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Application Serial No. 88206624Appeal Briefbecause “SOLAR FOUNDATIONS” is neither generic nor merely descriptive, but rather, issuggestive.A. No Disclaimer of “SOLAR FOUNDATIONS” is Required Because “SOLARFOUNDATIONS is Not Generic.The genericness test as set forth by the Federal Circuit is a two-step inquiry: (1) “what isthe genus of the goods or services at issue?” and (2) “is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?” RoyalCrown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367-68 (Fed. Cir. 2018) (emphasis added).Evidence of the public’s understanding of the term “may be obtained from any competentsource, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals,newspapers and other publications.” Id.Applicant contends that the genus of goods and services is the services listed in theApplicant’s identified goods and services. See In re HCA Franchise Corporation, Serial No.87132500 (TTAB 2018) at 4 (“the identification of goods or services is often viewed as thegenus). Applicant further contends that the relevant purchasing public are those looking to have aground mount solar array structure installed. See June 4, 2019 Office Action Response, TSDRpp. 2-4 (screenshot of Applicant’s website: “Solar Foundations is the single source solution tomeet your solar panel support structure needs. We offer engineering and design, foundationsystems, racking components and efficient installations. Specializing in racking solutions forground mount solar array structures, SFUSA can make your next installation easier and morecost-effective.”); see e.g. In re Cordua Restaurants, Inc., 823 F.3d 594, 603 (Fed. Cir. 2016)(genus was “restaurant services” and relevant public was “the restaurant-going public”).Generic terms are those the relevant purchasing public understands primarily as thecommon or class name for the goods or services. TMEP § 1209.01(c) (citing In re Dial-A7

Application Serial No. 88206624Appeal BriefMattress Operating Corp., 57 USPQ2d 1807, 1811 (Fed. Cir. 2001) (emphasis added)). That aterm may be a name for the relevant goods and services is not dispositive. “The critical issue isto determine whether the record shows that members of the relevant public primarily use orunderstand the term sought to be registered to refer to the category or class of goods or servicesin question.” In Re Trek 2000 Int'l Ltd., 97 U.S.P.Q.2d 1106, 1108 (TTAB 2010) (precedential)(citing H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir.1986).An examining attorney has the burden of proving that a term is generic by clear evidence.See TMEP §1209.01(c). The Examining Attorney contends that “SOLAR FOUNDATIONS” isgeneric based mainly on evidence of third parties using “solar foundations.” However, evidenceshowing that third parties use the term at issue to describe the goods and services identified is notdispositive of genericness. In Re Trek 2000 Int'l Ltd., 97 U.S.P.Q.2d 1106, 1108 (TTAB 2010).In In Re Trek 2000 Int'l Ltd., the examining attorney refused registration of the mark“THUMBDRIVE” for “portable digital electronic devices” finding that THUMBDRIVE hadbecome generic. Similar to the third-party evidence submitted by the Examining Attorneyregarding “SOLAR FOUNDATIONS,” the examining attorney for THUMBDRIVE in In re Trek2000 Int’l Ltd. cited over a dozen examples of third party usage of “THUMBDRIVE” for similaror identical goods. Id. at 1007.The In re Trek 2000 Int’l Ltd. applicant rebutted this evidence with:(1) three examples of media usage of THUMBDRIVE as a brand name;(2) search results from dictionaries showing no listings for THUMBDRIVE;8

