Industrial Communications and Electronics, Inc.

Trademark Trial and Appeal Board

Apr 19, 1999

No. 75111023 (T.T.A.B. Apr. 19, 1999)

Paper No. 12
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 19,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Industrial Communications and
Electronics, Inc.
________
Serial No. 75/111,023
_______
Robert A. Vanderhye of Nixon & Vanderhye for Industrial
Communications and Electronics, Inc.
Jason Turner, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hairston, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Industrial Communications and Electronics, Inc. has
filed an application to register the term INDUSTRIAL
COMMUNICATIONS (COMMUNICATIONS is disclaimed) on the
Supplemental Register for services which were subsequently
Ser. No. 75/111,023
2
identified as “communication tower construction and
maintenance services.”1
Registration has been finally refused under Section 23
of the Trademark Act, 15 U.S.C. §1091, on the basis that
INDUSTRIAL COMMUNICATIONS is incapable of distinguishing
applicant’s services because, according to the Examining
Attorney, the term identifies the genus of applicant’s
services.
Applicant has appealed the final refusal to register
on the Supplemental Register. Briefs have been filed, but
no oral hearing was requested.
In support of the refusal to register, the Examining
Attorney has made of record, inter alia, dictionary
definitions taken from Webster’s II New Riverside
University Dictionary (1994):
industrial: Of, relating to, or derived from
industry.
industry: The commercial production and sale
of goods and services.
communication: A system for sending and
receiving messages, as by mail, telephone,
or television.

1 Application Serial No. 75/111,023 filed May 28, 1996, alleging
a date of first use and first use in commerce of around January
1, 1995.
Ser. No. 75/111,023
3
Also, the Examining Attorney submitted excerpts of
stories taken from the NEXIS database which, according to
the Examining Attorney, “reveal the generic nature of the
term [INDUSTRIAL COMMUNICATIONS] as applied to applicant’s
services.” (Final Office Action) Some of these excerpts
show use of the term “industrial communications” and others
show use of the words “communication towers” in connection
with the word “industry.”2 Several of the excerpts are set
forth below:
. . . Fiber Optic Cable Business Unit to
focus on specialty fiber optic cable for
the hazardous environment, wireless and
industrial communications industries. This
unit specializes in gas-blocked and hermetic-
armor cables which use a welded, corrugated
copper tube to protect the . . .
(Nuclear Waste News, July 20, 1995);
Scientific and industrial communications
equipment developer Dynatech Corp. plans to
acquire Itronix Corp., a subsidiary of Telxon
Corp., in a cash transaction. . . . Itronix
manufactures mobile field-service computing
and communication devices such as ruggedized
computers with wireless communications
capabilities.
(Electronic News, December 23, 1996);
The Defense Department has invested hundreds
of billions of dollars in equipment that
works in the agency’s currently assigned
frequencies. Then there are the cordless

