EOS GmbH Electro Optical Systems

Trademark Trial and Appeal Board

Oct 22, 2004

No. 75722993 (T.T.A.B. Oct. 22, 2004)

Hearing: Mailed:
September 15, 2004 October 22, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re EOS GmbH Electro Optical Systems
________
Serial No. 75722993
_______
George W. Neuner of Edwards & Angell, LLP for EOS GmbH Electro
Optical Systems.
Eugenia K. Martin, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Chapman, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by EOS GmbH Electro Optical
Systems to register the mark E-MANUFACTURING for the following
goods and services, as amended:1
machines in the nature of rapid prototyping apparatus
for making parts, prototypes, models, molds, tooling and
other kinds of three-dimensional objects from plastic,
metal, ceramic, sand-based composite or multiple
materials for industrial machine parts, automotive
1 Application Serial No. 75722993, filed June 7, 1999, based on a
foreign registration under Section 44(e) of the Trademark Act and
subsequently amended to assert, in addition, a bona fide intention to
use the mark in commerce under Section 1(b) of the Act.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 75722993
2
parts, aviation, space technology, consumer goods,
electrical and electronic components, scientific and
artistic design or representations, architecture,
jewelry, human skeletal components and other kinds of
three-dimensional objects, in International Class 7;
optical apparatus and instruments, namely, lasers,
deflection mirrors, beam expanders, scanners, plane field
lenses and shutters for use in rapid prototyping and
manufacturing apparatus and systems, in particular, laser
sintering apparatus; data processing equipment, namely,
laser sintering apparatus; and computer programs for use in
rapid prototyping and manufacturing apparatus and systems,
in International Class 9;
training services, namely, providing an engineer to
introduce and explain the properties, features and operating
of rapid prototyping apparatus, in particular, laser
sintering apparatus, in International Class 41; and
engineering services for others, namely providing
engineering and consulting services relating to the
manufacture of prototypes, models, molds and parts for
others by rapid prototyping processes; computer programming
services for others, namely, programming for rapid
prototyping apparatus and systems, in International Class
42.
The trademark examining attorney refused registration on the
ground that the mark is merely descriptive of the goods and
services under Section 2(e)(1) of the Trademark Act.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs. An oral
hearing was held.
The examining attorney argues that E-MANUFACTURING is merely
descriptive of applicant's "rapid prototyping equipment and
services." Specifically, the examining attorney contends that
the "e" prefix refers to the computerized processes used in these
Serial No. 75722993
3
goods and services, and that the word "manufacturing" refers to
the purpose of the goods and services, that is, the manufacturing
of prototypes and models using the rapid prototyping or laser
sintering process. The examining attorney maintains that when
the "e" prefix is combined with "manufacturing" the phrase
describes "a new method or style of manufacturing, namely one
that incorporates computers into the manufacturing process."
Final Action, p. 2.
In support of her position, the examining attorney has made
of record a dictionary definition of the prefix "e" as
"...attached to anything that has moved from the physical world
to its electronic alternative, such as e-mail, e-commerce,
e-cash, e-cards, etc."2 The examining attorney has also
submitted excerpted articles retrieved from the Nexis database
which, according to the examining attorney, show that rapid
prototyping is a process whereby rapid prototyping machines work
with computers to design and produce the parts, models and other
goods manufactured by these machines; that applicant's particular
form of rapid prototyping machines, namely laser sintering
machines, also use computers to function; and that the term
"e-manufacturing" describes an assortment of electronically
controlled manufacturing processes in general.
2 Computer Desktop Encyclopedia © 1981-2003.
Serial No. 75722993
4
Applicant, on the other hand, maintains that E-MANUFACTURING
is only suggestive of its "rapid prototyping apparatus and
equipment and related services." While acknowledging that its
rapid prototyping process makes use of the computer, applicant
contends that incorporating a computer into manufacturing does
not describe "a 'new method or style of manufacturing that
incorporates computers into the manufacturing process'" and "does
not immediately connote E-MANUFACTURING." Brief, pp. 5-6.
