wellington Mailed: November 28, 2005
Opposition No. 91154595
Bruker Daltonics, Inc.
v.
PerSeptive Biosystems, Inc.
and
Applied Biosystems/MDS Sciex
Instruments (joined as party
defendant)1
Before Seeherman, Hohein and Hairston,
Administrative Trademark Judges.
By the Board:
On July 10, 2001, PerSeptive Biosystems, Inc. filed
application Serial No. 78073160 to register the mark TOF/TOF
for “mass spectrometry instrumentation, namely time-of-
flight mass spectrometers and components therefor, and
related software, for use in chemical and biological
applications” in International Class 9. The application,
which has subsequently been assigned to and is presently
1 On November 9, 2004, the entire interest in the subject
application was assigned from PerSeptive Biosystems, Inc. to Applied
Biosystems/MDS Sciex Instruments (recorded with the Assignment
Division at Reel 2972, Frame 0163). Accordingly, the Board sua
sponte joins Applied Biosystems/MDS Sciex Instruments as the
applicant and party in the position of defendant. See TBMP Section
512.01 and Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d
1910, 1910 n.1 (TTAB 2000)(assignee joined at final decision).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91154595
2
owned by Applied Biosystems/MDS Sciex Instruments, is based
on an allegation of a bona fide intent to use the mark in
commerce under Section 1(b) of the Trademark Act.
During the prosecution of the application, the
examining attorney issued a final office action refusing
registration to applicant based on Section 2(e)(1) of the
Trademark Act, namely, that the mark was merely descriptive
of the goods. In response to this office action, applicant
filed a request for reconsideration wherein it argued that
its mark was not descriptive but merely suggestive. In the
alternative, applicant argued that its mark should be
allowed to register under Section 2(f) of the Trademark Act
because the proposed mark had acquired distinctiveness.
Applicant based its Section 2(f) acquired distinctiveness
claim on its ownership of Registration No. 2593108 for the
mark MALDI TOF/TOF for an “ion source for mass spectrometer”
in International Class 9.2
The examining attorney considered applicant’s
alternative Section 2(f) argument; accepted applicant’s
ownership of the prior registration as a prima facie showing
of acquired distinctiveness for the TOF/TOF mark; and
approved the application for publication of such mark for
2 The registration issued on July 9, 2002. The Board notes
that the registration is not over five years old.
Opposition No. 91154595
3
opposition. Accordingly, on November 12, 2002, the mark was
published for opposition in the Trademark Official Gazette.
On January 10, 2003, opposer, Bruker Daltonics, Inc.,
filed a notice of opposition opposing registration of
applicant’s mark on the grounds that the mark is generic for
the identified goods and, in the alternative, that the mark
is merely descriptive of the identified goods.
Specifically, opposer alleges, inter alia, that “since 1980,
[opposer] has been involved in the manufacture and sale of
analytical instruments, some of which are similar to
applicant's goods, and which opposer has a valid and legal
right to describe by using the term sought to be registered
by the applicant”; that “applicant's alleged mark is
integral to the accurate and efficient description of some
of opposer's products, and if a registration is granted to
the applicant, it will impair Opposer's right to use the
term ‘TOF/TOF’"; that “the alleged mark functions as the
common descriptive name of the goods enumerated in the
above-referenced application, and has become the generic
name for all such goods produced and sold by every
competitor engaged in such business”; and that,
alternatively, “the mark, when used in connection with the
goods enumerated in the above-referenced application, is
merely descriptive.”
Opposition No. 91154595
4
On March 6, 2003, applicant filed its answer denying
the salient allegations of the notice of opposition.
On August 13, 2004, opposer filed a motion for summary
judgment on the grounds that applicant’s mark is either
generic or merely descriptive of the goods identified in the
application.
Even though the parties briefed the summary judgment
motion, in our order dated February 10, 2005, we explained
that we were deferring consideration of opposer’s summary
judgment motion because the parties’ briefs did not contain
arguments concerning an essential issue in this proceeding
and allowed the parties additional time to file supplemental
briefs on the issue.3 Specifically, the parties’ original
briefs on the motion had no discussion of the issue of
whether applicant’s proposed mark had acquired
distinctiveness. In the February 10, 2005 order, we pointed
out that the application at issue was published for
opposition under Section 2(f) of the Trademark Act based on
applicant’s declaration (in the prosecution of its
application) that its mark had acquired distinctiveness
based on its prior registration as proof of the acquired
distinctiveness. In its brief in opposition to the summary
3 We also advised the parties that, for purposes of the summary
judgment record, we were considering all previous arguments and
submissions and that the order was not to be construed as
containing any decision on the merits of the parties’ allegations
in the motions.