Application Serial No. 88206624Appeal Brief(3) website pages from sources of the same goods using a term other thanTHUMBDRIVE, namely, “flash drive” to designate the same goods identified inapplicant’s application; and(4) two examples of applicant policing its mark.Id. at 1111–1112. The Board reversed the refusal finding that the USPTO had “not met itsburden to establish by clear evidence that THUMBDRIVE is generic for the identified goods.”Id. at 1114. The Board noted in its decision that (1) the record showed extensive use of the termTHUMBDRIVE as a trademark, (2) that a different term, “flash drive” was the commonly usedterm of art for the goods at issue, (3) that mainstream reference works such as Merriam-Websterdid not have a listing for THUMBDRIVE, (4) that the fact that THUMBDRIVE is a synonym for“flash drive” is “weak evidence of genericness,” and (5) that applicant had submitted excerptsfrom competitor’s websites showing the absence of the term and the use of “flash drive” as thename of the goods. Id. at 1112-1113. The Board summarized, “[i]n other words, the evidencedoes not demonstrate a competitive need for others to use this term.” Id.Like the applicant in In Re Trek 2000 Int'l Ltd., Applicant has presented:(1) numerous examples of media and third-party usage of “SOLAR FOUNDATIONS” assource indicator of Applicant’s goods and services (See March 1, 2021 Office ActionResponse, TSDR pp. 13-66; see also June 4, 2019 Office Action Response, TSDR pp.47-55;(2) dictionary listings showing no results for “SOLAR FOUNDATIONS” (and extensivedictionary evidence demonstrating “SOLAR FOUNDATIONS” is suggestive) (SeeJune 4, 2019 Office Action Response, TSDR pp. 5-46); and9

Application Serial No. 88206624Appeal Brief(3) website examples from over thirty sources of the same services that do not use“SOLAR FOUNDATIONS” to designate the same services. See August 15, 2019Office Action Response, TSDR pp. 23-183; see e.g. id. pp. 153-155 (website ofcompany offering mounting system “designed for larger scale ground mountinstallations” that “assemble over pile driven galvanized ‘H’ beams or C channels.The single row, vertical post design greatly reduces the number of groundpenetrations while providing increased ground clearance options.”) (emphasis added);id. at pp.132-133 (website of Paradise Energy Solutions describing: “[a] groundmount is when the panels are secured to a rack structure that is connected to theground with steel beams or another type of metal post.”) (emphasis added); id. at 9396 (website of Zilla, offering a “Helical Pier Ground Mount” including “helical pieranchors, leveling adapters, prefabricated trusses, cross rails and universal moduleattachments featuring the industry’s first top clip with integrated grounding — noother racking and mounting components are needed.”) (emphasis added).Like in In Re Trek 2000 Int'l Ltd, the record lacks clear evidence that “SOLARFOUNDATIONS” is generic, and does not demonstrate a competitive need for others to use thisterm, because the evidence does not show that the relevant public understands “SOLARFOUNDATIONS primarily as the common or class name for the goods or services.Notably, the third-party examples cited by the Examining Attorney in some instances donot use “solar foundations” at all, and in other instances, “solar foundations” is used as aheading, accompanied by use of specific descriptive terms other than “solar foundations” todescribe what is meant by “solar foundations,” indicating that the relevant purchasing public10

Application Serial No. 88206624Appeal Briefwould not understand, immediately or otherwise, “solar foundations” as the common name forthe goods and services.For example, the Foundation Engineering Consultants, Inc.’s webpage has a heading“Solar Foundations” but does not use the term “Solar Foundations” in any of the followingdescription, instead using the generic terms “driven pile foundation,” and “ground mounted solarprojects.” April 14, 2020 Reconsideration Letter, TSDR p. 3. This is prevalent in the ExaminingAttorney’s other cited examples: See id. at p. 4 (using “driven I-beams,” “pile installation,” “non-driven piles”); id. at p. 7 (using “ground-mounted solar racking systems,” “PV mountingsystems,” “helical piers,” and “ballast foundations”); id. at 8 (using “steel helical piles for supporting solar panels”); id. at p. 13 (using “ballasted solar projects” and “ground mount”); id. at p. 15(using “helical pile system”); see also id. at p. 16 (the cited Solar Foundation Solutions webpage only shows acompany appearing to use “Solar Foundation Solutions” as a brand or tradename,not to describe any goods or services); see also July 15, 2019 Office Action, TSDR p. 2 (using “deep steel helical piles”); id. at p. 3 (using “caissons, ground screws, driven H piles, spread footings”); id. at 4 (not using “solar foundations” at all, rather using “Solar Power MountingFoundations”); id. at 5 (not using “solar foundations” at all, rather using “ground screwinstallation services,” “solar racking foundations” and “ground mounted solararray”);11

