “to

spring or come back; react (usually followed by on or upon): Plots frequently recoil

upon the plotters.”7 “Recoil” is synonymous with “Rebound.”8

The Trademark Examining Attorney argues that “recoil” describes the capacity of

Applicant’s medical and athletic cohesive tape to return to its original form after

7 Dictionary.com based on the Random House Dictionary (2017) attached to the January 11,

2017 Office Action (TSDR 4). See also Oxford Living Dictionaries (en.oxforddictionaries.com)

(2018) (“rebound or spring back through force of impact or elasticity.”). The Board may take

judicial notice of dictionary definitions, including online dictionaries that exist in printed

format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d

594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96

USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB

2006.

8 Dictionary.com based on the Random House Dictionary (2017) attached to the January 11,

2017 Office Action (TSDR 5).

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Serial No. 87209946

application and use.9 In this regard, Applicant, on its packaging, describes its product

as “Elastic Cohesive Tape.” “Elastic” is defined, inter alia, as “capable of returning to

its original length, shape, etc., after being stretched, deformed, compressed, or

expanded,” and “springing back or rebounding.”10 Thus, the Trademark Examining

Attorney concludes that “the word RECOIL defines the very property – elasticity –

that applicant uses in describing its product on its packaging.”11 See In re N.C.

Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017 (“the TTAB did not

err by considering the explanatory text of the specimens in the descriptiveness

inquiry”).

The Trademark Examining Attorney submitted excerpts from the websites listed

below to show how the word “Recoil” is used by third parties in connection with

athletic and medical tape to describe the ability of the tape to return to its original

form (emphasis added):

9 Trademark Examining Attorney’s Brief (6 TTABVUE 4).

10 Dictionary.com based on the Random House Dictionary (2018).

We decline to take judicial notice of the dictionary definition the Trademark Examining

Attorney requested in his Appeal Brief (6 TTABVUE 4) because we cannot discern from the

attached web pages or other evidence that the resource, medical-

dictionary.thefreedictionary.com, exists in printed format. For example, the web pages

attached to the brief do not indicate whether the definitions are derived from a particular

dictionary. Thus, the Trademark Examining Attorney’s citation to In re Jimmy Moore LLC,

119 USPQ2d 1764, 1768 (TTAB 2016), is inapposite because Jimmy Moore holds that the

Board may take judicial notice of an online dictionary that is also available in printed form.

The better practice would have been for the Trademark Examining Attorney to have

submitted a copy of the definition during the prosecution of the application.

11 Trademark Examining Attorney’s Brief (6 TTABVUE 4).

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• Musculoskeletal Key website (musculoskeletalkey.com) in the chapter

titled “Taping in Sports.”12

The elastic tapes may be either adhesive backed or

adherent. Adhesive elastic tapes will normally stretch both

longitudinally and transversely. Typically, this type of tape

will recoil to 125% of its original length when initially

stretched lengthwise. However, multiple stretching will

cause the tape to fatigue.13

• Wikipedia (Wikipedia.org) entry for “Elastic therapeutic tape.”14

The product is a type of thin, elastic cotton tape that can

stretch up to 140% of its original length. As a result, if the

tape is applied to a patient on a stretch greater than its

normal length, it will “recoil” after being applied and

therefore create a pulling force on the skin to which it has

been applied. This elastic property allows much greater

range of motion compared to traditional white athletic tape

and can also be left on for long periods of time before

reapplication.15

• The unidentified source listed on the Google Books website (no URL),

discussed above, provides that “[t]he increased popularity of elastic

‘therapeutic’ taping in the sports arena has led to an ever growing variety

of products with variations in the tape adhesive and the amount of elastic

recoil.”16 This unidentified source lists different taping materials, including

elastic tapes for which it states the following:

Dependent upon the percentage of elastic stretch to allow

for controlled movement in a joint and functional muscle

12 January 11, 2017 Office Action (TSDR 8-9).

13 January 11, 2017 Office Action (TSDR 9).

14 January 11, 2017 Office Action (TSDR 10-11).

15 January 11, 2017 Office Action (TSDR 11).

16 January 11, 2017 Office Action (TSDR 12).

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support; rated by percentage of elastic stretch or recoil.