Opposition No. 91154595
5
judgment motion, applicant referenced its ownership of the
prior registration and argued, in the alternative, that it
“believes that the mark TOF/TOF is distinctive of the goods
as evidenced by [its ownership of the prior] registration on
the Principal Register for the same mark for related goods.”
Applicant did not specifically argue that its mark had
acquired distinctiveness.
The parties have now filed their supplemental briefs on
the issue of whether applicant’s mark has acquired
distinctiveness.4
Issues Before the Board
The summary judgment motion now having been fully
briefed, the Board is faced with the following issues:
(1) whether the mark is merely descriptive and/or generic;
and (2) assuming the mark is determined to be merely
descriptive but not generic, whether acquired
distinctiveness has been established so as to be
registrable. In re Harrington, 219 USPQ 854, 855 n.1 (TTAB
4 On April 4, 2005, applicant filed a motion for an extension of
time (up to April 25, 2005) to file its supplemental brief with
opposer’s alleged consent. On April 8, 2005, opposer filed a
communication stating that it did not consent to applicant’s
extension request but merely stated that it would not oppose said
request. On July 1, 2005, applicant filed a motion for leave to
accept a late filed copy of its supplemental brief wherein it
states that it served opposer with a copy of its supplemental
brief on April 25, 2005, but that it “inadvertently missed”
filing a copy thereof with the Board. Opposer did not oppose the
latter motion. Accordingly, applicant’s motions are granted as
conceded and its supplemental brief is accepted and considered.
Trademark Rule 2.127(a).
Opposition No. 91154595
6
1983). In other words, if we find that the mark is not
generic but that it is merely descriptive, we then must
determine whether the evidence supports a finding that the
mark has acquired distinctiveness and thus is registrable
pursuant to Section 2(f). In re Capital Formation
Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983). Thus, the
Board considers the issues before us in this case to be
genericness, descriptiveness, and whether applicant’s mark
has acquired distinctiveness. Moreover, since this is a
motion for summary judgment our determination of these
issues must be in the context of whether there are any
genuine issues of material fact.
Parties’ Arguments and Submissions
In support of its motion for summary judgment, opposer
argues that applicant's mark TOF/TOF is “merely a long-
standing abbreviation for a tandem (i.e., back-to-back)
time-of-flight mass spectrometer”; that applicant’s
identified goods “include time-of-flight mass spectrometers,
which for nearly sixty years have been conventionally
referred to as "TOF" mass spectrometers”; that “[w]hen
tandem time-of-flight mass spectrometers were developed
almost twenty years ago, the abbreviation "TOF/TOF" was
readily adopted in the industry to refer to and describe
such instruments and their function (i.e., to perform time-
of-flight analyses in tandem)”; that “to the relevant
Opposition No. 91154595
7
consumer and user of mass spectrometers, the term ‘TOF/TOF’
readily conveys information about the nature of the goods,
namely that they perform tandem time-of-flight mass
spectrometry”; that “the genus of goods for which
registration is sought is therefore tandem time-of-flight
mass spectrometry instrumentation” and “numerous patents,
trade journals, and other publicly available materials
unquestionably show that "TOF/TOF" is understood by the
relevant public to exclusively refer to tandem time-of-
flight mass spectrometers”; and that the evidence of record
“indisputably shows that the term ‘TOF/TOF’ is, at the
least, merely descriptive” and “...actually goes further,
and shows that the mark is generic when used on applicant's
goods.”
Opposer also submitted a declaration of Michael J.
Zinna, Esq., counsel for opposer, with the following
exhibits: a 1994 publication from the American Chemical
Society titled “Time-of-Flight Mass Spectrometry” containing
articles involving tandem mass spectrometry; photocopies of
two patents (Patent Nos. 4,851,669 and 5,206,508) involving
tandem mass spectrometers; a copy of a curriculum vitae for
Catherine C. Fenselau; a copy of an article by Ms. Fenselau
titled “MALDI MS and Strategies for Protein Analysis,”
published in Analytical Chemistry News & Features, November
1, 1997; copies of abstracts published in conjunction with
Opposition No. 91154595
8
ASMS (American Society for Mass Spectrometry) Conferences on
Spectrometry and Allied Topics for the years 1999 and 2001;
a copy of a progress report for the period December 1991-
November 1994 entitled “Development of Laser-ion Beam
Photodissociation Methods” by D.H. Russell, Department of
Chemistry, Texas A&M University; a copy of a patent
cooperation treaty application (No. 9901889, dated January
14, 1999) entitled “novel mass spectrometer”; copies of
several articles involving mass spectrometry; copies of
dictionary definitions of the terms “time-of-flight” and
“TOF” from an online Merriam-Webster Medical Dictionary
(2003); and a copy of applicant’s responses to opposer’s
requests for admission.
