Rubitrux, LLC

This opinion is not a
precedent of the TTAB
Mailed: January 9, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rubitrux, LLC
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Serial No. 98023094
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Warner J. Delaune of Phelps Dunbar LLP,
for Rubitrux, LLC.
Kristin Kuraishi, Trademark Examining Attorney, Law Office 131,
Nicholas A. Coleman, Managing Attorney.
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Before Lykos, Allard, and Casagrande,
Administrative Trademark Judges.
Opinion by Casagrande, Administrative Trademark Judge:
Applicant Rubitrux, LLC seeks registration on the Principal Register of FIRST
RESPONDER in standard characters for goods ultimately identified as “Customized
and converted motor vehicles, namely, automobiles, trucks, sports utility vehicles and
structural parts therefor,” in International Class 12.1
1 Application Serial No. 98023094 was filed on June 1, 2023, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

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The Trademark Examining Attorney finally refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark was
merely descriptive.2 Applicant appealed.3 For the reasons explained below, we affirm
the refusal to register.
ANALYSIS
A. Section 2(e)(1) - legal standards
Section 2(e)(1) of the Trademark Act prohibits registration of any “mark which,
(1) when used on or in connection with the goods [or services] of the applicant is
merely descriptive … of them.” 15 U.S.C. § 1052(e)(1).4 “The major reasons for not
protecting [merely descriptive] marks are: (1) to prevent the owner of a mark from
inhibiting competition in the sale of particular goods; and (2) to maintain freedom of
the public to use the language involved, thus avoiding the possibility of harassing
infringement suits by the registrant against others who use the mark when
advertising or describing their own products.” Curtin v. United Trademark Holdings,
Inc., 137 F.4th 1359, 1369 (Fed. Cir. 2025) (cleaned up) (quoting In re Abcor Dev.
2 See Sept. 28, 2024, Final Office Action, at TSDR 2-5. Citations in this opinion to the
application record refer to the version of the record downloaded in .pdf format from the
Trademark Status and Document Retrieval (TSDR) database of the United States Patent
and Trademark Office (USPTO).
3 See 1 TTABVUE. References to the briefs, other filings in the case, and the record cite the
Board’s TTABVUE docket system. The number preceding “TTABVUE” represents the docket
number assigned to the cited filing in TTABVUE and any number immediately following
“TTABVUE” identifies the specific page(s), if any, to which we refer.
4 A merely descriptive term is not permanently disqualified from registration. It may be
registered under Section 2(f) if it has acquired distinctiveness, i.e., as to the goods or services,
the consuming public has come primarily to understand the term to indicate source. See, e.g.,
Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018).

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Corp., 588 F.2d 811, 813 (CCPA 1978)), cert. filed, No. 25-435 (Oct. 9, 2025); see also
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981) (“Section
2(e)(1) is thus concerned with the prevention of harassment, based on a registration,
under which an exclusive right could be claimed in a term which does not identify
source.”) (citations omitted).
“A term is merely descriptive 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 Com. of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012) (citations
omitted); Abcor Dev., 588 F.2d at 813 (“conveys information regarding a function, or
purpose, or use of the goods”). “The question is not whether someone presented with
only the mark could guess what the goods or services are. Rather, the question is
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, 1254 (Fed. Cir. 2012) (citation omitted). “A mark may be merely
descriptive even if it does not describe the full scope and extent of the applicant’s
goods or services.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1378
(Fed. Cir. 2012) (citation omitted).
Refusals for mere descriptiveness are based on evidence bearing on public
perception of the proposed mark. See, e.g., In re Slokevage, 441 F.3d 957, 960 (Fed.
Cir. 2006). “Evidence of the public’s understanding of the term may be obtained from
any competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other publications.” Real Foods Pty Ltd.

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v. Frito-Lay N. Am., Inc., 906 F.3d 965, 974 (Fed. Cir. 2018) (cleaned up; citation
omitted); see also Coach Servs., 668 F.3d at 1378 (“any competent source, such as
dictionaries, newspapers, or surveys.”) (citations omitted). Relevant, too, is “evidence
of third parties that use the term … to describe [goods or] services that are similar to
those identified in [the] application.” Coach Servs., 668 F.3d at 1378; see also
Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580 (Fed. Cir. 1990)
(descriptiveness shown by opposer’s and another’s descriptive use of the term, i.e.,
“usage in the trade”).
B. The evidence in the record
Here, Applicant’s proposed mark is FIRST RESPONDER and its identified goods
are “Customized and converted motor vehicles, namely, automobiles, trucks, sports
utility vehicles and structural parts therefor.” The Examining Attorney placed in the
record two online dictionary definitions of “first responder”:
• Collins English Dictionary: “a person whose job is to deal with emergencies
when they occur, esp a firefighter, police officer, or member of the ambulance
service”;5 and
• Merriam-Webster Dictionary: “a person (such as a police officer or an EMT)
who is among those responsible for going immediately to the scene of an
accident or emergency to provide assistance.”6
The record also contains screenshots of the webpages of several third parties who
offer customized/converted vehicles for use by first responders (as defined in the
dictionaries), in which the third parties call such vehicles “first responder vehicles”:
5 https://www.collinsdictionary.com/dictionary/english/first-responder. See Feb. 27, 2024
Nonfinal Office Action at TSDR 6.
6 https://www.merriam-webster.com/dictionary/first%20responder. See id. at 48.

