General Kinematics Corp.

Trademark Trial and Appeal Board

Apr 12, 1999

No. 74366705 (T.T.A.B. Apr. 12, 1999)

Paper No. 32
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 4/12/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re General Kinematics Corporation
________
Serial No. 74/366,705
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F. William McLaughlin of Wood, Phillips, VanSanten, Clark &
Mortimer for General Kinematics Corporation
David Stine, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney)
_______
Before Simms, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On March 10, 1993, General Kinematics Corporation
filed an intent-to-use application to register on the
Principal Register the mark FINGER SCREEN for “vibrating
screen separators for use in material classification” in
International Class 7.
In the first Office action (dated June 15, 1993), the
Examining Attorney indicated the original identification of
Ser. No. 74366705
2
goods (“vibrating material classifying apparatus”) was
indefinite, required a disclaimer of the word “screen”, and
inquired whether the word “finger” had any significance in
the relevant trade or industry. In response, applicant
submitted an amendment to the identification of goods, a
new drawing amending the mark to FINGER-SCREEN, and
answering the Examining Attorney’s question as follows: “As
for the inquiry concerning the word ‘finger,’ Applicant is
unaware of any special significance attributable to this
word when used in a trademark sense in combination with the
word ‘screen.’” The Examining Attorney accepted the new
drawing and the amendment to the identification of goods,
deleted the Office entry of applicant’s disclaimer of the
word “screen”, and allowed the application for publication,
which occurred on April 12, 1994.
On June 30, 1994 the Assistant Commissioner for
Trademarks granted a letter of protest regarding the
alleged genericness of the applied-for mark, and restored
jurisdiction to the Examining Attorney. In an Office
action dated August 9, 1994, the Examining Attorney refused
registration as merely descriptive under Section 2(e)(1) of
the Trademark Act, and stated that “the proposed mark
appears to be generic” making it incapable of identifying
applicant’s goods, and noting that therefore the Examining
Ser. No. 74366705
3
Attorney could not recommend an amendment under Section
2(f) or to the Supplemental Register.
Applicant ultimately filed a complete and proper
amendment to allege use,1 and a proper amendment to the
Supplemental Register, both of which were accepted and
entered by the Examining Attorney in an Office action dated
January 2, 1996. On that date, the Examining Attorney also
refused registration on the basis that the applied-for mark
is generic, and is incapable of identifying applicant’s
goods and distinguishing them from those of others under
Section 23 of the Trademark Act, 15 U.S.C. §1091. This
refusal was made final in an Office action of July 3, 1997,
from which applicant has appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm.
The Examining Attorney submitted (1) photocopies of
the five patents which the party filing the letter of
protest sent to this Office as evidence that the term
“finger screen” is generic for the involved goods, and (2)
a printout from Lexis/Nexis of two additional patents (one
in “Full” and one in “Kwic” format) which also utilize the
term “finger screen” in a generic manner.