In opposition to opposer’s summary judgment motion,
applicant argues that its mark is “neither descriptive nor
generic,” but “is rather highly suggestive of the
applicant's goods”; that it “is not true that the entire
mass spec industry uses the [term] ‘TOF/TOF' to describe
time-[of flight] tandem, rather the industry would use
‘Time-of-Flight MS/MS’ to describe the technology”; that, in
the alternative, the mark "TOF/TOF" is “distinctive of the
associated goods as evidenced by Applicant's ownership of
Registration No. 2593108 for the mark MALDI TOF/TOF”; and
that because the USPTO issued Registration No. 2593108 for
the mark MALDI TOF/TOF, without any disclaimer, the term
Opposition No. 91154595
9
“TOF/TOF” is “distinctive and registrable.” In its
supplemental brief on the issue of acquired distinctiveness,
applicant asserts that it first used the mark TOF/TOF in
June 2001 “in different countries around the world”; that
“[f]rom June 1 to January 2002, the Applicant generated $3.1
Million in the European Union alone”; that the TOF/TOF mark
is “not only known to be associated to the product of the
Applicant but also known in other parts of the world”; that
applicant spends a “considerable amount in advertising and
marketing”; and that applicant has used the mark
“considerably and spends resources in the US and in other
countries as well building its goodwill.”
Applicant submitted a USPTO TARR database printout of
its registration for the mark MALDI TOF/TOF and a one-page
printout that appears to show a search result from an
Applied Biosystems corporation website (applicant
characterizes this page as a “sample list of marketing and
application literature involving the TOF/TOF products”). In
its supplemental brief, applicant also states that it “will
provide more marketing literature if the Board requests.”
Summary Judgment Standard
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party moving
Opposition No. 91154595
10
for summary judgment has the initial burden of demonstrating
the absence of any genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793 (Fed. Cir. 1987). A factual dispute is genuine
if, on the evidence of record, a reasonable finder of fact
could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, supra.
Acquired Distinctiveness Standard
By seeking registration under Section 2(f), applicant
has admitted that its mark is merely descriptive. Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) ("Where, as here, an
applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact").
Applicant ultimately has the burden of establishing
that its mark has become distinctive. Yamaha, 840 F.2d at
Opposition No. 91154595
11
1578. In order to establish acquired distinctiveness, “an
applicant must show that ‘in the minds of the public, the
primary significance of a product feature or term is to
identify the source of the product rather than the product
itself.’” In re Dial-A-Mattress Operating Corporation, 240
F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001), quoting
from Inwood Labs, Inc. v. Ives Labs, 456 U.S. 844, at
footnote 11 (1982).
The issue of acquired distinctiveness is a question of
fact. See In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865, 869 (Fed. Cir. 1985). There is no specific rule
as to the exact amount or type of evidence necessary at a
minimum to prove acquired distinctiveness, but generally,
the more descriptive the term or phrase, the greater the
evidentiary burden to establish acquired distinctiveness.
That is, the less distinctive the term or phrase, the
greater the quantity and quality of evidence that is needed
to prove acquired distinctiveness. See In re Bongrain
International (American) Corp., 894 F.2d 1316, 13 USPQ2d
1727 (Fed. Cir. 1990); and Yamaha, 6 USPQ2d at 1008. See
also, 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §15:28 (4th ed. 2001).
Trademark Rule 2.41(b) provides that in “appropriate
cases, ownership of one or more prior registrations on the
Principal Register...of the same mark may be accepted as
Opposition No. 91154595
12
prima facie evidence of distinctiveness.” [Italics
provided]. The rule also states, however, that in such
situations, “further evidence may be required.”
Decision
After a careful review of the record, we find that
opposer has met its burden of establishing the absence of
any genuine issues of material fact. Moreover, we find that
applicant's proposed mark, TOF/TOF, is highly descriptive of
the identified goods and has not acquired distinctiveness.