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Fastlane Emergency Vehicles;7 Frazer;8 PL Custom Emergency Vehicles;9 First Class
Emergency Vehicles;10 SpaceKap;11 and Craftsmen Industries.12
There is also evidence in the form of a screenshot of a Driving Line article (with
an embedded video) about how a “first responder vehicle is customized”13 and a
historical article from the JW Whitney website entitled “A Look at First Responder
Vehicles Through Time.”14
This evidence clearly shows that “first responder” describes a type of vehicle that
has been customized or converted for use by first responders.
C. Applicant’s arguments are unavailing
Applicant’s response to this evidence of mere descriptiveness is not evidence to the
contrary, but rather a series of legal arguments. Applicant’s main argument is that
its application “has not identified its Goods as having anything to do with ‘first
responders,’”15 and the “broad scope of goods prevents direct descriptiveness.”16 Our
primary reviewing court has roundly rejected this argument before. In In re Allen
Electric and Equipment Co., 458 F.2d 1404 (CCPA 1972), the Court held:
7 See id. at 10-13.
8 See id. at 15-19.
9 See id. at 20-22.
10 See id. at 23-25.
11 See Sept. 28, 2024, Final Office Action, at TSDR 7.
12 See id at 15-20.
13 See id. at 21-28.
14 See id. at 29-37.
15 See 6 TTABVUE 3.
16 See id. at 6 (capitalization altered).

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The goods to which the mark is applied are described in
appellant’s application as “antennas.” It is clear from the record
that there are antennas which are known as “scanning antennas.”
The mark SCANNER, if applied to such antennas, would in our
view be merely descriptive. While appellant contends that the
specimen submitted with its application shows that the mark is
not in fact applied to “scanning antennas,” trademark cases must
be decided on the basis of the identification of the goods as set
forth in the application. Since the goods are described merely as
“antennas” and that term is broad enough to encompass
“scanning antennas,” the mark SCANNER as applied to the goods
is merely descriptive within the meaning of 15 U.S.C. § 1052(e)(1).
Id. at 1405 (citations omitted). As in Allen Electric, the goods here are described in a
broad manner: “Customized and converted motor vehicles.”
Here, similar to the situation in Allen Electric, there is evidence that “first
responder” vehicles are a type of customized or converted motor vehicle. We must
decide this case on the basis of the description of goods in the application, and that
description encompasses all types of “customized and converted motor vehicles,”
including those customized and converted to serve as first responder vehicles. See
also In re Cryomedical Sciences Inc., No. 74238772, 1994 WL 587038, at *2 (TTAB
1994) (Board held that SMARTPROBE was merely descriptive where the goods were
broadly described to include all types of disposable cryosurgical probes, including
those containing electronic devices or microprocessors); see generally In re AC
Webconnecting Holding B.V., No. 85635277, 2020 WL 5544272, at *13 (TTAB 2020)
(services that are “identified without limitation … must be presumed to include” all
specific subsets of those services within the broad identification). An applicant can’t
evade a mere descriptiveness refusal by the simple expedient of wordsmithing its
identification of goods to omit the descriptive term. As the Court said in In re Water

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Gremlin Co., 635 F.2d 841 (CCPA 1980): “Appellant apparently sought to avoid
particularizing its goods [to indicate that its “fishing weights” were sold in a
compartmented package] in order to make the argument that the word ‘SELECTOR’
is arbitrary with respect to fishing weights. We find this argument … specious ….”
Id. at 845.
These legal principles also scuttle Applicant’s next argument: that, because this
is an intent-to-use application and there is, as yet, no evidence in the record of
Applicant’s use, evidence that others offer converted or customized first responder
vehicles “has no evidentiary connection to the customized vehicles described in the
present Section 1(b) application for which there is yet no evidence of commercial
use.”17 But as the precedents cited above make clear, we decide this case based on the
goods as identified in the application, which are converted and customized vehicles,
with no restriction as to type or usage. This identification subsumes all categories of
converted and customized vehicles, including those for first responder use. In
addition, even if we were to assume that Applicant has never offered and will never
offer customized or converted vehicles for first responder use, trademark law would
not tolerate attempted usurpation of a term descriptive of others’ converted or
customized vehicles. See, e.g., Cridlebaugh v. Montgomery Ward & Co., 158 F.2d 646,
648 (CCPA 1946) (“Even if it could be concluded that the term is misdescriptive of
Cridlebaugh’s device, he has no right to assert exclusive monopoly upon a descriptive
term which describes the goods of others or which might fittingly be used by others
17 See 6 TTABVUE at 4.