1 The claimed dates of first use and first use in commerce are
1992.
Ser. No. 74366705
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The Examining Attorney contends that the term “finger
screen” is generic of a general type of separator, which
may be incorporated into a variety of different machines
for different purposes; that is, that applicant’s goods may
be referred to as “vibrating finger screen separators” to
distinguish them from other generic types of vibrating
separators which utilize other separating means. The
Examining Attorney argues that based on the ordinary
meaning of the component words, as well as applicant’s
generic use of the term in its own patent (Patent No.
5,108,589), and generic uses of the term in patents owned
by others, the term “finger screen” is not capable of
functioning as a trademark for applicant’s goods.
Applicant contends that the Examining Attorney has
submitted no evidence to show that the relevant public
understands the term “finger screen” to refer to
applicant’s goods, namely, “a large machine including a
trough between a material input end and a discharge end.”
(Applicant’s brief, p. 4). Applicant succinctly stated its
position as follows (Brief, p. 7):
Applicant’s point is that, while “finger screen”
might arguably be descriptive for a separating
element which is a component part of a vibrating
screen separator for use in material
classification, the term “finger screen” is not
generic with respect to the vibrating screen
Ser. No. 74366705
5
separator itself. The element is simply an
ingredient of the product at issue.”
Applicant further argues that reference to wording in
patents (including applicant’s own patent) cannot be relied
on to show that a term is generic because the writers of
such material may through ignorance, carelessness or
indifference use a trademark in a generic sense.
The test for determining whether a designation is
generic, as applied to the goods set forth in the
application, turns upon how the term is perceived by the
relevant public; and this perception is the primary
consideration in a determination of genericness. See
Loglan Institute Inc. v. Logical language Group, Inc., 962
F.2d 1038, 22 USPQ2d 1531 (Fed. Cir. 1992). Determining
whether an alleged mark is generic involves a two step
analysis: (1) What is the genus of goods or services in
question?, and (2) Is the term sought to be registered
understood by the relevant public primarily to refer to
that genus of goods or services?. See H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); and In
re Web Communications, 49 USPQ2d 1478 (TTAB 1998).
Evidence of the public’s understanding of a particular term
may be obtained from any competent source, including
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listings in dictionaries, trade journals, newspapers, and
other publications. See In re Merrill, Lynch, Pierce,
Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987).
Turning first to the ordinary meaning of the two words
separately, the terms are defined as follows in The
American Heritage Dictionary: (1) “finger” is “n. 6.
Machinery. Any small projecting machine part”; and (2)
“screen” is “n. 3a. A course sieve used for sifting out
fine particles, as of sand, gravel, or coal” and “v. 3a. to
separate or sift out by means of a sieve or screen.”2
Turning then to applicant’s Patent No. 5,108,589,
applicant utilizes the term “finger screen” generically
throughout this patent in referring to its separating
means. The following are some excerpts from applicant’s
patent:
“The apparatus also includes a separator having a
plurality of longitudinally spaced finger screen sections
between the input end and the discharge end...”;
“The finger screen sections each have a backbone
extending from side to side...”;
“The finger screen devices also each have the forward
ends of the fingers thereof overlapping the next forwardly
adjacent finger screen device...”;
“With this arrangement, the material is conveyed along
the trough and over successive ones of the finger screen