The evidence of record establishes that the proposed
mark, TOF/TOF, is highly descriptive of applicant’s goods
because it describes a key feature or function, namely that
they comprise, utilize or otherwise employ time-of-flight
mass spectrometers in tandem. Applicant admits that the
identified goods contain time-of-flight mass spectrometers
in tandem. (Applicant’s responses nos. 7-10 to opposer’s
requests for admissions.) Opposer has provided the
following definitions of the terms “time-of-flight” and
“TOF”:5
Main Entry: time-of-flight
Pronunciation: [illegible text]
Function: adjective of, relating to, being, or done
with an instrument (as a mass spectrometer) that
separates particles (as ions) according to the time
required for them to traverse a tube of a certain
length
--
abbreviation TOF
5 Merriam-Webster’s Online Medical Dictionary, 2005.
Opposition No. 91154595
13
Main Entry: TOF
Function: abbreviation
time-of-flight
These definitions show that “TOF” is a recognized
abbreviation for “time of flight,” which is used to describe
a feature or type of mass spectrometers.
The exhibits attached to the Zinna declaration include
numerous articles, patents and other published documents
from industry-oriented publications showing the term
“TOF/TOF” as clearly being used to reference tandem, time-
of-flight mass spectrometry instruments or analysis. Mr.
Zinna avers that he accumulated these materials as a result
of Internet and LEXIS/NEXIS database searches. The
following is a sampling of excerpts from these materials
[emphasis added]:
Tandem time-of-flight (TOF-TOF) instruments are indeed
few in number, but reflectrons have been used for a
number of years to observe and record product ion mass
spectra.6
Finally, in Chapter 6, Timothy Cornish and I describe a
tandem (TOF-TOF) instrument using pulsed collision
induced dissociation.7
A tandem TOF/TOF mass spectrometer for studying
polyatomic ion/surface collisions has been reported by
Cooks et al.8
6 Page IX (Preface), ACS Symposium Series, Time-of-Flight Mass
Spectrometry, Robert J. Cotter, Editor. Developed from symposia
held at the 204th National Meeting of the American Chemical
Society, Washington, D.C., August 23-28, 1992, and the Pittsburgh
Conference on Analytical Instrumentation, New Orleans, Louisiana,
March 9-12, 1992.
7 Id. at p. X (Preface).
8 Id. at p. 12.
Opposition No. 91154595
14
This TOF-TOF CID spectrum was compared to a linked B/F
scan of a magnetic sector instrument…9
…as the neutral gas collision source have been
successfully demonstrated in this compact TOF/TOF
design.10
In this tandem time-of-flight (TOF/TOF) system 70, a
pulsed primary beam ejects sample ions from a flat
target surface.11
Embodiment of tandem mass spectrometry systems,
henceforth referred to as TOF-TOF's, in accordance
with the invention will now be described, by way of
example only, with reference to the accompanying…12
Many types of mass spectrometers are used with MALDI,
including time-of-flight (TOF), Fourier transform (ET),
Paul trap, magnetic sector, sector-TOF, TOF-trap, and
TOF-TOF instruments.13
Thus, the system can be viewed as a TOF-TOF system with
the ability to keep ions outside a desired m/z range
from entering the TOF flight tube and effecting
detector response.14
Tandem Time-of-Flight Instruments (TOF/TOF) Our initial
studies on tandem TOF mass spectrometry were performed
using the hybrid magnetic sedor/R-TOF instrument.15
9 Id. at p. 104.
10 Id.
11 U.S. Patent No. 4,851,669 at p. 7 (filed June 2, 1988, issued
July 25, 1989) [“Surface-Induced Dissociation for Mass
Spectrometry”].
12 U.S. Patent No. 5,206,508 at p. 2 (filed October 18, 1991,
issued April 27, 1993) [“Tandem Mass Spectrometry Systems
Based on Time-of-Flight Analyzer”].
13 “MALDI MS and Strategies for Protein Analysis,” Fenselau,
Catherine. Analytical Chemistry News & Features (November 1,
1997) at p. 3.
14 “Increasing the Duty Cycle for Time-Of-Flight by Trap-Pulse
Mode,” Bruce A. Andrien Jr., Erol Gukicek, and Craig Whitehouse.
The 47th ASMS Conference on Mass Spectrometry And Allied Topics
(June 13-17, 1999, Dallas, Texas).
15 “Development of Laser-ion Beam Photodissociation Methods”
(December 1991-November 1994 Progress Report), D.H. Russel (Dept.
Chemistry, Texas A&M University). Prepared June 1994 for the U.S.
