Environment-ally Safe Products, Inc.

This Opinion Is Not a
Precedent of the TTAB

Mailed: June 28, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Environmentally Safe Products, Inc.
________

Serial No. 86667523

_______

Alexis P. Grilli, Lauren J. Arnold, and David L. May of Nixon Peabody LLP,
for Environmentally Safe Products, Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114
Laurie Kaufman, Acting Managing Attorney.
_______

Before Ritchie, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Environmentally Safe Products, Inc. (“Applicant”) seeks registration on the

Principal Register of the mark ESP LOW-E and design, shown below, for the

following goods and services:1

1 Application Serial No. 86667523 was filed on June 18, 2015, under Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first use and first use in
commerce on August 29, 2002 for all classes.
Serial No. 86667523

International Class 17: Building insulation; Metal foil for
building insulation; Vapor/thermal/reflective composite
insulation materials in sheet and strip form for use in building
construction and in the further manufacture of other products;
Insulating materials, namely, foil-faced polyethylene foam;
Laminated vapor barrier; Composite vapor barrier in roll form for
use in construction; Foam liner for use as a protective vapor
barrier in building and construction; Reflective insulation for use
in commercial and residential buildings, automobiles,
recreational vehicles, marine craft, aircraft, and product
packaging; Aluminum polyethylene composite house wrap in roll
form for insulating houses.

International Class 19: Roofing underlayment; Carpet
underlayment; Aluminum-polyethylene composite roof
underlayment in roll form.

International Class 35: Providing consumer product information
relating to building insulation; providing information regarding
the cost of building insulation.

Pursuant to a requirement from the Examining Attorney, Applicant included

a disclaimer of “LOW-E” apart from the mark as shown. The application

contains the following description of the mark:

The mark consists [of] a solid horizontal line across the top and
the letter[s] ESP vertically, followed by the letters LOW-E with a
solid horizontal line across the bottom.

The Examining Attorney has refused registration under Section 2(a) of the

Trademark Act of 1946, 15 U.S.C. § 1052(a), on the ground that the mark

sought to be registered is deceptive in relation to the identified goods. The

refusal is made as to the goods in International Class 17 and 19 only. When

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Serial No. 86667523

the refusal was made final, Applicant filed an appeal and a request for

reconsideration. When the request for reconsideration was denied, Applicant

and the Examining Attorney each filed briefs, and Applicant filed a reply brief.2

A. Section 2(a) Deceptiveness

Pursuant to Section 2(a) of the Trademark Act, registration must be refused

if a mark is deceptive in relation to the identified goods. The Examining

Attorney contends that the term “LOW-E” in Applicant’s mark would be

understood by consumers to refer to a feature or characteristic which

Applicant’s goods do not necessarily have. That is, Applicant’s identification is

not limited to “Low-E” building materials. Specifically, the Examining

Attorney argues:

the evidence shows that low-emissivity (low-e) renders the goods
more appealing or desirable because goods with low emissivity
are more efficient, environmentally friendly (less energy use to
cool or heat a dwelling), and reduce the long term cost of the goods
for the purchaser because of the low-e feature (less heating or
cooling costs), and the applicant admits that low-e goods are more
expensive to manufacture, are more expensive to purchase, have
enhanced performance, and are of superior quality than like
goods without low-e feature.3

The Office has the initial burden of putting forth a prima facie case that a

trademark falls within the prohibition of Section 2(a). In re Budge Mfg. Co.,

2 An identification requirement was also made final. However, after this case was
briefed, Applicant filed an additional request for reconsideration, making the changes
proposed by the Examining Attorney. 22 TTABVUE. The Examining Attorney then
deemed the identification requirement satisfied. 25 TTABVUE 3. The Examining
Attorney clarified that the only remaining issue to be determined on appeal is the
Section 2(a) refusal. Id.
3 21 TTABVUE 5.

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Serial No. 86667523

857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The test for deceptiveness

is: 1) whether the mark misdescribes the goods; 2) if so, whether consumers

would be likely to believe the misdescription; and 3) whether the

misdescription would materially affect consumers’ decisions to purchase the

product. Id.; see also In re California Innovations, Inc., 329 F.3d 1334, 66

USPQ2d 1853, 1854 (Fed. Cir. 2003; In re E5 LLC, 103 USPQ2d 1578, 1579

(TTAB 2012).

1. Whether the mark misdescribes the goods

In looking at the first element, we must decide whether the term “Low-E”

misdescribes the goods for which Applicant seeks registration. We note, in this

regard, that a mark may be found to be deceptive under Section 2(a) due to the

misdescriptiveness of one of the terms, as long as the mark is then analyzed as

a whole. See In re Budge, 8 USPQ2d at 1260 (LOVEE LAMB deceptive for

“automotive seat covers” that are “wholly made from synthetic fibers”); In re

E5 LLC, 103 USPQ2d at 1579 ( found deceptive under § 2(a) for “dietary

supplements” that do not contain copper).

