Cortec Corp.

Trademark Trial and Appeal Board

Sep 30, 1999

No. 75159195 (T.T.A.B. Sep. 30, 1999)

Paper No. 13
DEB
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB 9/30/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Cortec Corporation
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Serial No. 75/159,195
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Orrin M. Haugen of Haugen Law Firm PLLP for Cortec Corporation.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Cortec Corporation has filed an application for
registration of the mark “MIGRATING CORROSION INHIBITORS” for a
“chemical preparation for use in reduction of corrosion of steel
reinforcing members present in concrete structures.”1 In
response to the initial Office action, applicant claimed that
its applied-for mark has acquired distinctiveness under Section
2(f) of the Trademark Act.
Serial No. 75/159,195
2
The Trademark Examining Attorney issued a final refusal to
register based upon Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that the applied-for term is
generic for such products. In the alternative, the Trademark
Examining Attorney held that if this term is not generic, then
applicant’s mark is so highly descriptive that applicant’s claim
of acquired distinctiveness pursuant to Section 2(f) of the
Trademark Act is insufficient to permit registration.
Applicant has appealed the final refusal to register.
Briefs have been filed but applicant did not request an oral
hearing. We affirm the refusal to register.
The issues on appeal are whether the term “Migrating
Corrosion Inhibitors” is generic for applicant's goods and,
alternatively, if such designation is not regarded as generic,
whether it has acquired distinctiveness. As to the first issue,
by maintaining his position that this matter is a generic
designation, the Trademark Examining Attorney has the burden of
proving genericness by “clear evidence" thereof. See, In re
Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987). Evidence of the relevant
public’s perception of a term may be acquired from any competent
source, including newspapers, magazines, dictionaries, catalogs

1 Serial No. 75/159,195, filed September 3, 1996, alleging use
since May 1991.
Serial No. 75/159,195
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and other publications. In re Leatherman Tool Group Inc., 32
USPQ2d 1443, 1449 (TTAB 1994), citing to In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed.
Cir. 1985). Under the test articulated by our reviewing court
in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d. 987, 228 USPQ 528 (Fed. Cir. 1986):
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered … understood by the
relevant public primarily to refer to that genus
of goods or services?
We turn to a review of the evidence in the file. First,
the front cover of a company brochure accompanying applicant’s
response on September 5, 1997 is titled as follows:
MCI®
Migrating Corrosion Inhibitors
for Concrete Structures
Then, text within the brochure includes the following excerpts
(emphasis supplied):
A revolutionary new product line from Cortec can
be used to rehabilitate concrete structures which
are deteriorating due to corrosion or can be
incorporated into the building process,
significantly increasing the life span of the
Serial No. 75/159,195
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structure. Catastrophic structural failures have
resulted in injuries, deaths and severe financial
losses in recent years due to the devastating
effects of corrosion. With Cortec MCI® products
for concrete, structural integrity is preserved,
vulnerable structures can now be rehabilitated,
and environmental concerns are alleviated. The
unique feature of MCI® is that even if not in
direct contact with metal, the inhibitor will
migrate a considerable distance through concrete
and seek out the ferrous member and protect it…
Cortec MCI, however, can be easily added to
concrete for rehabilitation and will not delay
construction or increase construction costs other
than the small cost of the material. Unlike
standard inorganic inhibitors, Cortec MCI®s do
not have to come in contact with the reinforcing
steel upon application in order to seek out the
steel and protect it…
Comparison of CORTEC MCI® to other inhibitors:
… Migrates through concrete to steel for
corrosion protection. [p.3]
MCI® 2000 … A migratory corrosion inhibitor
admixture to protect rebar in concrete… [p.4]
Applicant’s own generic uses of this terminology
throughout its brochure, especially its generic use of
“Migrating Corrosion Inhibitors” on the cover of the
brochure, are highly persuasive evidence of the genericness
of the matter sought to be registered. In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
We turn next to the LEXIS/NEXIS entries. Four of the five
LEXIS/NEXIS entries the Trademark Examining Attorney placed into
the record appear to refer to applicant’s corrosion inhibiting
Serial No. 75/159,195
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product. We have reproduced below two of these brief excerpts
(emphasis supplied):
“… A migrating corrosion inhibitor, called the
MCI 2020, offers a way to cut rebar corrosion in
existing concrete structures…” (Engineering News-
Record, Vol. 238, No. 21, p.122, May 26, 1997).
“A water-based, environmentally friendly and
biodegradable corrosion inhibitor is used as an
admixture for concrete. It combines both contact
and migrating corrosion inhibiting protection to
ferrous metals in concrete structures such as
reinforcing bars, galvanized rebar, steel mesh
and aluminum…” (Engineering News-Record, Vol.
234, No. 14, p. 30, April 10 1995).
These references indicate that “migrating corrosion
inhibitor” is an appropriate term to refer to this product.
We acknowledge that the number of LEXIS/NEXIS® excerpts
submitted by the Trademark Examining Attorney is relatively
small. However, we believe that this can be explained by the
fact that applicant’s chemical preparation appears to be a new
product. Applicant states in its brochure that this is “[a]
revolutionary new product line from Cortec…” Hence, to the
extent that the phrase sought to be registered herein is for a
“revolutionary,” or even a “newly created product category,” we
would not expect much to have been written about it by the time
the evidentiary record in this case closed. That is, there has
simply not been sufficient time for evidence of generic usage by
others to emerge. cf. In re The American Fertility Society,
Serial No. 75/159,195
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Case 98-1540, ____ F.3d ____, 51 USPQ2d 1832 (Fed. Cir. 1999);
and In re Ferrero S.p.A., 24 USPQ2d 1155 (TTAB 1992).
The Trademark Examining Attorney has also furnished two
entries from a chemical dictionary which define the terms
“migrates”2 and “inhibitor.”3 The words are defined,
respectively, in pertinent part as “movement of a substance from
one material to another…” and “[a] compound (usually organic)
that retards or stops undesirable chemical reaction, such as
corrosion….”
After reviewing all of the evidence of record, and upon
careful consideration of the arguments made by applicant and by
the Trademark Examining Attorney, we conclude that the term
“Migrating Corrosion Inhibitors” would be perceived as a generic
term for applicant’s identified goods.
In order to render a complete opinion, we next turn to
applicant’s claim of acquired distinctiveness, assuming for this
discussion that the applied-for term is merely descriptive,
rather than generic. It is applicant’s burden to establish a

2 “migration. Movement of a substance from one material to another
with which it is in intimate contact…” …”
Hawleys Condensed Chemical Dictionary, 10th Edition, p. 695, (Van
Nostrand Reinhold 1981).
3 “inhibitor. (1) A compound (usually organic) that retards or
stops undesirable chemical reaction, such as corrosion,
oxidation, or polymerization… Such substances are sometimes
called negative catalysts…”
Hawleys Condensed Chemical Dictionary, 12th Edition, p. 635, (Van
Nostrand Reinhold 1993).
Serial No. 75/159,195
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prima facie case of acquired distinctiveness. Further, as a
“mark’s descriptiveness increases,” the amount of proof required
to demonstrate acquired distinctiveness likewise increases.
Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988). In support of its claim
of acquired distinctiveness, applicant has submitted only a
declaration of five years of substantially exclusive and
continuous use of the mark in interstate commerce. In light of
the very highly descriptive nature of the designation “migrating
corrosion inhibitors,” such an allegation of five years use is
insufficient to show acquired distinctiveness.
Decision: The refusal to register is affirmed.
E. J. Seeherman
D. E. Bucher
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board