Applicant also contends that the excerpted articles submitted by
the examining attorney do not show use of "e-manufacturing" in
relation to rapid prototyping equipment and services, and further
that it is not clear how the term "e-manufacturing" is defined at
all by the use in those excerpts. Applicant maintains that the
evidence does not demonstrate that the mark immediately conveys
information as to applicant's goods or services with any degree
of particularity. While admitting that the prefix "e" has come
to have a meaning describing goods or services "delivered
electronically via a global computer network, i.e., the
Internet," (Brief, p. 5) applicant argues that E-MANUFACTURING,
when considered in its entirety in relation to applicant's goods
and services, requires some imagination, thought and perception
to understand the nature of the goods and services.
To support its contention that E-MANUFACTURING is not
descriptive, applicant submitted a number of third-party
Serial No. 75722993
5
registrations of marks combining the prefix "e" with what
applicant refers to as "an arguably borderline descriptive term."
Applicant maintains that "all are registered on the Principal
Register; presumably, because in their entirety they have been
deemed to be suggestive." Brief, p. 10. Applicant concludes
from this evidence that the mere inclusion of the prefix "e" is
not sufficient to show that the mark E-MANUFACTURING in its
entirety is merely descriptive of the goods and services.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of a
quality, characteristic, function, feature, purpose or use of the
goods and services with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The question of whether a particular term is merely
descriptive must be determined not in a vacuum or on the basis of
speculation, but in relation to the goods and services for which
registration is sought. See In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986). Thus, it is first necessary to
understand the nature of applicant's goods and the function they
perform.
A prototype, such as that produced by applicant's equipment
and apparatus, is the initial design model that companies use to
evaluate or test products. See excerpt from Tulsa World (March
4, 2002). Such models can consist of essentially "anything from
Serial No. 75722993
6
machine valves to human jaws." See excerpt from Oregonian
(February 15, 1999). For example, in the medical field, rapid
prototyping can produce human body parts for use as implants and
for rehearsing complicated surgeries, such as cleft palate
reconstructions and cutting out tumors. See excerpt from The
Dayton Daily News (July 2, 1996).
The conventional method of creating a prototype is a
time-consuming process which involves cutting away at a solid
object using manually operated machining equipment in a machine
shop. See, e.g., excerpts from Milwaukee Journal Sentinel
(January 2, 2001) and Grand Rapids Business Journal (September
28, 1998). In contrast, "rapid prototyping" is "a method of
quickly creating mechanical components...from a computer-based
drawing ... "3 using computer-controlled machinery where the
prototype is built layer by layer. See, e.g., excerpt from
Capital Times (February 3, 2000). Applicant is providing the
apparatus that performs this "rapid prototyping" function. The
apparatus allows applicant's customers, e.g., engineers and
designers of products in a variety of fields and disciplines
including the medical, automotive, industrial and arts fields, to
3 Microsoft Encarta College Dictionary (2001). The Board may take
judicial notice of dictionary definitions. University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 75722993
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quickly produce three-dimensional test models of their product
designs.
In a rapid prototyping system, first, the computer creates a
virtual 3-D model for the product (i.e., a CAD file). See
excerpts from Rochester Business Journal (April 25 1997 and Idaho
Falls Post Register (August 24, 1998). As explained in those
excerpts, the virtual 3-D model is then sliced into very thin
virtual layers. The CAD file for the layered design is then
loaded into a computer that is hooked up to a computer-controlled
laser. The laser is used to heat or fuse a material, such as
powdered metal or liquid plastic, thereby converting the powder
or liquid into a solid layer, perhaps 1/4000th of an inch thick,
that matches the CAD design layer. See excerpt from Capital
Times (February 3, 2000). In this way, the laser forms the
object, layer by layer, from the bottom up. Id.
Applicant's particular type of computer-controlled laser
apparatus uses a process called "sintering" to create the layers.
"Sintering" basically involves compacting the metal or other such
powder and heating it to the point where the particles forming
the powder fuse to form the solid layer.4
The excerpted stories below describe the computer-controlled
nature of the laser apparatus and the layer building process.
4 See, e.g., The Columbia Encyclopedia (6th Ed. 2001).
Serial No. 75722993
8
Some of the excerpts refer to "stereolithography" which, like
laser sintering, is a type of computer-controlled laser process
involved in rapid prototyping.
Rapid prototyping uses computer-controlled lasers to make
solid objects from liquid polymers and powdered steel. The
processes allow manufacturers to check the form and fit of
new parts before investing in expensive molds or dies.