There is no dispute that the term “Low-E” refers in the context of

Applicant’s identified goods to “low emissivity.”4 Furthermore, there is no

dispute that Applicant’s goods currently sold under the mark contain low

4Applicant notes this at various places in its brief as well as in its initial Request for
Reconsideration. 19 TTABVUE 6, 13; May 3, 2017 Request for Reconsideration, at 3
and 5.

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Serial No. 86667523

emissivity.5 In response to the third question in a request for information by

the Examining Attorney, Applicant responded as follows:

Question: Do all of the goods listed in International Classes 17
and/or 19 have or feature low emissivity?

Answer: Yes.6

Applicant argues that the term “Low-E” cannot be misdescriptive if it is

accurate, arguing that the term is not misdescriptive, but rather it is simply

descriptive of the goods Applicant currently sells, and thus it is appropriately

disclaimed.7 Applicant argues, in this regard, “If the Examining Attorney

properly accepted Applicant’s acknowledgment that the goods do contain low

emissivity, there would be no reason to maintain the deceptiveness refusal.”8

In response to Applicant’s arguments, the Examining Attorney cites the

Trademark Manual of Examining Procedure (“TMEP”), § 1203.02(e)(ii) (2018),

which states, in pertinent part, with regard to a Section 2(a) refusal on

deceptiveness:

If the goods possess the relevant feature or characteristic and the
feature or characteristic referenced by the mark would be
believable and material, the identification must include the
feature or characteristic in order to resolve the ambiguity
between the mark and the identification of goods/services. The
identification must be amended even if the record indicates

5 Id.
6 These responses are set forth in Applicant’s May 3, 2017 Request for
Reconsideration, at 5. Applicant reiterated this in its brief, stating, “Applicant has
affirmatively stated, and the record shows, that the goods at issue in fact do contain
low emissivity.” 19 TTABVUE 7.
7 19 TTABVUE 13.
8 19 TTABVUE 8.

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Serial No. 86667523

elsewhere that the goods/services contain the feature or
characteristic.9

The Examining Attorney’s point is well taken. The question is whether the

mark is misdescriptive of the goods as identified. While the goods Applicant

currently sells feature low emissivity (or Low-E), the identification is not so

limited. An applicant may adopt as broad an identification of goods or services

as is accurate, but does so at its peril. See In re FCA US LLC, 126 USPQ2d

1214, 1217 (TTAB 2018) (“Applicants have the option of tailoring their

applications so that the registrations that ultimately issue will more closely

reflect market realities,” and “[p]arties that choose to use identifications of

goods in their trademark applications that are broader than their actual goods

will be held to the broader scope of the application.”); see also Stone Lion

Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,

1163 (Fed. Cir. 2014) (”Parties that choose to recite services in their trademark

application that exceed their actual services will be held to the broader scope

of the application.”) (citing Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918

F.2d 937, 16 USPQ2d 1783, 1788 (stating that a broad application “is not

narrowed by testimony that the applicant’s use is, in fact, restricted”)).

The disclaimer of “LOW-E” in the application is appropriate since some of

the goods are or may be considered low emissivity materials. In this regard,

the term “Low-E” is descriptive of Applicant’s current goods. However, the

9The TMEP goes on to further clarify, “Generally, an applicant may avoid or overcome
a deceptiveness refusal by amending the identification of goods or services, if accurate,
to include the potentially deceptive term.” TMEP § 1203.02(f)(i).

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Serial No. 86667523

term “Low-E” is nevertheless misdescriptive of a subset of Applicant’s goods as

identified, because the identified goods are not limited to “Low-E” goods.

Applicant had the option of including limiting language in its identification of

goods.10 Applicant expresses understanding of this in its brief, saying it does

not want to be limited. Specifically, Applicant argued that:

[T]he Examining Attorney[’s] insistence on an amendment to
Applicant’s identification of goods to include the term “low
emissivity (low-e)” is an unfair burden placed on Applicant to
unnecessarily narrow the scope of its identification of goods and
services.11

By not limiting its identification of goods, however, Applicant renders the

identification, as currently written, misdescriptive of some of those identified

goods.

