Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA949648
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`Filing date:
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`01/24/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Petition for Cancellation
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`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
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`Petitioner Information
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`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
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`Kickr Design, LLC
`
`Corporation
`
`Citizenship
`
`Georgia
`
`1710 Chattahoochee Avenue NW
`Atlanta, GA 30318
`UNITED STATES
`
`Robert S Bexley
`Bexley Law Firm, LLC
`4850 Sugarloaf Pkwy, Ste. 209-339
`Lawrenceville, GA 30044
`UNITED STATES
`robert@bexleylawfirm.com
`7706333919
`
`Registration Subject to Cancellation
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`Registration No.
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`4781438
`
`Registration date
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`07/28/2015
`
`Registrant
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`PROTOTYPE HOUSE, INC.
`719 E. BROWARD BLVD.
`FORT LAUDERDALE, FL 33301
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 042. First Use: 2010/01/00 First Use In Commerce: 2014/01/00
`All goods and services in the class are subject to cancellation, namely: New product development
`services, namely, design and engineering of prototypes representing new products, ideas, concepts,
`and inventions
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`Grounds for Cancellation
`
`The mark is merely descriptive
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`Trademark Act Sections 14(1) and 2(e)(1)
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`The mark is or has become generic
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`Trademark Act Section 14(3), or Section 23 if on
`Supplemental Register
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`The mark is not inherently distinctive and has not
`acquired distinctiveness
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`Trademark Act Sections 14(1) and 1,2 and 45;
`and Section 2(f)
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`Related Proceed-
`ings
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`Prototype House, Inc. v. Kickr Design, LLC and Addison Shelton, Northern Dis-
`trict of Georgia, CAFN 1:18-cv-05180-MHC
`
`Attachments
`
`Prototype House v. Kickr - Cancellation of Registration.pdf(129797 bytes )
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`

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`Signature
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`/Robert S. Bexley/
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`Name
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`Date
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`Robert S. Bexley
`
`01/24/2019
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`IN RE REGISTRATION OF PROTOTYPE HOUSE, INC.
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`Mark:
`Reg. No.:
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`KICKR DESIGN, LLC
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`Petitioner,
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`v.
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`PROTOTYPE HOUSE, INC.
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`
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`Registrant.
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`CANCELLATION NO.:
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`________________________
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`PROTOTYPE HOUSE
`4,781,438
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`PETITION FOR CANCELLATION OF REGISTRATION
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`
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`PROTOTYPE HOUSE, INC., a corporation organized under the laws of Florida, with an
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`address at 719 E. Broward Blvd., Fort Lauderdale, FL 33301 (hereinafter referred to as the
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`“Registrant”), is listed in the records of the U.S. Patent and Trademark Office (hereinafter referred
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`to as the “USPTO”) as the registrant of U.S. Registration No. 4,781,438 (hereinafter referred to as
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`the “Registration”) of “PROTOTYPE HOUSE” (hereinafter referred to as the “Mark”), issued on
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`July 28, 2015, for “New product development services, namely, design and engineering of
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`prototypes representing new products, ideas, concepts, and inventions.” in International Class 42.
`
`Matthew
`
`Bordy,
`
`329
`
`Cipriani Way
`
`North
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`Venice,
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`FL
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`34275,
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`MatthewBordy@PrototypeHouse.com, is listed as attorney of record and as e-mail contact.
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`
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`KICKR DESIGN, LLC, a limited liability company organized under the laws of Georgia,
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`with an address at 1710 Chattahoochee Avenue NW, Atlanta, GA 30318 (hereinafter referred to
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`as the “Petitioner), is among the fastest growing product design, engineering, prototyping, and
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`manufacturing companies in the Southeastern United States, providing services for inventors,
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`

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`entrepreneurs, startups, and large companies. Petitioner believes it will be damaged by the
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`continued registration of the Mark and hereby petitions to cancel the Registration. As a competing
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`company in the same industry as Registrant, who uses prototypes and describes its company as a
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`“firm” or “house,” Petitioner may use the words “prototype” and “house” in marketing materials,
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`Google keywords, service descriptions, metadata describing their services, and keywords targeted
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`for paid advertisements. Petitioner has a direct and personal stake in the outcome of the
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`proceeding. The continued presence of the Registration on the federal trademark register
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`constitutes an obstacle to Petitioner’s intended use of the terms “prototype” and “house” in future
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`works and in marketing materials, service descriptions, metadata, advertisements, or keywords.
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`The Registration, thus, is causing injury and damage to Petitioner, and Petitioner has standing to
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`challenge it.
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`
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`The grounds for cancellation are as follows:
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`REGISTERED MARK IS VOID BECAUSE IT IS GENERIC AND MERELY
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`DESCRIPTIVE
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`1.
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`Registrant Prototype House filed to register the Mark “PROTOTYPE HOUSE” on
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`December 2, 2014. Registrant claimed first use in commerce on “January 0 [sic], 2014”. On July
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`28, 2015, the USPTO assigned U.S. Registration No. 4,781,438 to Registrant for the Mark.
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`2.
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`On November 9, 2018, Registrant brought a civil suit for trademark infringement
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`against Petitioner. Registrant argues in its Complaint that the use terms “prototype” and “house”
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`appearing in a single Google Ad constitutes an irreparable infringement on Registrant’s Mark.
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`Registrant’s claims are tantamount that other businesses engaged in the design and manufacturing
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`of prototypes are no longer able to use the descriptive words, “prototype” and “house” in regards
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`to their services.
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`