Dayton Daily News (April 4, 1999).
Inside Staub's shop..., computer-generated drawings, lasers
and ultraviolet-sensitive liquid resins are used to produce
hand-held models of all shapes. The process is called
stereolithography, a way of rapid prototyping and tooling.
It works like this: The computer drawing tells the laser
where to focus inside a dunk-tank of liquid resin. The
resin solidifies where ever [sic] it's touched by the beam.
The laser "carves" a solid from the liquid. Dayton Daily
News (October 1, 1997).
The company, which has 120 employees, is an international
supplier of rapid prototyping systems. Its systems use a
computer-driven laser to fuse various powders together into
three-dimensional prototypes and stamping tools. Austin
American-Statesman (May 22, 1996).
"...removed some of the art out of it and made it a science.
Being an old tool-and-die maker, I am sort of sorry to see
so much of it. It takes it out of the die maker's hand and
the computer handles it." Rapid prototyping in the form of
stereolithography or similar technology has increased the
rapidity of creating new parts—and the machines to create
those parts. Grand Rapids Business Journal (September 28,
1998).
DTM Corp. was founded in the late 1980s to commercialize the
invention of computer-controlled laser sintering made at the
University of Texas at Austin. Austin American-Statesman
(November 6, 1999).
Adkins used a computer program to design the teeny robots.
Their bodies were produced directly from his computer drafts
through Sandia's "stereolithography" manufacturing process.
Through rapid prototyping, it manufactured the robot bodies
microlayer by microlayer, using a laser to instantly melt
Serial No. 75722993
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and apply the material in a precise, computer-driven
procedure. Albuquerque Tribune (New Mexico) (January 31,
2001).
It is clear from the Nexis evidence that rapid prototyping
involves a highly automated computer-controlled system. It is
equally clear, as shown by the Nexis excerpts below, that this
computer-controlled system is used in "manufacturing" the
prototypes. (Emphasis added.)
Rapid prototyping is a manufacturing process that uses
computer-aided design and a layered fabrication system to
robotically build parts. Introduced in the late 1980s,
rapid prototyping permits freeform manufacturing and
eliminates the need for jugs and molds. Parts can be
completed in a matter of hours... Dayton Business Reporter
(March 3, 1997).
Wicker said the biomedical lab's researchers begin with
medical imaging data such as an ultrasound or a CAT scan, to
generate three-dimensional geometric computer models. The
computer models, combined with the lab's rapid prototyping
technologies, are used to manufacture three-dimensional
replicas of clogged aortas, frail hearts and other damaged
organs. El Paso Times (February 16, 2002).
One of the many projects NASA has commissioned in recent
years was the feasibility of supplying space orbiters with a
rapid-prototyping device to manufacture spare parts during
flights. Finance & Commerce (Minneapolis, MN) (February 4,
2003).
...Stratasys Inc., Eden Prairie, said it has an agreement to
co-develop a rapid-prototyping process for use in
manufacturing parts for Fuji's reusable pocket cameras.
Saint Paul Pioneer Press (Minnesota) (April 10, 2001 City
Edition).
Adkins used a computer program to design the teeny robots.
Their bodies were produced directly from his computer drafts
through Sandia's "stereolithography" manufacturing process.
Through rapid prototyping, it manufactured the robot bodies
microlayer by microlayer, using a laser to instantly melt
Serial No. 75722993
10
and apply the material in a precise, computer-driven
procedure. Albuquerque Tribune (New Mexico) (January 31,
2001).
The engineering research center will focus on rapid
prototype manufacturing, an area where the university
already holds a number of patents. Austin Business Journal
(July 2, 1999).
With this background in mind, we turn to a consideration of
the meaning of E-MANUFACTURING in relation to applicant's goods
and services. The Board takes judicial notice of the definition
of the prefix "e" as "Short for electronic. A prefix indicating
that a word refers to the computer-based version of some
traditionally nonelectronic term, as e-mail, e-commerce, and e-
money."5
In this case, applicant has combined the "e" prefix with the
traditionally nonelectronic term "manufacturing." As mentioned
earlier, traditional methods of manufacturing prototypes involve
manually operated machining equipment. The manufacture of these
products has now moved into electronically or computer-controlled
processes and devices, i.e., rapid prototyping. The contrast
between these two manufacturing methods, conventional
manufacturing and manufacturing by means of rapid prototyping,
can be seen in the following excerpts:
At the Huntington center, employees of local manufacturers
learn how to use computerized routers and rapid prototype
5 Microsoft Computer Dictionary (5th ed. 2002).
Serial No. 75722993
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machines as well as traditional manufacturing machines.
