Best Lab Deals, Inc.

Trademark Trial and Appeal BoardJun 15, 2010

No. 77705840 (T.T.A.B. Jun. 15, 2010)

Mailed: June 15, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Best Lab Deals Inc. ________ Serial No. 77705840 _______ Lisa N. Kaufman of Office of Lisa N. Kaufman for Best Lab Deals Inc., d/b/a/ BLD Science PGC Scientifics. Zachary R. Bello, Trademark Examining Attorney, Law Office 111 (Craig D. Taylor, Managing Attorney). _______ Before Seeherman, Bucher and Kuhlke, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Best Lab Deals Inc., d/b/a BLD Science PGC Scientifics, has applied to register PGC SCIENTIFICS as a trademark for the following goods in Class 9: Laboratory apparatus and instruments, namely, bottle top filters used for the purification of tissue culture media; laboratory apparatus, namely, centrifuges; laboratory consumables, namely, pipette tips; laboratory equipment and supplies, namely, test tubes; laboratory equipment, namely, pipette racks; pipettes; plates, glass slides or chips having multi-well THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77705840 2 arrays that can be used in chemical analysis, biological analysis or patterning for scientific, laboratory or medical research use.1 The examining attorney required that applicant disclaim exclusive rights to the word SCIENTIFICS, and when this requirement was made final, applicant filed this appeal. As a preliminary matter, with its appeal brief applicant submitted pages from the registration file of Registration No. 3095767 for EDMUND SCIENTIFICS, owned by a third party. Applicant states that the file history of U.S. Trademark Registration No. 3095767 “is automatically before the Board because it is a file of the USPTO.” Brief, p. 5. This is not correct. The Board does not take judicial notice of registrations that reside in the Patent and Trademark Office, nor does it take judicial notice of papers in those registration files. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Further, applicant’s submission of these pages with its appeal brief is untimely. The record in the application should be complete prior to the filing of the appeal. Trademark Rule 2.142(d). However, in his brief the examining attorney did 1 Application Serial No. 77705840, filed April 2, 2009, and asserting first use and first use in commerce as early as January 1, 2008. Ser No. 77705840 3 not object to the submission of this material, and instead discussed it.2 Accordingly, we deem the examining attorney to have stipulated that the materials submitted with applicant’s brief are of record. Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), provides that the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1), prohibits the registration of a mark which is merely descriptive of the identified goods. A term is deemed to be merely descriptive if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is the examining attorney’s position that SCIENTIFICS is essentially a misspelling of SCIENTIFIC, and that SCIENTIFIC, and therefore SCIENTIFICS, describes the function, purpose or use of applicant’s identified scientific or laboratory equipment. In this connection, the examining attorney has submitted a dictionary 2 The examining attorney appears to believe that Registration No. 3095767 is applicant’s, but in fact the record owner is Edmund Optics, Inc., and the examining attorney submitted the registration information, taken from the USPTO’s database, with the first Office action. Ser No. 77705840 4 definition of “scientific”: “relating to science, or using the organized methods of science: a scientific discovery/experiment/theory; scientific evidence/research.”3. The examining attorney also submitted several third-party registrations for marks that include the word SCIENTIFIC, in which SCIENTIFIC has been disclaimed, as well as the third-party registration for EDMUND SCIENTIFICS, mentioned previously, in which SCIENTIFICS was disclaimed. There has been some discussion between the examining attorney and applicant about whether the EDMUND SCIENTIFICS registrant voluntarily disclaimed SCIENTIFICS, and whether it should have. These questions are irrelevant to our decision herein because, ultimately, the fact that SCIENTIFICS has been disclaimed in a single third—party registration does not have real probative value. It does not show that there is a general recognition by those in the trade that SCIENTIFICS is descriptive, nor does it reflect a determination or policy by the USPTO that the term is descriptive. 3 http://dictionary.cambridge.org. In his appeal brief the examining attorney also quoted a definition that he attributes to Dictionary.com. This definition was not made of record during examination, nor did he submit a copy of the webpage so that we could ascertain whether this Internet source is something that we can judicially notice. In re Total Quality Group Inc., 51 USPQ2d Ser No. 77705840 5 The dictionary definition and applicant’s identification show that the word SCIENTIFIC would be merely descriptive of applicant’s goods, particularly the goods that have been specifically identified as being for scientific use: plates, glass slides or chips having multi-well arrays that can be used in chemical analysis, biological analysis or patterning for scientific, laboratory or medical research use. See In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (if a mark is descriptive of any of the goods or services for which registration is sought, it is proper to refuse registration as to the entire class). However, applicant contends that SCIENTIFICS is not the equivalent of SCIENTIFIC; rather, applicant claims that it is a coined term, and that “it requires some thought or consideration for the relevant consumer to determine what Applicant means when it uses such a created term.” Brief, p. 3. The real question, then, is whether SCIENTIFICS will be viewed as merely a variation of SCIENTIFIC, or whether it will be viewed as a coined term that takes some degree of thought to understand. We find that the letter “S” 1474, 1476 (TTAB 1999). Accordingly, we have given this definition no consideration. Ser No. 77705840 6 added to the word SCIENTIFIC does not transform this merely descriptive word into a coined term that requires thought to decipher; rather, the relevant consumers for these scientific goods will immediately recognize SCIENTIFICS as the equivalent of SCIENTIFIC, or perhaps as a noun form of that adjective. In either case, the meaning of the term will be clear, and SCIENTIFICS directly conveys information about a significant characteristic or purpose of the identified goods. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831-32 (Fed. Cir. 2007), the Court affirmed the Board’s decision that ASPIRINA is merely descriptive for analgesic goods, quoting the Board’s statement that “[t]he mere addition of the letter ‘A’ at the end of the generic term ‘aspirin’ is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics.” The Court also stated that: Adding an “a” to aspirin results in virtually no distinction with respect to the visual impressions of the terms. Importantly, both terms will be used in association with the same analgesic goods in this country. There are, however, some differences in sound. ASPIRINA contains four syllables and aspirin contains two or three syllables (depending on how it is pronounced). ASPIRINA also contains different syllables and the emphasis is on the third syllable for ASPIRINA, whereas Ser No. 77705840 7 the emphasis is on the first syllable for aspirin. When the mark ASPIRINA is considered as a whole, the significant similarities in appearance and meaning of ASPIRINA and aspirin demonstrate that the Board's finding that ASPIRINA is merely descriptive of analgesic goods is supported by substantial evidence. [footnote omitted] In the present case, the addition of “S” to the end of SCIENTIFIC creates even less of a difference, since the sound of SCIENTIFIC and SCIENTIFICS is extremely similar. Applicant also relies on In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). However, that case is distinguishable from the instant case. The issue in that case was whether HUTCHINSON TECHNOLOGY should be refused registration as primarily merely a surname, and the consideration of the word TECHNOLOGY was in the context of the effect of that term on whether the mark as a whole was primarily merely a surname.4 We also point out that, despite the Court’s statement that TECHNOLOGY was not merely descriptive in connection with the determination that the mark was not primarily merely a surname, the Court remanded the case to the board so that the applicant could file the required disclaimer of 4 Applicant erroneously refers to the mark in its brief as HUTCHINSON TECHNOLOGIES. Ser No. 77705840 8 TECHNOLOGY. Disclaiming SCIENTIFICS is, of course, the issue in the present case. Decision: The requirement for a disclaimer of SCIENTIFICS is affirmed. If applicant files the required disclaimer within thirty days of the mailing of this decision, this decision will be set aside and the application will be forwarded for publication.