Gildemeister Aktiengesellschaft

Trademark Trial and Appeal BoardSep 23, 2014

No. 79119089 (T.T.A.B. Sep. 23, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: September 23, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Gildemeister Aktiengesellschaft _____ Serial No. 79119089 _____ Martin W. Schiffmiller of Kirschstein Israel Schiffmiller & Pieroni PC for Gildemeister Aktiengesellschaft. Zachary Bello, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Kuhlke, Shaw and Adlin, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Gildemeister Aktiengesellschaft (“Applicant”) seeks registration on the Principal Register of the mark MILLTAP (in standard characters) for: Housings of numerically controlled machine tools; numerically controlled machine tools, in particular numerically controlled machine tools with automatic tool changers for automatically changing tools including cutting tools, milling tools, drilling tools at numerically controlled machine tools, numerically controlled milling machines, numerically controlled grinding machines, numerically controlled lathes, numerically controlled universal milling and turning machines, and numerically controlled machining centers; parts of and auxiliary equipment of numerically controlled machine tools, in Serial No. 79119089 - 2 - particular mechanical fastening devices, holding devices for machine tools, drums for machine tools, tool carrying spindles, spindle headstocks, spindle carrying carriage, mechanical tools and tool changers, tool magazines in particular for numerically controlled machine tools, mechanical handling devices, work piece pallets, manually and numerically controlled indexing devices, consisting of rotary indexing devices, indexing plates, indexing heads and rotary tables all for numerically controlled machine tools; parts and auxiliary equipment of numerically controlled machine tools, in particular control devices being parts of machines; production systems, in particular comprising of numerically controlled machine tools, industrial robots with control devices, mechanical conveying devices; assemblies being parts of machines for machine tools, in particular for milling machines and lathes; handling machines and mechanical handling devices for work pieces or tools being parts of machines; mechanical fastening devices for work pieces and tools to be used in connection with numerically controlled machine tools; machine parts or devices and machines for automatically handling tools and work pieces; parts of the aforementioned goods,” in International Class 7.1 The Trademark Examining Attorney refused registration of Applicant’s mark on the ground that MILLTAP is merely descriptive of Applicant’s goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, 1 Application Serial No. 79119089 was filed on January 20, 2012, based upon a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f). Serial No. 79119089 - 3 - function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted). See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of’ the goods or services related to the mark.”) The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Where a mark consists of multiple words, the mere combination of descriptive words does not necessarily create a nondescriptive word or phrase. In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at 1372. However, a mark comprising a combination of merely descriptive Serial No. 79119089 - 4 - components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983). The Examining Attorney asserts that Applicant’s proposed mark MILLTAP is merely descriptive because “[t]he functions or purpose of the applicant’s goods are to mill and tap. The applicant’s machines possess milling and tapping capabilities.” Ex. Att. Br. p. 9. In support of his position, the Examining Attorney submitted screen prints from various third party websites showing milling and tapping machines and parts therefor. A few examples are presented below: 2 2 www.ckpdrilling.com, attached to June 21, 2013 Office Action. Serial No. 79119089 - 5 - 3 In addition, the Examining Attorney points to excerpts from Applicant’s website wherein Applicant discusses its “milling machines”4 and an excerpt from Wikipedia noting that Applicant “is a leading manufacturer of machine tools and their controls” and its “[p]roducts include lathes, milling machines, machining centers, and mill-turns.”5 Finally, the Examining Attorney submitted screen prints from third-party websites offering machines for sale, referring to them as drill mill tap machines, and in one case as mill tap, as shown below: 3 www.precision-machining-parts.com, attached to June 21, 2013 Office Action. See also August 26, 2013 Office Action and attachments thereto. 4 http://ag.gildemeister.com, attached to August 26, 2013 Office Action. 5 http://en.wikipedia.org, attached to August 26, 2013 Office Action. Serial No. 79119089 - 6 - 6 7 8 9 6 www.techspex.com, attached to February 25, 2014 Denial of Request for Reconsideration. 7 www.taiwantrade.com, attached to February 25, 2014 Denial of Request for Reconsideration. 8 http://sinotek.en.alibaba.com, attached to February 25, 2014 Denial of Request for Reconsideration. 