The opinion
This Opinion is a
Precedent of the TTAB
Mailed: March 19, 2024
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sheet Pile, LLC
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Serial No. 97010763
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Tim D. Chheda of Selman Munson & Lerner for Sheet Pile, LLC.
George Murray, Trademark Examining Attorney,1 Law Office 121,
Richard White, Managing Attorney.
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Before Shaw, Larkin, and Cohen,
Administrative Trademark Judges.
Opinion by Larkin, Administrative Trademark Judge:
Sheet Pile, LLC (“Applicant”) seeks registration on the Principal Register of the
proposed standard-character mark ZPILE for goods identified as “Metal sheet piles,
1 Trademark Examining Attorney Tricia L. Brown initially examined the involved
application. It was subsequently assigned to Mr. Murray, who issued the final refusal to
register from which this appeal was taken and filed the brief of the United States Patent and
Trademark Office (“USPTO”) on appeal. We will refer to them both as the “Examining
Attorney.”
Serial No. 97010763
metal sheet pile sections, and metal sheet pile connectors for joining metal sheet
piles” in International Class 6.2
The Trademark Examining Attorney refused registration of Applicant’s proposed
mark on two grounds: (1) that the proposed mark is merely descriptive of the goods
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1); and (2) that the
proposed mark fails to function as a mark under Sections 1, 2, and 45 of the
Trademark Act. 15 U.S.C. §§ 1051, 1052, and 1127.
Applicant appealed when the Examining Attorney made the refusals final.
Applicant and the Examining Attorney have filed briefs.3 We affirm the mere
descriptiveness refusal and do not reach the failure-to-function refusal.
I. Prosecution History and Record on Appeal4
We briefly summarize below the prosecution history of the involved application
because it provides useful background to our disposition of the appeal.
The Examining Attorney initially issued an Office Action in which she refused
registration of Applicant’s proposed mark on the ground that it is merely descriptive
of the identified goods, but advised Applicant that it could amend its application to
2 Application Serial No. 97010763 was filed on September 3, 2021 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark and
first use of the mark in commerce at least as early as December 2012.
3 Citations in this opinion to the briefsrefer to TTABVUE, the Board’s online docketing
system. See New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *2 n.1 (TTAB 2020).
The number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page(s) of the docket entry where the cited materials appear.
Applicant’s brief appears at 4 TTABVUE and the Examining Attorney’s brief appears at 6
TTABVUE.
4 Citations in this opinion to the application record are to pages in the USPTO’s Trademark
Status & Document Retrieval (“TSDR”) database.
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Serial No. 97010763
seek registration on the Supplemental Register based on its claimed use of the
proposed mark.5 A week later, however, the Examining Attorney issued a
supplemental and superseding Office Action in which she maintained the mere
descriptiveness refusal, but withdrew the Supplemental Register advisory, noting
that the proposed mark appeared to be generic for the involved goods and that she
could not recommend amendment of the application to seek registration of the
proposed mark on the Principal Register based on acquired distinctiveness under
Section 2(f) of the Trademark Act 15 U.S.C. § 1052(f), or to seek registration on the
Supplemental Register.6 The Examining Attorney made of record a dictionary
definition of the word “pile,”7 and third-party webpages displaying the use of the
letter “Z’ in connection with sheet piles.8
Applicant responded to the superseding Office Action and argued against the mere
descriptiveness refusal and the genericness advisory, but did not address amending
its application to seek registration under Section 2(f) or on the Supplemental
Register.9 Applicant made of record third-party webpages using the phrases “Mega-
Zee” series, “Zee Lightweight Sheet Piling,” and “Z-Profile” in connection with sheet
piles.10
5 May 31, 2022 Office Action at TSDR 1.
6 June 6, 2022 Office Action at TSDR 1.
7 Id. at TSDR 2-4 (THE AMERICAN HERITAGE DICTIONARY).
8 Id. at TSDR 5-7.
9 August 3, 2022 Response to Office Action at TSDR 1-3.
10 Id. at TSDR 4-14.
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Serial No. 97010763
The Examining Attorney then issued a second non-final Office Action in which she
continued and maintained the mere descriptiveness refusal and issued a new failure-
to-function refusal.11 She made of record additional third-party webpages displaying
the phrases “Z pile” and “Z-pile” and discussing “Z piles,” “Z type sheet pile,” or “Z-
shaped piles.”12 Applicant responded to the second non-final Office Action by arguing
against the mere descriptiveness and failure-to-function refusals,13 but did not make
any additional evidence of record.