2 The Board takes judicial notice of the dictionary meaning of
the words “finger” and “screen”. See 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).
Ser. No. 74366705
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sections with particles up to the preselected size falling
through the finger screen as the material moves...”;
“Accordingly, the present invention is used in a
material separating apparatus for separating particles of
different sizes from a material. ... The separating means
includes a plurality of longitudinally spaced finger screen
means disposed between the input end and the discharge
end...”;
“Each of the finger screen means has forward ends of
its fingers overlapping the next forwardly adjacent finger
screen means...”; and
“...Fig. 4 is a side elevational view illustrating the
a (sic) pair of longitudinally adjacent finger screen
sections, Fig. 5 is a top plan view of a single finger
screen section, Fig. 6 is a perspective view illustrating
the relationship of a plurality of finger screen sections.”
In addition, the record includes several patents owned
by others which include generic uses of the term “finger
screen,” such as the following:
...they [the sand screens] may comprise so-called
“finger screens”. The finger screens are emplaced in the
respective ports 91 and have many small apertures
penetrating logitudinally of the screens and laterally
through the ports 91. These finger screens are ordinarily
formed of ceramic or other material that is resistant to
corrosion and erosion, or abrasion; yet are foraminous, or
permeable, to the flow of fluids therethrough. Patent No.
3,865,188 (method and apparatus for selectively isolating a
zone of subterranean formation adjacent to a well);
Fluid entering through line 70 is passed through a
finger screen 72 to trap dirt and debris particles which
might otherwise foul the jets. Patent No. 4,114,206
(automatic swimming pool cleaning system); and
Any short vine segments and peanuts which were not
separated previously, fall through third and fourth
cylinders 7100 and 9100 onto a third vine slide 7101
disposed beneath the third and fourth separating cylinders
and over second finger screen 2410. Second finger screen
2410 is identical in construction to first finger screen
2400 and allows separated peanuts, as well as some small
foreign material to pass therethrough... Patent No.
Ser. No. 74366705
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5,205,114 (peanut combine and straw separator system for
such a combine).
In a recent decision, the Board noted that, in making
a determination as to whether a term is generic with
reference to the involved goods, consideration must be
given to the fact that a product may fall not only into a
broad category of goods, but also a narrower category
within the broad category. See In re Central Sprinkler
Co., 49 USPQ2d 1194 (TTAB 1998).
Applicant’s involved goods are identified as
“vibrating screen separators for use in classifying
materials”; and the evidence of record shows that a “finger
screen” is one type of screen separator. That is, a
“finger screen” is a particular type of separator within
the broader category of all screen separators. The broad
category of goods into which applicant’s goods fall is
screen separators (or vibrating screen separators); the
narrower category of applicant’s goods is “finger screen”
separators.
In the patents included in the record before the
Board, the term “finger screen” is used generically to
refer to a device which separates materials of differing
sizes, or separates solids from liquids. In addition, the
dictionary definitions of these words show their common
Ser. No. 74366705
9
ordinary meaning in the context of machinery. See
Remington Products Inc. v. North American Philips Corp.,
892 F.2d 1576, 13 USPQ2d 1444 (Fed. Cir. 1990).
It has been shown in the record before us that the
term “finger-screen” is generic for a component which may
be utilized in a variety of machines to separate or
classify materials, and would be understood by the relevant
public as referring to that type of component.
Accordingly, we find the applied-for mark, FINGER-SCREEN,
to be generic and incapable of distinguishing applicant’s
separator from those of others. See Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) (MASSFLO held
generic for “flowmeters for the measurement of flow of mass
of fluids”); Central Sprinkler, supra (ATTIC held generic
for “automatic sprinklers for fire protection”); and In re
Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB
1991) (PERMA PRESS held generic for “soil and stain
removers for permanent press fabrics”).
We are not persuaded by applicant’s argument that
because “finger-screen” may not be the name of the whole
machine itself, that therefore, the term cannot be found
generic for vibrating screen separators as applicant
identified its goods in the application. Applicant’s
identification does not encompass the machine as a whole.
Ser. No. 74366705
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Moreover, as the Examining Attorney stated in his brief on
appeal, “applicant’s goods clearly may be generically
identified as finger screen separators, to distinguish them
from other types of material classifier screens.” (Brief,
p. 3). That is, applicant’s goods are generically
identified in the identification of goods as a “screen”
separator, and throughout applicant’s own patent the
terminology “finger screen” is used to generically identify
the salient feature of this particular type of screen
separator.
Applicant also argues, based on the case of Formica
Corporation v. The Newnan Corporation, 149 USPQ 585 (TTAB
1966), that patents cannot be relied upon because the
writers of things such as patent specifications could use a
trademark in a generic sense out of ignorance or
carelessness or indifference.3 Applicant’s argument is not
persuasive. First, applicant’s patent indicates that it
was prepared by an intellectual property law firm.
Presumably, applicant’s own counsel would not be ignorant,

3 The Board’s specific comment from the Formica case, is as
follows: “It is a matter of common knowledge, however, that
writers of advertising copy, patent specifications, novels and
other matter, either through ignorance, carelessness or
indifference frequently use a trademark in a generic sense, i.e.
to denote a type or class of an article rather than the source
thereof.”
Ser. No. 74366705
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careless or indifferent and use applicant’s trademark in a
generic sense in applicant’s patent application.
Second, in the Formica case, the applicant had
introduced numerous printed materials, including
advertisements by retailers, advertisements by custom
fabricators, patents issued by this Office, a novel, and a
dictionary definition, all showing apparent misuse of
opposer’s mark FORMICA in lower case letters, and without
any indication that the term was opposer’s trademark. This
is to be distinguished from the ex parte case now before
us, where there is no evidence of general carelessness of
use of the term throughout advertisements, dictionaries,
and even novels. Rather, the term “finger-screen” is used
in a generic sense throughout applicant’s own patent, as
well as those of others, demonstrating that the terms have
ordinary meanings to the relevant public.
Decision: The refusal to register on the Supplemental
Register is affirmed.
R. L. Simms
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board