..."Manufacturing jobs don't have to be dirty. They can be
high-tech. And high-tech means higher pay." The Herald-
Dispatch (Huntington, WV) (September 20, 2000).
"...removed some of the art out of it and made it a science.
Being an old tool-and-die maker, I am sort of sorry to see
so much of it. It takes it out of the die maker's hand and
the computer handles it." Grand Rapids Business Journal
(September 28, 1998).
As the term rapid prototyping suggests, the machines also
can create the parts much more quickly than it would take a
machine shop to produce a similar item. Typical turn-around
time for company requests is three to four days, ...
Milwaukee Journal Sentinel (January 2, 2001 Final Edition).
Computerized rapid prototyping systems can create a three-
dimensional model of a car part in a fraction of the time it
takes to do it manually. Newhouse News Service (April 18,
2000).
"So we did a feasibility study. We looked at both
traditional manufacturing and rapid prototyping, and we
found we can do that with today's technology. Chicago
Tribune (December 9, 2001).
Thus, we find that the term E-MANUFACTURING when applied to
applicant’s goods and services, immediately and without
conjecture, describes a significant function of rapid prototyping
apparatus that enables the computer-controlled manufacture of
prototypes. The term also describes the subject matter of
applicant's training and consulting services in the use of such
apparatus.
It is true, as applicant points out, that the uses of "e-
manufacturing" in the excerpted stories submitted by the
examining attorney are either unclear or seem to relate more to
Serial No. 75722993
12
the business activities of a manufacturer (e.g., connecting plant
floors to the Internet so that customers can trace and control
goods as they move through supply chains or management of plant
equipment and inventory) rather than the manufacturing process
itself. However, it is not necessary that a term be in common
usage in the particular field in order for it to be merely
descriptive. See In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018 (TTAB 1983). Moreover, a term may have more
than one descriptive meaning in a field. Merely because there
are other descriptive meanings of "e-manufacturing" does not
render the term registrable for applicant's goods and services.
In addition, the fact that applicant may be the first to use "e-
manufacturing" in this particular context is not dispositive
where, as here, the term unquestionably projects a merely
descriptive connotation. See In re MBAssociates, 180 USPQ 338
(TTAB 1973).
The third-party registrations submitted by applicant are of
little probative value in determining whether the mark herein is
registrable. To begin with, many of these marks are registered
on the Supplemental Register, not on the Principal Register as
applicant contends. In other registrations, the register on
which the marks issued cannot be determined because that portion
of the TESS printout has not been supplied. We also note that
several of the registrations on the Principal Register contain
Serial No. 75722993
13
either a disclaimer of the "e" portion of the mark or the entire
"e" phrase.
In any event, it is well settled that each case must be
decided on its own merits, based on the particular mark, the
particular goods and services, and the particular record in each
application. In re Scholastic Testing Services, Inc., 196 USPQ
517 (TTAB 1977). We note, for example, that in a number of the
registrations, the combination of "e" with another term results
in a mark which is, in its entirety, a nondescriptive play on
words, ("DOG-E CARDS"; "CIN-E-MONEY"; "E-CYCLE-PEDIA" for online
motorcycle parts) or an otherwise unitary term that simply has no
direct meaning in relation to the identified goods or services.
Even to the extent the marks in these prior registrations have
some characteristics similar to applicant’s application, as our
primary reviewing court stated in In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), "the PTO’s
allowance of such prior registrations does not bind the Board or
this court."
The record in this case demonstrates that the combination of
the prefix "e" and "manufacturing" results in a term that is, in
its entirety, descriptive of applicant's computer-controlled
systems for manufacturing of prototypes and the associated
training and consulting services in the use of these systems. It
is clear that the product engineers or designers who would be
Serial No. 75722993
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purchasing applicant's rapid prototyping products and services
would readily understand the descriptive meaning of
E-MANUFACTURING in relation to those products and services.
Decision: The refusal to register is affirmed as to each of
the four classes of goods and services.