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`3.
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`Registrant never issued a cease and decease letter or any other notice that Petitioner
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`had infringed upon Registrant’s Mark.
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`4.
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`Petitioner has filed this Petition for Cancellation because of the ongoing litigation
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`under the Mark in question, Petitioner’s own standing to challenge this Mark, and the potential
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`damage the Mark’s continued registration threatens to Petitioner’s business.
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`5.
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`It is well-established that a device (such as a word or a logo) can only be considered
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`a trademark or a service mark if it is distinctive. A distinctive device is one that is capable of
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`distinguishing the goods or services upon which it is used from the goods or services of others. A
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`non-distinctive device is one that merely describes or names a characteristic or quality of the goods
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`or services.
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`6.
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`The distinctiveness of a device can generally be categorized into one of five
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`categories which fall along a spectrum of distinctiveness. From most distinctive to least
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`distinctive, these categories are (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, and (5)
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`generic. The “strength” of a mark is determined in part by where it falls on this spectrum. Fanciful
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`marks are considered stronger than suggestive marks, and therefore are granted greater protection
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`by the courts. Devices that are fanciful, arbitrary, or suggestive are considered distinctive enough
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`to function as trademarks. On the other hand, marks that are merely descriptive or generic simply
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`allow a consumer to reach the conclusion as to the nature of a business’s goods or services without
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`imagination, thought, or perception. Thus, if a device is “merely descriptive,” it is not a mark at
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`all, since it does not serve to identify the source of the goods or services.
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`7.
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`Merely descriptive marks are devices which describe the services or goods on
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`which the mark is used. A mark is merely descriptive if it describes an ingredient, quality,
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`characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP
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`

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`§1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir.
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`2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed.
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`Cir. 2004)).
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`8.
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`Moreover, the question of whether the applied-for mark is merely descriptive is not
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`determined in a vacuum, but in the context of the identified services. “A mark may be merely
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`descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or
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`services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir.
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`2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807,
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`1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant
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`function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300,
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`102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP § 1209.01(b); see In re Oppedahl & Larson
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`LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. In the present case, the applied-for mark describes a
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`significant attribute of the identified services offered, which is to be a business that provides
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`prototyping services.
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`9.
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`In an outgoing office action dated March 17, 2015, Registrant was required to
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`disclaim the wording “PROTOTYPE” because it merely described a characteristic, function,
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`feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable
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`component of the mark. The examining attorney found that the term was descriptive because the
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`applicant’s services involve the design, engineering and making of prototypes. Registrant was
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`also required to explain that the use of the word “HOUSE” had no descriptive meaning toward the
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`design or building of houses. However, the examining attorney failed to consider the other
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`common uses of the word “house.”
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`

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`10.
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`One of the common definitions of the word “house” is that it is “a place of business”
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`and
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`“a business organization.”
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` See Merriam-Webster.com, https://www.merriam-
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`webster.com/dictionary/house (January 23, 2019). In addition, included in the synonyms of the
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`word “house,” are business establishment, company, concern, corporation, firm, organization,
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`outfit, partnership. See Thesaurus.com, https://www.thesaurus.com/browse/house (January 23,
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`2019). House is also commonly used to describe a kind of business that sells a particular good or
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`service. Examples include: “movie house” (a theater that exhibits films); “trading house” (a
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`business that specializes in facilitating transactions between a home country and foreign
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`countries); “fashion house” (a company specializing in the design and sale of high-fashion clothing
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`and accessories); “steak house” (a restaurant that specializes in steaks); sushi house (a restaurant
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`that specializes in sushi); “noodle house” (a restaurant that specializes in noodles); “branding
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`house” (a business that specializes in the creation of logos and marketing materials); and “banking
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`house” (a more formal term for a bank). In addition, the term “in-house” means “done or existing
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`within an organization.” A very informative article, “Why We Call Businesses Houses,” provides
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`an interesting and detailed explanation on the origins of the word “house” as a synonym for
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`“business.” See https://www.quickanddirtytips.com/education/grammar/publishing-house-house-
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`style-why-are-businesses-houses.
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`11.
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`A mark that merely combines descriptive words is not registrable if the individual
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`components retain their descriptive meaning in relation to the goods and/or services and the
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`combination results in a composite mark that is itself descriptive. TMEP §1209.03(d); see, e.g., In
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`re King Koil Licensing Co. Inc., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE
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`BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs and pillows
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`where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary
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`