The newly-assigned Examining Attorney then issued an Office Action making
final the mere descriptiveness and failure-to-function refusals.14 He made of record
additional dictionary definitions of the word “pile,”15 and additional third-party
webpages displaying the phrases “Z-Piles,” “Z-shaped sheet piles,” “PZ,” and “Z sheet
piles” in connection with sheet piles.16
II. Mere Descriptiveness Refusal
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), 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,” unless the mark has
acquired distinctiveness under Section 2(f) of the Act.
11 September 9, 2022 Office Action at TSDR 1.
12 Id. at TSDR 2-17.
13 March 7, 2023 Response to Office Action at TSDR 1-2.
14 March 23, 2023 Final Office Action at TSDR 1.
15 Id. at TSDR 2-3 (CAMBRIDGE DICTIONARY and COLLINS DICTIONARY).
16 Id. at TSDR 4-6.
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Serial No. 97010763
“A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use of the goods or services.” In
re Zuma Array Ltd., 2022 USPQ2d 736, at *5 (TTAB 2022) (internal quotations and
citations omitted). “A mark need not immediately convey an idea of each and every
specific feature of the goods in order to be considered merely descriptive; it is enough
if it describes one significant attribute, function or property of the goods.” Id.
(quoting In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016)
(citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)). In
addition, “‘a mark need not be merely descriptive of all recited goods or services in an
application. A descriptiveness refusal is proper ‘if the mark is descriptive of any of
the [goods] for which registration is sought.’” Id., at *5-6 (quoting In re Chamber of
Com. of the U. S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In
re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
“Whether a mark is merely descriptive is evaluated in relation to the particular
goods for which registration is sought, the context in which it is being used, and the
possible significance that the term would have to the average purchaser of the goods
because of the manner of its use or intended use,” In re Fallon, 2020 USPQ2d 11249,
at *7 (TTAB 2020) (quoting Chamber of Com., 102 USPQ2d at 1219), and “‘not in the
abstract or on the basis of guesswork.’” Id. (quoting Fat Boys, 118 USPQ2d at 1513)
(citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). “We
ask whether someone who knows what the goods and services are will understand
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Serial No. 97010763
the mark to convey information about them.” Id. (quoting Real Foods Pty Ltd. v.
Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)
(quoting DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012)).
“Whether a mark is merely descriptive or not is determined from the viewpoint of
the relevant purchasing public.” Zuma Array, 2022 USPQ2d 736, at *8 (quoting In re
Omniome, Inc., 2020 USPQ2d 3222, at *5 (TTAB 2019) (quoting Stereotaxis, 77
USPQ2d at 1090)). The record evidence discussed below shows that the relevant
consumers of the goods identified in the application include construction project
designers and construction companies.
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers[,] and other publications.” Id.
(quoting Fallon, 2020 USPQ2d 11249, at *7 (quoting Real Foods, 128 USPQ2d at
1374)). “These sources may include [w]ebsites, publications and use in labels,
packages, or in advertising materials directed to the goods.” Id. (quoting Fallon, 2020
USPQ2d 11249, at *7-8 (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707,
1710 (Fed. Cir. 2017) (internal quotation omitted)).
Applicant argues that its proposed mark ZPILE is not merely descriptive because
the Examining Attorney “did not consider the mark as a whole” because “the Office
considered ‘Z’ and ‘PILE’ individually rather than the mark as a whole for its
commercial impression.” 4 TTABVUE 4. According to Applicant, its proposed mark
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Serial No. 97010763
“ZPILE for sheet piling and sheet piling connectors is similar to EPHONE for mobile
phones and accessories for mobile phones (U.S. Reg. No. 4,106,953)” because “ZPILE
consists of a letter followed by a word without any spaces between” and the “marks
create commercial impressions distinct from electronic mobile phones as well as
accessories for electronic mobile phones and particularly shaped metal sheet piles,
metal sheet pile sections, as well as metal sheet pile connectors, respectively.” Id. at
4-5.17 Applicant also argues that the Examining Attorney erred “by providing no
support or analysis for the alleged different set of facts, rather the Office only
provided the bald conclusion.” Id. at 5.