Application Serial No. 88206624Appeal Brief id. at p. 7 (using “solar platform bases); see also October 7, 2019 Office Action, TSDR p. 2 (using “ground mount solarfoundations” and “ballasted solar projects”); id. at p. 3 (using “solar panel foundation”); id. at 4 (not using “solar foundations” rather using “earth anchor foundationsystem”); id. at 7 (using “solar racking and foundation solutions”); id. at 8 (using “helical piles for fixed or tracker solar arrays”); id. at 9 (using “driven piles,” and “helical piles”); id. at 12 (using “solar powermounting foundations”); id. at 15 (not using “solar foundations” rather using “deep pile foundations”); id.at 17 (using “solar panel foundations”); and id. at 18 (using “helical piles).This evidence forecloses a conclusion that “members of the relevant purchasing public primarilyuse or understand the term sought to be protected to refer to the genus of the goods” andservices. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 970 (Fed. Cir.2015 (reviewing Board’s decision that “PRETZEL CRISPS” was generic, explaining, “[t]houghthe Board is not required to discuss every piece of evidence, it cannot focus primarily onevidence of the word ‘crisps’ in isolation, select a few pieces of evidence involving the combinedterm “pretzel crisps,” and conclude that the trademark is generic.”); see also In Re Trek 2000Int'l Ltd., 97 U.S.P.Q.2d 1106 (TTAB 2010) (explaining that evidence of generic usage can beoffset by an applicant’s evidence, including of proper trademark use and trademark recognitionby third parties, and that where the record is mixed and creates doubt, the court is “constrained to12

Application Serial No. 88206624Appeal Briefresolve that doubt in favor of [the] applicant.”) (citing In Re Am. Online, Inc., 77 U.S.P.Q.2d1618 (TTAB 2006)).If members of the purchasing public were asked to look at a ground mounted solar arraysupport structure with no solar panels yet installed, or watch the process of installing such asupport structure, and to identify what they were viewing, there is no evidence that thoseconsumers would identify it as a “SOLAR FOUNDATION.” As shown by the ExaminingAttorney’s and Applicant’s evidence, members of the relevant purchasing public might identifythat the ground mount is a ground mount, a solar field, a solar array, driven piles, a helical pilesystem, and the like. The record lacks clear evidence that the relevant purchasing publicunderstands “SOLAR FOUNDATIONS” primarily as the common or class name for theidentified goods and services. See TMEP §1209.01(c).Likewise, the Examining Attorney’s definition evidence and analysis focusing on theseparate terms “SOLAR” and “FOUNDATIONS” fails to consider “SOLAR FOUNDATIONS”as a whole and does not constitute clear evidence that “SOLAR FOUNDATIONS” is generic.See March 6, 2019 Office Action, TSDR p. 1; In re Dental Emporium Corp., Serial No.86942024 (TTAB Sep. 11, 2017) at 7 (“[w]e have no evidence that relates to the term as a wholewhich remains the focus of our inquiry. While the absence of this type of evidence may not bedispositive, the evidence regarding the component words in the mark does not clearly establishgenericness”).Further, mere usage of terms included in a mark within the identification of goods andservices is not dispositive that a portion of a mark is generic either. In re Boats Direct, LLC,Serial No. 85418867, p. 1 (TTAB August 7, 2014). In In re Boats Direct, LLC, the applicantappealed the refusal of its mark “BOATS DIRECT USA” for “Boat dealerships, Dealerships in13