2 We note that a number of the excerpts were taken from wire
services. Inasmuch as it is uncertain whether those stories were
ever published and, therefore, were exposed to the purchasing
public, they are of limited value in deciding the issue in this
appeal. See, e.g., In re Bel Pease Sales Co., 1 USPQ2d 1233,
1235 (TTAB 1986).
Ser. No. 75/111,023
4
phones, baby monitors, industrial
communications systems and other devices
crowded elsewhere on the spectrum.
(Chicago Tribune, September 1, 1996);
While divisions between public and private
interests have slowed the construction of
wireless communications towers across the
country, industry leaders say cooperation
between both parties in San Antonio . . .
(San Antonio Business Journal, October
31, 1997);
Despite the complaints from several
communications industry representatives,
the commission introduced an ordinance
regulating communication towers.
(The Orlando Sentinel, July 18, 1997);
and
City and county officials gathered
Friday at the Sheraton in Lakeland to
spend a day listening to advice about
what they can do when their moratoriums
on communications towers expire. At
issue is how to accommodate the cellular
communications industry, which needs
increased capacity . . .
(The Ledger, Lakeland, Florida, March
8, 1887).
The test for registrability of a service mark on the
Supplemental Register is whether the matter sought to be
registered is capable of identifying applicant’s services
and distinguishing them from like services rendered by
others. If the designation is understood by the relevant
purchasing public as referring to the category or genus of
services, the designation is not serving as a source
identifier for the services and distinguishing them from
Ser. No. 75/111,023
5
like services rendered by others. If the designation is
incapable of performing this function, it cannot be
registered on the Supplemental Register. See In re Marvin
Ginn Corp. v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed Cir. 1986).
In this case, the uses of “industrial communications”
made of record by the Examining Attorney show the term used
to refer to equipment or systems. However, applicant does
not here seek to register the term for equipment or
systems, but rather for communication tower construction
and maintenance services. Similarly, while according to
the Examining Attorney, the dictionary definitions show
that the term can be interpreted as a commercial system for
sending and receiving messages, registration of the term is
not sought for such a system. Further, while some of the
NEXIS excerpts show that communication towers themselves
are owned and/or used by various industrial firms, such
evidence is not probative of whether the term INDUSTRIAL
COMMUNICATIONS is generic for the services involved in this
case. In our view, this evidence simply does not make out
a sufficient case for holding INDUSTRIAL COMMUNICATIONS
generic for communication tower construction and
maintenance services. We note that there is no evidence
that the term INDUSTRIAL COMMUNICATIONS has been used by
Ser. No. 75/111,023
6
other entities to render the type of services rendered by
applicant. While not determinative of the registrability
of a term on the Supplemental Register, the absence of such
evidence is a factor to be considered.3
We should add that this is not a case where the term
sought to be registered identifies the central
characteristic of the services. See, e.g., In re Bonni
Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) [“LA
LINGERIE” held incapable of distinguishing applicant’s
retail store services in the field of lingerie]; and In re
Wickerware, Inc., 227 USPQ 970 (TTAB 1985) [“WICKERWARE”
held incapable of distinguishing applicant’s mail-order and
distributorship services]. In those cases, the matter
sought to be registered identified the product featured in
the offer of services.
Finally, even if doubts remained on the question of
capability, any doubt on the issue would have to be
resolved in favor of the applicant. In re Municipal Market
Data, Inc., 229 USPQ 472 (TTAB 1986).

3 We should point out that in reaching our decision herein, we
did not consider a canceled third-party registration
(Registration No. 1,522,581 for the mark INDUSTRIAL
COMMUNICATIONS for newsletters). This registration was listed in
a search report submitted by applicant. As correctly noted by
the Examining Attorney, the submission of a search report is not
the proper way to make third-party registrations of record.
Ser. No. 75/111,023
7
Decision: The refusal to register on the Supplemental
Register is reversed.
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Bucher, Administrative Trademark Judge, Dissenting:
Inasmuch as I do not share the doubts of the majority
of this panel on the question of registrability, I would
affirm the refusal to register on the Supplemental
Register. I conclude that “industrial communications” is
generic and thus incapable of distinguishing applicant’s
services from the services of others. The Trademark
Examining Attorney has, in my opinion, sustained the
Trademark Examining Operation’s rather heavy burden of
proving genericness through an evidentiary record.
Applicant argues that the category of services at
issue herein is merely the “construction and maintenance of
communications towers,” and that the record contains no
Ser. No. 75/111,023
8
evidence that the relevant public refers to this category
of services as “industrial communications.” Applicant
contends that even if the term “industrial communications”
might be found to be generic for wireless communication
services, the term is not generic for the erection of
towers.
According to applicant,
the Examining Attorney… fails to recognize
cases [having fact] situations closer to the
present than the cases cited in the
Examining Attorney's appeal brief…[such as]
Ex parte Heatube Corp., 109 USPQ 423 (Com.
1956) (HEATUBE registerable for tubular
heating elements) and Ex parte Mixdorff
Krein Mfg. Co., 115 USPQ 362 (Com. 1957)
(LONGTONG registerable for long barbecue
forks); Bellbrook Dairies, Inc. v. Hawthorn-
Mellody Dairy, Inc., 253 F.2d 431, 433, 117
USPQ 213, 214 (CCPA 1958), ("Vita-Slim"
registerable for skim milk), and Ex parte
Club Aluminum Products Co., 105 USPQ 44
(Com. 1955) (Cook-n-Look registerable for
transparent glass covers for cooking
utensils).
Applicant’s Reply Brief, p. 3.
Finally, applicant argues that the refusal to
register its mark is inconsistent with the Office’s
past practice4 concerning an identical mark for related
goods.