9 www.tradecake.com, attached to February 25, 2014 Denial of Request for Reconsideration. Serial No. 79119089 - 7 - In his Denial of the Request for Reconsideration, the Examining Attorney included another example using the term MILL TAP in connection with milling and tapping machines from the website www.machinetools.com as shown below. Applicant explains that Mori Seiki is Applicant’s “affiliated corporation and co- venturer with respect to the products at issue” and the photograph of the goods in this printout illustrates how Applicant’s “mark is clearly used as a source- identifying trademark on the goods, not as any type of descriptive term.” We observe, however, that while this may show Applicant’s intention to use MILLTAP in the manner of a trademark, the question is consumer perception and the uses by third parties of “drill mill tap” and “mill tap” for such goods weighs in favor of finding MILLTAP to be merely descriptive. Applicant argues that the Examining Attorney “applied considerably too restrictive a standard for determining when a mark may be considered distinctive Serial No. 79119089 - 8 - and registrable as opposed to descriptive [by stating ] that ‘Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable’.” App. Br. p. 6 quoting Ex. Att. Br. p. 9. We see no error in the Examining Attorney’s analysis. Applicant is correct that the standard for determining descriptiveness is “[w]hether the mark ‘immediately conveys … knowledge of the ingredients, qualities, or characteristics of the goods [or services] … with which it is used,’ or whether ‘imagination, thought, or perception is required to reach a conclusion on the nature of the goods [or services]’.” In re Gyulay, 3 USPQ2d 1009. The Examining Attorney’s reference to the discussion in Colonial Stores Inc., 157 USPQ at 384-5 (CCPA 1968) simply highlights when the combination of merely descriptive terms may result in a mark that does not “immediately convey” knowledge of the goods or services. Applicant argues that the words “tap” or “tapping” are not in the identification of goods and in any event “[t]he fact that some of the goods identified could possibly be associated with machinery that might be used in a tapping process does not render the component ‘tap’ in applicant’s mark descriptive.” App. Br. p. 9. Applicant’s identification is written broadly and could include “tapping” machine tools. The wording numerically controlled machine tools, in particular numerically controlled machine tools with automatic tool changers for automatically changing tools including cutting tools, milling tools, drilling tools at numerically controlled machine tools, numerically controlled milling machines, numerically controlled grinding machines, Serial No. 79119089 - 9 - numerically controlled lathes, numerically controlled universal milling and turning machines, and numerically controlled machining centers uses the word “including” rather than “namely” and as such does not exclude other types of machine tools. Moreover, as Applicant appears to acknowledge, even if tapping machinery is excluded from the identification, the identification includes machinery that could be used in conjunction with tapping machine tools. Applicant’s argument that there is no evidence that the compound word MILLTAP has ever been used descriptively is not persuasive. As the Examining Attorney explained “the fact that an applicant may be the first and only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive.” Ex. Att. Br. p. 13 citing Phoseon Tech., Inc., 103 USPQ2d at 1826. Moreover, the record includes an example of descriptive use of the term MILL TAP, which is effectively identical to MILLTAP. See, e.g., supra Jinan Sinotech Training Co. Ltd. offering “drill mill tap machines” for sale, and Tong-Tai Machine and Tool Co. Ltd. offering “mill-tap machines” for sale. In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (“We find, first, that the compression of the words URBAN HOUSING into a single term, URBANHOUZING, still conveys the commercial impression of two words. In other words, consumers would recognize the mark as consisting of the separate elements URBAN and HOUZING”); In re Cox Enterprises, Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL is simply a compressed version of the descriptive term THE ATL without a space between the Serial No. 79119089 - 10 - two words. Without the space, THEATL is equivalent in sound, meaning and impression to THE ATL and is equally descriptive of applicant’s goods”). Applicant argues that MILLTAP has the form and feel of a noun and because the word “tap” has numerous other meanings not related to the goods in this application, the proposed mark is not descriptive but rather requires “imaginative thinking on the part of an observer [to] suggest the possibility that the goods possess certain properties or capabilities.” App. Br. p. 14. First, we make our determination in the context of the identified goods and in this case the word MILLTAP in the context of machine tools for milling will not bring up the other “numerous meanings” of tap. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012). It will point directly without cogitation to the meaning that Applicant’s machines possess milling and tapping capabilities. Applicant argues that we must resolve doubt in its favor; however, we have no such doubt. As noted above, we must consider the context in which the mark is used in connection with those goods and understand the significance that the mark would have to the average purchaser of the goods or services in the marketplace. See Chamber of Commerce of the U.S., 102 USPQ2d at 1219. In the context of machine tools, purchased by consumers knowledgeable about such equipment, there is no question that MILLTAP describes a significant characteristic and function of the machine tools, namely, that they possess milling and tapping capabilities. In addition, the mark MILLTAP does not create any double entendre or incongruity in the context of the respective goods and services. We find this Serial No. 79119089 - 11 - proposed mark very different from the mark PLYBOO in the case upon which Applicant relies. Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999). In that case, the Board found that the opposer had not satisfied its burden to prove that the mark PLYBOO, a combination of the words plywood and bamboo, for “bamboo laminate flooring and plywood made of bamboo” is merely descriptive. Here, the record clearly supports the Examining Attorney’s position that the wording MILL and TAP retain their mere descriptive significance in the combination mark MILLTAP. The evidence here establishes and we accordingly find that MILLTAP immediately describes without the exercise of imagination significant functions of the identified machine tools. Decision: The refusal to register Applicant’s mark MILLTAP is affirmed.