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in advertising and carrying out their business.”); In re Hair Net Packers, Inc., 115
F.2d 254, 256 (CCPA 1940) (regarding the proposed mark PROFESSIONAL, the
Court held: “The contention that appellant’s goods are for the most part used by those
who are not professionals is unavailing. This court and other courts have frequently
held that as to registrability, it does not help the situation for a trade-mark to be
misdescriptive rather than descriptive.”).
Applicant next urges that “competitors” can “use other terms like ‘emergency
vehicles,’ ‘specialty vehicles,’ or specific descriptors like ‘ambulance’ or ‘fire truck’ to
convey the same idea.”18 This argument flies in the face not only of the evidence in
the record but of the core policy underlying trademark law’s refusal to grant exclusive
rights in a descriptive term: allowing market participants and the public the right to
freely use descriptive language to describe their goods or services. See, e.g., Curtin,
137 F.4th at 1369; Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1360 (Fed.
Cir. 2001); Otto Roth, 640 F.2d at 1320; Armour & Co. v. Organon, Inc., 245 F.2d 495,
498-99 (CCPA 1957); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., No. 91192657, 2013
WL 5315963, at *26 (TTAB 2013).
Applicant argues that the public, viewing Applicant’s proposed FIRST
RESPONDER mark, might understand it to mean something other than vehicles
used by first responders in performance of their duties, like vehicles used for “rapid
delivery services” or “off-road adventures,” or that consumers may see the term as
18 See 6 TTABVUE 6. Applicant’s use of the term “competitors” seems inconsistent with the
assumed factual basis of its preceding argument: that it doesn’t compete—or perhaps doesn’t
compete yet—in the market to convert or customize vehicles for use by first responders.

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simply evoking “heroism.”19 Even if we were to assume that consumers see FIRST
RESPONDER to refer to other kinds of customized vehicles, that would get Applicant
nowhere, for those other kinds of vehicles are still within its broad identification of
goods. And there is no evidence in the record supporting Applicant’s speculation, in
the context of the identified goods, that consumers would primarily connect the term
with the vague concept of heroism.
What the record does contain is evidence that the term refers to vehicles
customized or converted for use by first responders in the course of their duties. We
determine descriptiveness in view of the goods identified in the application, see, e.g.,
In re Bayer AG, 488 F.3d 960, 963-64 (Fed. Cir. 2007) (“Descriptiveness … is
considered in relation to the particular goods for which registration is sought … .”)
(citations omitted); Allen Electric, 458 F.2d at 1405 (deciding descriptiveness “on the
basis of the identification of the goods as set forth in the application”), and we further
assume that customers know what those goods are, see, e.g., DuoProSS Meditech, 695
F.3d at 1254.
Applicant also points out that FIRST RESPONDER “does not describe the process
of customization or conversion, nor does it specify the structural parts of the
vehicles.”20 But, for a term to be merely descriptive, it “need not recite each feature
of the relevant goods or services in detail … , it need only describe a single feature or
attribute.” Chamber of Com., 675 F.3d at 1300 (cleaned up; citation omitted); see also
19 See id. at 7.
20 See id.

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Coach Servs., 668 F.3d at 1378 (“A mark may be merely descriptive even if it does not
describe the full scope and extent of the applicant’s goods or services.”).
Applicant cites the Board decision in In re Shutts, No. 73245440, 1983 WL 51780
(TTAB 1983),21 but we think that decision involves circumstances finding no parallel
in this case. In Shutts, the mark was SNO-RAKE for a “snow removal hand tool …
without prongs.” Id. at *1. Because no one “rakes” snow and the tool lacked the prongs
characteristic of a rake, consumers would not immediately grasp any descriptive
connotation from SNO-RAKE, which was coined by the applicant and “hitherto
unused and somewhat incongruous.” Id. at *2. Shutts thus presented a case with
almost nothing in common with the evidence in the record here, where there is no
incongruity inherent in the term FIRST RESPONDER considered in the context of
Applicant’s goods, and others in the same field use the term to describe the
customized or converted vehicles they offer for use by first responders.
Decision: We affirm the refusal to register.
21 See id. at 6.