Applicant cites to other registrations “featuring the disclaimed term ‘safe’

or ‘environmental,’ which do not include any of the phrasing of the mark itself

in the description of goods/services.”12 Applicant further cites to its own

Registration No. 2673077, which also contains the term “Low-E,” with a

disclaimer, but which does not include “Low-E” or “low emissivity” as a

limitation in the identification of goods.13 In this regard, Applicant argues that:

the Examining Attorneys’ requirement that Applicant include the
mark itself within the ID creates a standard whereby any and all

10 With the September 30, 2015 Office Action, the Examining Attorney instructed that
“To avoid a deceptiveness refusal, applicant must amend the identification to indicate
that the goods and/or services possess this relevant feature or characteristic.” The
issue was raised again in the November 3, 2016 Final Office Action, and with the May
22, 2017 Denial of Request for Reconsideration.
11 19 TTABVUE 13.
12 19 TTABVUE 12.

13 Id.

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Serial No. 86667523

marks with potentially descriptive wording (including those that
have acquired distinctiveness) must do the same. The Examining
Attorney’s contention is tantamount to requiring that all marks
that could be perceived to have descriptive wording contain
within the identification the phrasing or terms at issue, or even
the full mark itself. This is simply not supported by USPTO
practice.14

Applicant is incorrect. Office practice is summarized in TMEP

§ 1203.02(e)(ii), which requires that an identification that is broad enough to

render the mark misdescriptive of certain items, even if descriptive of others,

should be amended to clarify “that the goods/services contain the feature or

characteristic.”15 Applicant’s speculation about this practice’s effect on

descriptive terms is misplaced, because the practice applies only to

misdescriptive terms. In this case, since Applicant admits that its mark is

descriptive of the goods it currently sells thereunder, it would be sufficient for

Applicant to register its mark with a disclaimer, if it were clear from the

identification that the mark is not also being registered for goods that do not

contain “Low-E.” Applicant does not limit its identification to “Low-E” goods,

however. Therefore, the identification, as worded by Applicant, encompasses

14May 3, 2017 Request for Reconsideration, at 3.
15Furthermore, the USPTO must examine each application on its own merits based
on the record in the application under consideration and neither the USPTO’s
examining attorneys nor the Board are bound by the decisions of other examining
attorneys in other applications. See In re Cordua Restaurants, Inc., 823 F.3d 594, 118
USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark
applications for compliance with each and every eligibility requirement . . . .”); In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
some prior registrations had some characteristics similar to Nett Designs’ application,
the PTO’s allowance of such prior registrations does not bind the Board or this court.”).
Accordingly, these registrations are not particularly relevant to our analysis.

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Serial No. 86667523

also goods that do not contain “Low-E,” and for which the mark is therefore

misdescriptive.

The first prong of the Section 2(a) deceptiveness refusal is satisfied.

2. Whether consumers would be likely to believe the misrepresentation

For the second prong of the deceptiveness analysis, we ask whether

consumers are likely to believe the misdescription. As discussed above,

Applicant has admitted that the term “Low-E” may be descriptive of its

identified goods.16 The Examining Attorney submitted evidence showing that

low emissivity or “Low-E” is a feature that consumers may expect to be

included in building materials, such as those in Applicant’s identification of

goods. The California Energy Commission defines “Low-E” in its glossary of

terms as “A special coating that reduces the emissivity of a window assembly,

thereby reducing the heat transfer through the assembly.” Energy.ca.gov;

attached to September 30, 2015 Office Action, at 2, 5.

Additional web excerpts include the following:

Coler Natural Insulation: Low-E Reflective: Benefits of Low-E
Insulation: Saves time and money . . . [cached]; Attached to
November 3, 2016 Final Office Action, at 2.

Progressive Energy Solutions, Inc.: Low-E Reflective Insulation:
Reflective insulation can be used in existing homes to increase
the energy efficiency and help reduce your utility bills. Low-E
insulation can be used in many different applications in
residential homes and commercial buildings. [cached]; Attached
to November 3, 2016 Final Office Action, at 4.

JP Construction: Best way to lower your energy bills with
minimal investment – Residential Low-E applications; 1.

16 19 TTABVUE 6.

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Serial No. 86667523

Housewrap/Foam Insulation . . . 2) Roofing Underlayment . . . 3)
Attic Space Applications . . .
http://jpconstructionservices.com; Attached to November 3, 2016
Final Office Action, at 10.

Cal Vintage Roofing Co Inc: . . . If Low E Therma Sheet is
installed as part of the roofing system, it is installed on top of
the underlayment for all roofing products (Low E is compliant
with Title 24 requirement).
Calvintageroofing.com; Attached to November 3, 2016 Final
Office Action, at 12/14.

Houseneeds: Low-E foil Insulation for underfloor and infloor
radiant heating and house wrap. Low E Insulation is extremely
easy to install and has numerous residential, commercial . . .
Houseneeds.com; Attached to November 3, 2016 Final Office
Action, at 16.