Department of Energy.
Opposition No. 91154595
15
The evidence not only demonstrates the highly
descriptive nature of the term “TOF” in the mass
spectrometry field but also shows that the syntax commonly
used in the industry is to repeat the term (either separated
by a hyphen or forward slash) in order to describe a tandem
time-of-flight spectrometry instrument or analysis.
Applicant’s repetition of the term “TOF” is therefore
neither novel or arbitrary but only enhances the
descriptiveness of the proposed mark.
Because applicant has failed to directly address or
rebut any of opposer’s evidence, applicant has not raised a
genuine issue of material fact in this regard. Indeed,
applicant does not even discuss the materials submitted by
opposer. Instead, applicant essentially relies on its
ownership of a registration, makes several unsubstantiated
statements regarding use of its mark, and has submitted a
one page website printout in support of its position that
its mark has acquired distinctiveness. As discussed below,
this meager showing does not raise a genuine issue of
material fact.
Applicant states that it “first used the mark TOF/TOF
in June 2001 in different countries around the world” and
that “from June 1 to January 2002, the Applicant generated $
3.1 Million in the European Union alone.” Again, these
statements, made in its brief, are not supported by any
Opposition No. 91154595
16
evidence whatsoever and, even if true, are irrelevant
because the issue is whether applicant’s mark has acquired
distinctiveness in the United States. See In re Men's
International Professional Tennis Council, 1 USPQ2d 1917,
1919-20 (TTAB 1986) and in In re Bel Paese Sales Co., 1
USPQ2d 1233, 1235 (TTAB 1986) [foreign use is essentially of
no probative value absent other evidence showing that the
foreign use had a material or significant impact on
perception of the term by the relevant purchasing public in
the United States].
In its supplemental brief, applicant also states that
it “spends considerable amount[s] in advertising and
marketing” and that it has “used the mark considerably and
spends resources in the US and in other countries as well
building its goodwill.” These broad and vague assertions
are also not supported by any documentation.
The single attachment to applicant’s supplemental brief
is a one page search result printout from a website
belonging to Applied Biosystems. The relevant portion of
the printout is as follows:
Opposition No. 91154595
17
The term “TOF/TOF” (followed by the “tm” symbol) is used in
connection with titles of documents that can be downloaded.
However, applicant does not submit any of the actual
documents that are linked and it is thus not possible to
view whether there is any trademark use by applicant and
what, if any, relevance these linked sites have to the
proposed mark acquiring distinctiveness.
Applicant also relies heavily on its ownership of
Registration No. 2593108 for the mark MALDI TOF/TOF for an
“ion source for mass spectrometer.” Initially, we note that
the goods in the registration are different from those in
the subject application and the marks are also different.
In any case, ownership of a registration by itself does not
raise a genuine issue of material fact as a matter of law –
certainly not in this case where applicant’s proposed mark
is so highly descriptive.
Finally, applicant, in its supplemental brief, stated
that it would “submit a copy of a witness statement” or
“provide more marketing material” at the Board’s request.
Applicant does not claim that it needs more time to produce
this evidence; rather, it apparently is seeking to hedge its
position, i.e., only should the Board be ready to grant
opposer’s motion would applicant then submit evidence. Such
an “offer” is unacceptable and inappropriate. Both parties
have been accorded ample time and opportunity to submit any
Opposition No. 91154595
18
evidence they may have regarding the issues raised in
opposer’s motion for summary judgment.
In summary, opposer has demonstrated with overwhelming
evidence that “TOF/TOF” is highly descriptive of the
identified goods. Given the highly descriptive nature of
this term, we would need to see a great deal of evidence in
this case in order to find that the term has become
distinctive as an indicator of a single source for such
goods. See In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB
1997); In re Leatherman Tool Group Inc., 32 USPQ2d 1443
(TTAB 1994); In re Medical Disposables Co., 25 USPQ2d 1801
(TTAB 1992); and Flowers Industries Inc. v. Interstate
Brands Corp., 5 USPQ2d 1580 (TTAB 1987). And, in this case,
applicant has failed to submit any evidence that would raise
a genuine issue of material fact bearing on the issue of
acquired distinctiveness. We conclude, as a matter of law,
that applicant’s mark is highly descriptive and that it has
not acquired distinctiveness.
In view of the above, opposer’s motion for summary
judgment is granted. Fed. R. Civ. P. 56. Judgment is
hereby entered against applicant, the opposition is
sustained, and registration to applicant is refused.
* * *