4 See discussion at pp. 19 – 21, infra.
Ser. No. 75/111,023
9
On the other hand, the Examining Attorney maintains
that the matter sought to be registered (“Industrial
Communications”) is generic -- naming a central
characteristic of applicant’s services.
In support of the refusal, the Examining Attorney
submitted dictionary listings of the terms “industrial” and
“communications,” as well as excerpts from printed
publications retrieved from the NEXIS database.
Furthermore, he points to applicant’s informational
brochures entitled “Wireless Solutions … To Run Your
Business Smarter.” This glossy marketing brochure touts
the fact that applicant is “leading the way in wireless.”
As the majority points out in citing to H. Marvin Ginn
Corp. v. International Ass’n of Fire Chiefs, 782 F.2d 987,
990, 228 USPQ 528, 530 (Fed. Cir. 1986), determining
whether an alleged mark is generic involves a sometimes
difficult, two-step factual analysis – (1) Identify the
genus of the services at issue; and (2) Decide whether the
term sought to be registered is understood by the relevant
public primarily to refer to that genus of services?
With respect to demonstrating the generic nature of an
alleged mark, the Office has the burden of proving this
refusal with “clear evidence” of genericness. See In re
Ser. No. 75/111,023
10
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 and other publications. In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443, 1449 (TTAB
1994), citing In re Northland Aluminum Products, Inc., 777
F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985).
Before beginning any legal analysis, we should be
clear factually exactly what type of service applicant
provides. Applicant is clearly competing in the field of
wireless communications targeted to business customers.
From applicant’s brochure (specimens of record), we learn
that at least in the New England states, applicant is
considered to be a leader in wireless communications
directed to industrial concerns. The original recital
covered the whole gamut of wireless, telecommunications
services targeted to industry.5 However, after the initial
Office action, where the Trademark Examining Attorney
refused to register this matter on the Supplemental

5 “Wireless communication services, mobile radio and
electronic repair services, communication tower construction and
maintenance, communications systems and equipment sales, and
tower and antenna site marketing and sales.” Application papers
executed on May 22, 1996.
Ser. No. 75/111,023
11
Register based upon genericness, the recital of services
was gradually whittled down during the prosecution of this
application, to the current “communication tower
construction and maintenance services.”
It is clear from the specimens of record that
“wireless communications” refers to communications using
radio signals, taking place between two users, when one or
both use a portable, unwired receiver/transmitter. Base
stations receive and transmit radio signals sent through an
antenna. The antenna(s) is (are) mounted on a structure
tall enough to send and receive these radio signals without
interference. A metal tower is generally the structure
that holds the antennas.
As noted above, in spite of the broad initial recital,
what now remains in the recital is merely the installation
and servicing of these large industrial towers.6 Such
towers come in vastly different sizes depending upon their
precise use and location. Presumably some of applicant’s
towers will be single-user monopoles; others will be large,
self-supporting towers; and the largest type would be guyed

6 Since May 1996, even a closely related service like
“antennae site marketing” was among the array of applicant’s
services dropped out of this application.
Ser. No. 75/111,023
12
towers.7 From a brief review of the technology or a quick
review of applicant’s brochure, it is clear that these cell
sites and their attendant towers are an integral component
of wireless technology. In short, without the towers,
wireless communications as we know it would be most
impractical, if not impossible.
The first step of our analysis under Marvin Ginn,
supra, is to answer the question of ‘what is the genus of
the services at issue?’ Based upon the original recital
and the brochure, one might choose the broader business in
which applicant is engaged: wireless communications; two-
way radio communications; telecommunications systems for
the use of large companies; etc. Applicant seems to agree
that the phrase “industrial communications” might well be
incapable of achieving trademark significance for the
broader recital, e.g., their entire wireless/two-way
telecommunications systems marketed exclusively to
commercial enterprises.8 Rather, applicant’s argument on
appeal seems to be that the Trademark Examining Attorney
has not demonstrated that anyone else in the more narrow