Dunmore: Low Emittance Films for Reflective Insulation and
Radiant Barriers; DUNMORE has extensive experience as a
global provider of low emittance, also called low E. facing films
for reflective insulation products and radiant barrier structures.
. . . DUNMORE low E films have the superb corrosion and
degradation properties necessary for long life reflective
insulation and radiant barrier applications.
Dunmore.com; Attached to November 3, 2016 Final Office
Action, at 19.

Applicant’s own website touts the benefits of “Low-E” as an energy saving

advantage of its building materials:

Why Low-E?: Green building is not just a trend but the wave of the
future as more and more homeowners and builders demand energy
efficient homes and products. ESP Low-E® Insulation products are
designed for maximum energy and cost efficiency.
Low-e.com; September 30, 2015 Office Action, at 10.

We find that, because the evidence shows that “Low-E” is a common and

sometimes desirable feature in building materials such as those identified by

Applicant, consumers will believe, based on the mark and the goods at issue,

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Serial No. 86667523

that Applicant’s goods contain the feature of low emissivity, or “Low-E.” Thus,

the second prong of the Section 2(a) deceptiveness test is also satisfied.

3. Whether the misdescription is material to consumers’ decisions to
purchase the goods

Finally, we ask whether the misdescription is material to consumers’

decision to purchase the goods. See In re Budge, 8 USPQ2d at 1260; In re E5

LLC, 103 USPQ2d at 1583. The web evidence set forth above confirms that

both Applicant and others in the industry are keenly aware of the benefits of

using low emissivity, or “Low-E,” building materials and that they consider

these benefits to be material to consumers. Applicant further confirmed with

its responses to the information requirement for the identified goods that the

presence or absence of low emissivity, or “Low-E,” is material to a purchase as

it affects both the cost and the quality of the goods:17

1. Are any or all of the goods listed in International Classes
17 and/or 19 more expensive to make if the goods have low
emissive properties and/or features?
Answer: Yes, the goods would be more expensive by adding low
emissive properties [sic]. This would require the purchase of a
raw material ex. (pure aluminum, silver, and gold) then
applying a substrate and strength layer to the low emissive
surface to ensure they could be bonded to the non-emissive
surface. Labor would be an additional cost in addition to the
obvious raw material cost increase.

2. Are any or all of the goods listed in International Classes
17 and/or 19 more expensive to purchase by the consumer if the
goods have low emissive properties and/or features as compared
to the goods in International Classes 17 and/or 19 that do not
have low emissive properties and/or features?

17 May 3, 2017 Request for Reconsideration, at 5.

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Serial No. 86667523

Answer: Yes, the goods would be more expensive to purchase by
adding low emissive properties. It would be in direct correlation
to the answer above due to raw and labor cost increase.

3. Do all of the goods listed in International Classes 17
and/or 19 have or feature low emissivity?
Answer: Yes.

4. Do any of the goods in International Classes 17 and/or 19
have enhanced performance and/or function over the goods of
the same type that do not have low emissivity?
Answer: Yes, once one adds a low emissive surface to the
product one’s performance is enhanced because the new product
has the ability to redirect radiant heat transfer up to 97%. It is
known and agreed that there are 3 forms of heat transfer
Conductive, Convective and Radiant. It is also know[n] and
agreed that up to 93% of heat gain is Radiant and up to 70% of
heat loss is also radiant. The added performance of a low
emissive surface is easily understood when one sees that 97%
(emittance) of 93% (Heat Gain/Radiant) is redirected away for
heat gain, and 97% (emittance) of 70% (Heat Loss/Radiant) is
redirected back for heat source loss.

5. Do any or all of the goods in International Classes 17
and/or 19 that do have low emissivity have superior quality over
goods of the same type that do not have low emissivity?
Answer: Yes, the goods would have superior quality by adding low
emissive properties. It would be in direct correlation to the
answer above due to heat types (loss and Gain) and nature of how
Low Emissive products redirect radiant heat [sic].

Accordingly, the record shows that low emissivity, or Low-E goods have

important and desirable benefits. The feature’s presence – or its absence –

would be material to consumers’ decisions to purchase Applicant’s goods. In

re E5 LLC, 103 USPQ2d at 1583. Thus, the third and final prong of the

Section 2(a) deceptiveness test is also satisfied.

In sum, we find that the Examining Attorney has carried his burden of

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Serial No. 86667523

establishing all three elements of the 2(a) deceptiveness test, which evidence

has not been rebutted by Applicant. There is no evidence that the result

would be different with regard to the mark as a whole, and we find that it is

not. Therefore, the refusal under Section 2(a) is affirmed on the ground that

the mark sought to be registered is deceptive of a feature or characteristic of

the identified goods.

Decision: The Section 2(a) refusal to register is affirmed as to International

Classes 17 and 19.

The application will proceed to publication in due course as to International

Class 35 only.

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