Deutsche Star GmbH

Trademark Trial and Appeal Board

Jan 8, 1998

No. 74508101 (T.T.A.B. Jan. 8, 1998)

Hearing: Paper No. 16
May 20, 1997 RLS/TLW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 8,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Deutsche Star GmbH
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Serial No. 74/508,101
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Joe Jest of Anderson Kill Olick, P.C. for Deutsche Star
GmbH.
Thomas W. Wellington, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Deutsche Star GmbH (applicant), a limited liability
company of the Federal Republic of Germany, has appealed
from the final refusal of the Trademark Examining Attorney
to register the mark RAIL SEAL for cover strips for linear
bearing rails.1 The Examining Attorney has refused
registration under Section 2(e)(1) of the Act, 15 USC
1052(e)(1), arguing that applicant’s mark is merely

1 Application Serial No. 74/508,101, filed April 1, 1994, based
upon applicant’s bona fide intention to use the mark in commerce
under Section 1(b) of the Act, 15 USC 1051(b).
Ser No. 74/508,101
2
descriptive of its goods. Applicant and the Examining
Attorney have submitted briefs and an oral hearing was held.
The Examining Attorney argues that the term RAIL SEAL
is merely descriptive of a feature of applicant’s goods.
According to the Examining Attorney, the word “rail” is
descriptive as the goods are cover strips for linear bearing
rails. Because a “seal” is “anything that tightly or
completely closes or secures a thing, as closures or
fasteners for doors and railroad cars …,” and because the
cover strip provides such a closure or seal for the linear
bearing rails, the mark as a whole is merely descriptive,
according to the Examining Attorney.
The Examining Attorney points to excerpts from patents
made of record during the prosecution of this case in which
the terms “rail” and “seal” are used in close proximity in
the linear motion rolling guide unit industry to describe
components. For example, the Examining Attorney refers to
the excerpt from Patent No. 5,109,720:
…seal plate covers the opening at the
upper portion of the guide rail. The
seal plate may be made of magnetic
material, and magnets may be provided on
the upper ends of both the side walls of
the guide rail so as to insure close
contact between the seal plate and the
guide rail.
The Examining Attorney refers to other statements made in
two other patents.
Ser No. 74/508,101
3
In a conventional linear motion rolling
guide unit, when a slider slides on a
track rail, the seal between the slider
and the track rail is provided by end
seals mounted at both ends of the slider
and an under seal mounted to the
underside of the slider. (Patent
5,306,089)
… when the slider is assembled on the
guide rail, the side seal is naturally
adapted to the surfaces of the guide
rail and the seal lips of the side seal
satisfactorily contact the surfaces of
the guide rail to be sealed… (Patent
5,149,204)
The Examining Attorney argues that applicant’s goods
are a metal seal plate being attached or enclosing the guide
rail. Therefore, according to the Examining Attorney, the
cover strips attached to guide rails act as “seal plates”
which enclose the top portion of the guide rail.
Applicant’s goods, in effect, “seal the rail” and are seals
for linear rail guides.
Applicant, on the other hand, argues that its cover
strips do not function as seals. Further, applicant argues
that the evidence of record shows that any seals are mounted
on the sliders for conventional linear motion rolling guide
units and not on the track rails. Applicant maintains that
the seals mounted on the sliders do not perform the same
function as applicant’s cover strips mounted on bearing
rails. Its cover strips do not, according to applicant,
substitute for the seal of a slider in the rolling guide
unit. Therefore, it requires some imagination to conclude
Ser No. 74/508,101
4
that RAIL SEAL describes cover strips or a feature thereof.
At most, the term is suggestive of goods which may be
mounted on a track rail, applicant argues.
Upon careful review of this record and the arguments of
the attorneys, we believe that the record is insufficient to
demonstrate that the asserted mark is merely descriptive of
applicant’s cover strips for linear bearing rails. While it
is true that the excerpts noted by the Examining Attorney
use the words “seal” and “rail” in close proximity, show
that “seal plates” may be attached to guide rails in the
linear motion rolling guide unit industry and that bearing
rails may be sealed by the use of end seals incorporated
into sliders for rolling guide units, we believe that this
application presents a case where applicant has combined two
terms which have some descriptive significance in the field
but that the composite is registrable because the unitary
term created has a non-descriptive, albeit suggestive,
meaning with respect to applicant’s particular goods. The
only instance we could find in which the term “rail seal”
appears (excerpt from Patent 5,203,502) deals with
improvements in rail insulating pads used to insulate rails
from rail ties. Although applicant’s cover strips may, in a
manner of speaking, act very generally as a type of “seal”
for bearing rails, the evidence is simply insufficient to
persuade us that the combination RAIL SEAL is merely
Ser No. 74/508,101
5
descriptive of applicant’s cover strips. While the term may
have more immediate descriptive significance with respect to
such goods as sliders, which may have seals mounted thereon,
a cover strip mounted on a bearing rail is simply a
different product. If we had any doubt on the question of
mere descriptiveness, that doubt, in accordance with
precedent, should be resolved in favor of publication. See
In re Merrill Lynch, Pierce Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987).
Decision: The refusal of registration is reversed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark
Trial and Appeal Board