7 E.g., similar to that pictured in applicant’s specimen of
record, ranging all the way from 500’ up to 1500’ tall.
8 “It is irrelevant whether ‘Industrial Communications’ is
generic with respect to two-way radio communications …” Reply
Brief, p. 2.
Ser. No. 75/111,023
13
business of ‘erecting and maintaining radio towers’ is
using the words “industrial communications” as a source
indicator.
The predecessor to our current reviewing court took
dictionary definitions and proceeded to apply common sense
in Cummins Engine Company, Inc. v. Continental Motors
Corporation, 149 USPQ 559 (CCPA 1966) [“TURBODIESEL” found
generic for internal combustion engines and engine parts]:
In our view, the definitions alone indicate
that "turbodiesel" is a word which by its
nature will convey a specific and correct
meaning which is such that it cannot become
a trademark as a result even of origination
and first use. (citation omitted). The term
"turbodiesel," as we see it, is a natural
composite form for a class of engines into
which appellant's engines fall. We
recognize that the engines to which the term
has been applied by appellant are not
turbines plus diesels, but diesel engines
having exhaust driven turbine superchargers.
However, it is not required that the name
precisely describe and define the goods in
order to be incapable of registration under
section 23. We think "turbodiesel," to be
naturally and adequately nominative of
engines having exhaust driven turbine
superchargers.
Id. at 561.
If indeed applicant is involved in the business of
“industrial communications,” it would be disingenuous of
this Board to agree with applicant that shaving off key
Ser. No. 75/111,023
14
components of this service changes the genus. Query, for
example, in the Cummins Engine case, supra, if applicant
had changed its goods from “internal combustion engines and
parts thereof” to a narrower identification -- to one
specific engine part, for example, “injection pumps for
diesel engines” -- would the result have been to find that
this very same term (“Turbodiesel”) was suddenly capable of
achieving trademark significance?9
A plausible argument has been made that the broad
general category of services involved herein is wireless
communications services. However, a service may be in more
than one category10 and here applicant argues that its
currently recited services fall only within the more narrow
category of erecting industrial communications towers. To
name the genus of the services here at issue in somewhat
more detail, it may be “communication tower construction
and maintenance services,” “erecting and maintaining
wireless communications towers,” “erecting and maintaining
two-way radio communications towers,” “erecting and

9 The correct answer to this hypothetical question becomes
even more obvious if the whittling down was done in the context
of an on-going dispute over genericness of the alleged mark.
10 See In re Central Sprinkler Co., 49 USPQ2d (TTAB 1998)
[ATTIC is generic for "automatic sprinklers for fire
protection"]; and In re Web Communications, 49 USPQ2d 1478, (TTAB
1998) ["WEB COMMUNICATIONS" is generic for company providing
Ser. No. 75/111,023
15
maintaining business communications towers,” “erecting and
maintaining telecommunications towers for the use of large
companies,” or even “erecting and maintaining industrial
communications towers.”
The second step is answering the question of ‘whether
the term sought to be registered is understood by the
relevant public primarily to refer to that genus of goods
or services?’ H. Marvin Ginn Corp., at 530. The critical
issue in genericness cases such as this one is whether
members of the relevant public primarily use or understand
the term sought to be registered to refer to the genus
(category or class) of goods in question.
It behooves the Board to look more specifically at the
evidence of record, which must control our determination
herein. The record includes dictionary definitions, LEXIS-
NEXIS evidence and the applicant’s own specimens of record.
The majority opinion sets out the dictionary
definitions of record for the words “industrial”11 and