Increasing popularity of this method with athletes has led

to development of a larger choice of products, some with

higher elastic recoil. Caution should be exercised with

these products because they are intended for the young

healthy athlete. Higher recoil will increase shearing

forces on the skin and may lead to blister formation or

tissue injury.17

• Football Medicine website (footballmedicine.net)18

Kinesio Taping in Sports: Does the Existing Evidence

Match Your Clinical Practice?

* * *

Behaviour of the tape

The recoil effect and its direction

One of the most important effects of Kinesio Taping on skin

is the recoil effect of the tape. It is hypothesized that,

when tape is applied on the skin, the Kinesio Taping

application is going to stretch/drag the tissue that stays

under the end and base of the tape towards the anchor, as

it is shown in Figure 6.19

17 January 11, 2017 Office Action (TSDR 12).

18 July 31, 2017 Office Action (TSDR 4-5).

19 July 31, 2017 Office Action (TSDR 5).

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• Authentic Kinesio website (no URL)20

KINESIO TAPING

KT1 & KT2 – Basic, Advanced Concepts

and corrective Techniques

Course program KT1

* * *

B. Tape Around the Muscle

* * *

4. Tape shrinkage “recoil” occurs in the opposite direction

you tape; in other words toward the “anchor”. …

* * *

* Tensions>50% are for Corrective Techniques and lose

recoil effect.

20 July 31, 2017 Office Action (TSDR 8-9).

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• Step Up, Speak Out website (stepup-speakout.org)

Standard Treatment of Lymphedema – Kinesio Taping

The original Kinesio Tape® and the Kinesio Taping

Method® were developed by Dr. Kenzo Kase a Japanese

Chiropractor who trained in the United States. He

initiated the concept in the early 1970’s and began working

to develop a specialized tape that could aid the body in

healing itself. …

* * *

When the body returns to resting position the recoil of the

tape lifts the skin.21

• Collins Sports Medicine website (ecatalog.collinssports.com) advertising

“Dynamic Tape, The Original Biomechanical Tape!” featuring “4-5 times

the recoil force of Kinesio Tape.”22

Thus, third parties use “Recoil” to identify or describe the rebound effect or

elasticity of the medical or athletic tape (e.g., “this type of tape will recoil to 125% of

its original length,” “if the tape is applied to a patient on a stretch greater than its

normal length, it will ‘recoil’ after being applied,” and “One of the most important

effects of Kinesio Taping on skin is the recoil effect of the tape.”). Similarly, when

Applicant uses RECOIL in connection with medical or athletic cohesive tape, it

directly conveys to consumers and users that the tape has elastic properties that

permit it to return to its original length or somewhat close to the original length.

21 July 31, 2017 Office Action (TSDR 10-11).

22 July 13, 2017 Office Action (TSDR 13).

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Thus, RECOIL used in connection with medical or athletic cohesive tape is merely

descriptive of a feature or characteristic of the tape.

Applicant argues that the dictionary relied on by the Trademark Examining

Attorney to define “recoil” has six definitions, of which the Trademark Examining

Attorney relied upon only two, neither of which relates to elasticity. “Either of these

meanings, or any of the other meanings, could be associated by the public with

RECOIL when applied to Applicant’s Goods.”23 According to Applicant, because

RECOIL does not have one meaning, consumers must use a multi-stage reasoning

process to associate RECOIL with a property of medical or athletic cohesive tape, and

therefore, it is not merely descriptive.24 However, the test is not whether someone

encountering the mark alone could guess what the goods are. As noted above, we

evaluate whether someone who knows what the goods are will understand the mark

to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,

Ltd., 103 USPQ2d at 1757. In this case, consumers of medical and athletic cohesive

tape will understand the proposed mark RECOIL to immediately convey information

regarding the ability of the product to rebound or return to its original length or close

to it. In any event, “[i]t is well settled that so long as any one of the meanings of a

term is descriptive, the term may be considered to be merely descriptive.” In re

Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); see also, In re IP Carrier

23 Applicant’s Brief, p. 8 (4 TTABVUE 9).

24 Applicant’s Brief, p. 9 (4 TTABVUE 10).

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Consulting Grp., 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, Ltd., 204

USPQ 591, 593 (TTAB 1979).

Having found that Applicant’s mark is merely descriptive of a feature or

characteristic of the goods, we need not reach the alternative ground for refusal that

Applicant’s mark is deceptively misdescriptive.

Decision: The refusal to register Applicant’s mark RECOIL is affirmed.

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