Application Serial No. 88206624Appeal Briefthe field of Boats.” Serial No. 85418867, p. 1 (TTAB August 7, 2014). The Board reversed therefusal, finding that “BOATS” was generic for boats, however, despite the applicant’s admissionthat some of the boats it sells are “factory direct,” the evidence did not support the contentionthat “BOATS DIRECT” was generic. Id. at pp. 5-7. The appearance of the words “solar” or“foundation” in Applicant’s identification of goods and services is similarly not dispositive orclear evidence that “SOLAR FOUNDATIONS” is generic.B. No Disclaimer of “SOLAR FOUNDATIONS” is required because “SOLARFOUNDATIONS” is Suggestive.The Examining Attorney has indicated throughout prosecution that “SOLARFOUNDATIONS” is “highly descriptive” and “merely descriptive.” See March 6, 2019 OfficeAction, TSDR p. 1; July 15, 2019 Office Action, TSDR p. 1; August 27, 2020 Office Action,TSDR p. 1; April 14, 2020 Office Action, TSDR p. 1 (“Applicant argues that any doubtregarding the mark’s descriptiveness should be resolved on applicant’s behalf. However, in thepresent case, the evidence of record leaves no doubt that the mark is merely descriptive.”);August 27, 2020 Office Action, TSDR p. 1; March 24, 2021 Office Action, TSDR p. 1.An examining attorney must show prima facie that a mark is merely descriptive of anapplicant’s goods or services. In re Fat Boys Water Sports LLC, 118 U.S.P.Q.2d (BNA) 1511,1513 (TTAB April 27, 2016). A mark is considered merely descriptive if it immediately conveysknowledge of a quality, feature, function, or characteristic of an applicant’s goods or services.TMEP §1209.01(b). On the other hand, when applied to the goods and services at issue,suggestive marks require “imagination, thought, or perception to reach a conclusion as to thenature of those goods or services.” See TMEP § 1209.01(a); In Re George Weston Ltd., 228U.S.P.Q. (BNA) 57 (TTAB 1985).14

Application Serial No. 88206624Appeal BriefThe Examining Attorney asserts in the March 24, 2021 Office Action that “Applicant hasalready conceded the descriptiveness of this wording by the entry of the Section 2(f) claim.”Applicant disagrees. During the prosecution of this application, Applicant has explicitly arguedand maintained that SOLAR FOUNDATIONS USA is not primarily geographically descriptive.See e.g. June 4, 2019 Office Action Response, TSDR p. 1, August 15, 2019 Office ActionResponse, TSDR p. 1; TMEP §1212.02(c) (“An applicant may argue the merits of an examiningattorney’s refusal and, in the alternative, claim that the matter sought to be registered hasacquired distinctiveness under §2(f)” and “Unlike the situation in which an applicant initiallyseeks registration under §2(f) or amends its application without objection, the alternative claimdoes not constitute a concession that the matter sought to be registered is not inherentlydistinctive”). Applicant has further explicitly argued and maintained that “SOLARFOUNDATIONS” is not merely descriptive or generic, and has argued that “SOLARFOUNDATIONS” has acquired distinctiveness explicitly in the alternative. See e.g. id.Applicant further contends that the Examining Attorney’s contention in the July 15, 2019 OfficeAction that “In applicant’s prior registration(s), applicant claimed acquired distinctiveness underTrademark Act Section 2(f) unconditionally and not in the alternative. Thus, applicant concededthat this wording was not inherently distinctive but was rather primarily geographicallydescriptive and the term ‘solar foundations’ generic” is inaccurate. The Board has considered, onthe merits, the inherent distinctiveness of marks having wording for which a Section 2(f) claimwas made in a prior registration. See e.g. In re Am. Furniture Warehouse CO, 126 U.S.P.Q.2d1400, 1403 (TTAB 2018).Applying the generally recognized definitions of “SOLAR” and “FOUNDATION” takentogether, it is evident that “SOLAR FOUNDATIONS” as a whole is suggestive for Applicant’s15

Application Serial No. 88206624Appeal Briefgoods and services because a consumer would require thought or imagination to understand thesignificance of applicant’s mark to the goods and services.Foundations themselves are not solar in any way that comports with the commonlyrecognized definitions. The term “SOLAR FOUNDATIONS” comprises an adjective describinga noun. “SOLAR” is an adjective meaning “of or relating to the sun,” “proceeding from the sun,as light or heat,” and “using energy from the sun to produce electrical power.” June 4, 2019Office Action Response, TSDR pp. 5-21. “FOUNDATIONS” is a plural noun with severalmeanings including “the basis or groundwork of anything,” “the state of being founded,” “thebase that is built below the surface of the ground to support a building,” and “[t]he lowest loadbearing part of a building, typically below ground level.” Id. at pp. 22-37 (emphasis added

In re Dental Emporium Corp., Serial No. 86942024 (TTAB Sep. 11, 2017) . See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015 . Specializing in racking solutions for ground mount solar array structures, SFUSA can make your next installation easier and more