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`meaning when combined with the term “MATTRESS” and the resulting combination was used in
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`the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660,
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`1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket
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`sales services because such wording “is nothing more than a combination of the two common
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`descriptive terms most applicable to applicant’s services which in combination achieve no
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`different status but remain a common descriptive compound expression”).
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`12.
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`Further, only where the combination of descriptive terms creates a unitary mark
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`with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or
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`services is the combined mark registrable. See, e.g., In re Tower Tech, Inc., 64 USPQ2d 1314
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`(TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling
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`towers and accessories therefore, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084
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`(TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in
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`development and deployment of application programs on a global computer network”); In re
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`Putman Publ’g Co., 39 USPQ2d 2021 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE
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`merely descriptive of news and information service for the food processing industry); In re
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`Copytele, Inc., 31 USPQ2d 1540 (TTAB 1994) (holding SCREEN FAX PHONE merely
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`descriptive of facsimile terminals employing electrophoretic displays); In re Entenmann’s, Inc.,
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`15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats
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`and hazelnuts), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991). For these reasons, trademark
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`rights are not granted to merely descriptive marks.
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`13.
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`As with the cancelled marks, THE BREATHABLE MATTRESS, GROUP SALES
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`BOX OFFICE, SMARTTOWER, AGENTBEANS, FOOD & BEVERAGE ON-LINE, SCREEN
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`FAX PHONE, or OATNUT, “PROTOTYPE HOUSE” is similarly a just combination of two
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`

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`simple, descriptive words reflecting Registrant’s services. Registrant markets itself to consumers
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`as “the premier choice for inventors, startups and large brands seeking product development,
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`prototyping
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`services,
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`packaging
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`design
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`and
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`3D CAD
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`engineering.”
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`
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`See
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`www.prototypehouse.com/prototypehouse/. The words “Prototype” and “House” are nothing more
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`than two common words, combined to form a succinct explanation of the company’s function,
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`which is a business that provides prototyping services. Registrant should have been no more able
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`to register the Mark in question as it would have the marks “Engineering Firm” or “Packaging
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`Design Business.”
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`14. While it is possible for descriptive marks to become distinctive by achieving
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`secondary meaning, the Mark in question has not achieved such a status, nor did the Registrant
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`argue such in its application.
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`15.
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`Secondary meaning indicates that although the mark is on its face descriptive of the
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`goods or services, consumers recognize the mark as having a source indicating function. Once it
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`can be shown that a descriptive term or phrase has achieved this "second meaning" (the first
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`meaning being the generally understood meaning of the term or phrase), a protectable trademark
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`is developed. Secondary meaning can be achieved through long term use, or large amounts of
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`advertising and publicity.
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`16.
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`Because “prototype” and “house” are commonly used in the prototyping and
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`engineering industries in a generic or descriptive sense, and has been since long before Registrant
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`decided to combine them for the name of its company, Registrant cannot meet the heavier burden
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`of showing that “PROTOTYPE HOUSE” has somehow been promoted or recognized for
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`secondary a mark. Certain companies have achieved such widespread recognition and renown,
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`including “Waffle House” or “International House of Pancakes.” However, the business “Random
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`

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`House” is fanciful and arbitrary enough to fall well-outside the need for a secondary meaning. As
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`such Registrant’s Mark is invalid.
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`17.
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`The Registration creates a legal presumption that Registrant has valid and exclusive
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`rights in the Mark for goods identified in the Registration.
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`18.
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`For the reasons set forth above, Registrant is not entitled to the Registration or to
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`the legal presumptions that the Registration creates.
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`19.
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`The continued presence of the Registration on the federal trademark register
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`constitutes an obstacle to any desire Petitioner may have to use of the term “prototype” and “house”
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`in future marketing materials or keywords. Additionally, the civil action filed by Registrant to
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`persecute Petitioner for inadvertently using the invalid Mark will cause further injury and damage
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`to Petitioner.
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`
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`WHEREFORE, Petitioner Kickr Design, LLC prays that Registration No. 4,781,438 be
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`canceled.
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`Respectfully submitted,
`
`/s/ Robert S. Bexley
`Georgia Bar No. 777172
`BEXLEY LAW FIRM, LLC
`4850 Sugarloaf Pkwy., Ste. 209-339
`Lawrenceville, GA 30044
`Office: (770) 689-6006
`Fax: (888) 527-1513
`robert@bexleylawfirm.com
`
`Attorney for Petitioner
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`Dated: January 24, 2019
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`