The Examining Attorney responds that “[t]he wording ‘ZPILE’ in the applied for
mark describes the shape and form of applicant’s applied for sheet pile products” and
that “[a] ‘Z PILE’ has this designation because the single piles are shaped roughly
like a horizontally stretched Z.” 6 TTABVUE 8 (quotation and quotation marks
omitted). He points to record evidence that he argues “demonstrates that ‘Z PILE’ is
a widely known and frequently used term in applicant’s industry describing the shape
and form of applicant’s applied for sheet pile goods,” id., citing a dictionary definition
of the word “pile” and multiple webpages that refer to “Z pile” and “Z-pile” sheet pile,
and discuss “Z piles,” “Z type sheet pile,” or “Z-shaped piles.” Id. at 9-11.
17The Examining Attorney objects to this argument and asks the Board to disregard it
because the registration to which Applicant refers was never made of record. 6 TTABVUE
12. We will consider Applicant’s argument for whatever persuasive value it has because the
Examining Attorney did so as well in his brief. Id.
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Serial No. 97010763
The Examining Attorney rejects Applicant’s argument regarding the dissection of
the proposed mark, arguing that “the mark is considered as a whole with the evidence
clearly addressing the combined wording ‘Z PILE’ being a descriptive term in
applicant’s industry used to refer to ‘Z’ shaped piling products.” Id. at 13.
The goods here are “Metal sheet piles, metal sheet pile sections, and metal sheet
pile connectors for joining metal sheet piles.” The PileBuck website states that “[t]he
term sheet piling refers to any retaining wall type that is a) installed into the ground
by driving or pushing, rather than pouring or injection, and b) is of relatively thin
cross-section and low weight so that the weight of the wall does not assist in the wall’s
stability,” and that “[s]heet piling have been used in a wide variety of applications,
especially marine bulkheads and retailing walls where space is limited.”18 According
to the Eiffel Trading website, “”[s]heet piles are interlocking, shaped sections of steel
that are used to create structures like retaining walls and cofferdams.” 19 The PMA
USA Supply LLC website states that “[s]teel sheet piling is a manufactured
construction product with a mechanical connection ‘interlock’ at both ends of the
section. These mechanical connections interlock with one another to form a
continuous wall of sheet piling. Steel sheet pile applications are typically designed to
create a rigid barrier between earth and water while resisting the lateral pressures
of those bending forces.”20
18 September 9, 2022 Office Action at TSDR 3.
19 Id. at TSDR 13.
20 Id. at TSDR 15.
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Serial No. 97010763
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.”21 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.”
The Hammer & Steel website displays and discusses “Z” and “Flat Section Sheet
Piles” and explains the benefits of the “Z shape of each section” of the piles as follows:
22
The ESC Steel LLC website displays and discusses “Z hot rolled sheet piles”:
21 June 6, 2022 Office Action at TSDR 3 (THE AMERICAN HERITAGE DICTIONARY).
22 Id. at TSDR 7.
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Serial No. 97010763
23
The PileBuck website contains an extensive discussion of sheet piling, including
a section captioned “Z-Type Shapes.”24 It states that the “Z-type piling is
predominantly used in retaining and floodwall applications where bending strength
governs the design and no deflection (swing) between sheets is required.”25 The
website also contains an article stating that the “popularity of Z pile over U shape
also can be explained by cost,” as “Z sheets are wider, and Z sheets fit in a template
more easily,” and “Z piles usually have more consistent wall thickness, and Z sheets
are easier to stack up as pairs.”26
The Eco Pultrusions website states that “[c]ommon shapes of sheet piles are Z pile
and box pile” and displays drawings of both:
23 Id. at TSDR 5.
24 September 9, 2022 Office Action at TSDR 3.
25 Id.
26 Id. at TSDR 4.
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Serial No. 97010763
27
The JD Fields & Company website contains a page captioned “Sheet Piling 101”
referencing the “Z” shape of certain sheet piles and stating that “‘Z’ pile interlocks are
located on the outer edges of the section, which not only results in higher module and
inertial properties, but the interlock rotation issue does not apply.”28
The SheetPile.us 2021 Product Catalog states that the WADT sealant, which
waterproofs sheet pile, “is available for use anywhere with any type of sheet pile,”
including “Z-Pile.”29
The Eiffel Trading website states that “[s]ome of the most widely-used sheet pile
is the Z-shape, hot rolled sheet pile. Z sheet piles are known by the continuous forms
of the web, and the specific location of the interlocks. Z-pile’s specific shape help
improve the accuracy of alignment during placement.”30
27 Id. at TSDR 7.
28 Id. at TSDR 9.
29 Id. at TSDR 12.
30 Id. at TSDR 13.
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Serial No. 97010763
The PMA USA Supply LLC website compares “Z – Pile” to PS piles, which the site
states offer minimal beam strength.31
A page from the lbfoster.com website displays schematic drawings of a “Z Pile
Profile” and a “Cover Plated Z Profile”:
32
The Nucor Skyline website shows and discusses “Z-Piles” and “Z-shaped Sheet
Piles”:
33
The website also discusses and shows “Types of Z-piles.”34
31 Id. at TSDR 15.
32 Id. at TSDR 16.
33 March 23, 2023 Final Office Action at TSDR 4.
34 Id.
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Serial No. 97010763
This evidence, which Applicant addresses only in passing in its discussion of the
failure-to-function refusal, 4 TTABVUE 2-3, establishes that in the context of the
“metal sheet piles,” “metal sheet pile sections,” and “metal sheet pile connectors for
joining metal sheet piles” identified in the application, the letter “Z” describes and
refers to a particular shape and type of sheet pile known by construction project
designers and construction companies. When “Z” is combined with the generic word
“PILE” to form the proposed mark ZPILE, the resulting combination 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 Examining Attorney thus established a prima facie case of
mere descriptiveness, shifting the burden of rebuttal to Applicant, Zuma Array, 2022
USPQ2d 736, at *8, and Applicant did not carry that burden. We find, based on the
record as a whole, that Applicant’s proposed mark ZPILE is merely descriptive of the
goods identified in the application. Because we have found the proposed mark to be
merely descriptive, it is ineligible for registration and we need not and do not reach
the refusal that ZPILE fails to function as a mark because it is merely informational
matter.
Nevertheless, we note that the failure-to-function refusal as articulated by the
Examining Attorney in this case is effectively based on the same evidence and
analysis as the mere descriptiveness refusal. The Examining Attorney determined
for purposes of the mere descriptiveness refusal that “the applied-for mark primarily
describes a feature or characteristic of applicant’s sheet pile goods, namely, the shape
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Serial No. 97010763
or form of these products,” 6 TTABVUE 11, and for purposes of the failure-to-function
refusal that “consumers would perceive the applied-for mark Z PILE [sic] to convey
information about the applicant’s piling goods, namely, that they are Z shaped piles.”
Id. at 6. The impact of the respective refusals is different, however, inasmuch as 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.
Because the distinctiveness continuum includes a threshold absolute bar to
registration for generic terms—terms that by definition fail to function as source
identifiers—this continuum (rather than an informational matter failure-to-function
refusal) 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.” 6 TTABVUE 6. Although the Examining
Attorney has advised Applicant that the proposed mark appears to be generic for the
identified goods, “[a]dvisory statements are not refusals subject to appeal,” In re Nat’l
Ass’n of Veterinary Technicians in Am., Inc., 2019 USPQ2d 269108, at *2 n.11 (TTAB
2019) (citations omitted), and “genericness is not at issue in this appeal,” Id., at *2,
and affirming the mere descriptiveness refusal is sufficient to resolve this appeal.
Decision: The mere descriptiveness refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.
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