consulting services to businesses seeking to establish sites on
the Internet, or World Wide Web].
11 To clarify my understanding of what industrial means in
this alleged mark, I would construe “industrial” in this
application to refer to the class of customers of applicant, and
not applicant itself, which may well own many of the
communications towers used by its customers. Compare majority’s
treatment of “industrial” from NEXIS evidence, p. 5.
Ser. No. 75/111,023
16
“communications,” as placed into the record by the
Trademark Examining Attorney. When these two familiar
words are joined into a single phrase, neither applicant
nor the majority has claimed this union creates a unique
combination, having some novel meaning other than that
which English usage would ascribe to those individual
words. In fact, upon melding the individual dictionary
definitions, one would assume immediately that this service
involves electronic communications by commercial
enterprises.
Upon encountering the term “industrial communications”
for communications towers, the relevant public surely would
understand the term primarily to refer to towers for
industrial communications, that is, industrial
communications towers. Accordingly, I find that the term
“industrial communications” would be readily understood by
the relevant public as necessarily including this narrower
category of services. Remington Products Inc. v. North
American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1449
(Fed. Cir. 1990)…
The Examining Attorney also introduced numerous
excerpts from printed publications retrieved from the NEXIS
database. The excerpts show, for example, that “…Nextel
Ser. No. 75/111,023
17
has 140 communications towers in metro Atlanta and is
focusing on local service industries…” (The Atlanta Journal
and Constitution, June 5, 1997). The record contains
references to "industrial communications" to refer to the
exact field occupied by applicant. In fact, the record is
replete with numerous excerpts from printed publications
that reporters and third-party competitors in the trade use
the terms "industrial telecommunications” services in
pager, radio and telephone services directed to large
companies. The NEXIS publications show that the term is a
commonly used term and that people in business are familiar
with the term. The “relevant public” herein would
specifically comprise those in the large companies
responsible for procuring wireless communications. Such
individuals would readily understand “industrial
communications” to refer to the entire system, or to any
single, integral service or component of the system –-
including the construction and maintenance of radio
communication towers. In fact, query whether common sense
alone does not lead one to conclude that the phrase
“industrial communications” is so commonly used in everyday
parlance that it is most unlikely purchasers could ever
recognize it as a trademark in the context in which
applicant is using it?
Ser. No. 75/111,023
18
Under the type of analysis in which the Court engaged
in the case of In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987) [the term SCREENWIPE is
generic for pre-moistened, anti-static cloth for cleaning
computer and television screens], the term “industrial
communications” for erecting communications towers for
industrial clients must also be found to be generic. The
fact that applicant has chosen not to include the term
“tower" in the specific mark sought to be registered herein
should not lead to the registrability of the phrase
“Industrial Communications” standing alone. The simple
fact is that the term “Industrial Communications,” when
applied to erecting communications towers for industrial
clients, “immediately and unequivocally describes the
purpose, function and nature of the [services].” In re
Gould Paper Corp., supra at 1112.
We note that applicant has taken the position that the
Trademark Examining Attorney’s refusal to register its mark
is inconsistent with the Office’s past practice concerning
an identical mark for related goods – specifically under
now-cancelled federal Reg. No. 1,522,581, for newsletters.
First, as pointed out by the Trademark Examining
Attorney, this registration should not be considered on the
Ser. No. 75/111,023
19
merits for procedural reasons. The Trademark Examining
Attorney objected to applicant’s submission of a search
report in his Office action of August 2, 1997 and again in
the appeal brief (p. 4). He correctly stated that
applicant’s submission of evidence of these registrations
was not in the proper form. Applicant did finally provided
soft copies of the third-party registrations with its reply
brief.12
The Trademark Examining Attorney is correct that
in order to make third-party registrations of record,
soft copies of the registrations or photocopies of the
appropriate U.S. Patent and Trademark Office
electronic printouts should be submitted prior to the
time of the appeal. See Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230 (TTAB 1992). Hence, the copies of
registrations submitted at the time of its appeal
brief are rejected as untimely. Applicant clearly did
not comply with the established rule that the
evidentiary record in an application must be complete
prior to the filing of the notice of appeal, See, 37
CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d

12 Of course, the issue was never whether applicant’s earlier
claims about what the document(s) contained were factually
correct.
Ser. No. 75/111,023
20
1531, 1532 (TTAB 1994), and the Trademark Examining
Attorney objected in a timely manner and then refused
to treat it of record.
Nonetheless, I find applicant’s point to be
irrelevant. Even if I were to consider applicant’s
cancelled registration, the fact that applicant had in
the past obtained a registration of the term
“Industrial Communications” for a “newsletter” is not
persuasive of a different result in the instant case.
Especially since the relevant goods were newsletters,
the fact that the term “Industrial Communications” was
once registered for such use is of no moment herein:
The chief difficulty in categorizing
publications comes about because "unlike
most goods whose appearance will convey
their nature, periodicals must depend
principally on their titles to convey their
character. Courts have been reluctant to
find a magazine title generic, perhaps in
part because the magazines in such cases
were not literally the class title
designated but were about that class." CES
Publishing Corp. v. St. Regis Publications,
Inc., 531 F.2d 11, 188 USPQ 612, 615 (2nd
Cir. 1975); see also Technical Publishing
Company v. Lebhar-Friedman, Inc., 729 F.2d
1136, 222 USPQ 839, 841 (7th Cir. 1984)
[recognizing that since magazine titles are
primary means of conveying contents of
magazines, "many magazine titles fall near
the line between generic and descriptive
marks"].
Ser. No. 75/111,023
21
In re Waverly Inc., 27 USPQ2d 1620, 1622 (TTAB
1993).
Furthermore, while each case must be decided on
its own facts, and uniform treatment under the
Trademark Act is highly desirable, the task of the
Board herein is to determine, based upon the record
before us, whether applicant’s mark is registrable.
In reaching my decision, I cannot overlook how the
relevant public will encounter the matter sought to be
registered within applicant’s own printed materials.
Applicant’s specimen of record, which is a glossy,
marketing brochure, says that “Choosing the right wireless
communications system can save your company time and
money…,” “…hundreds of companies throughout New England
have chosen two-way communications systems from
[applicant],” “Since 1974, [applicant] has been helping
businesses use advanced wireless communications solutions
to run smarter…,” “Find out how a wireless system from
[applicant] can help your business run more effectively”
[emphasis supplied].
At least to my eyes, given these uses of the words
“business,” “company,” et al, in the context of addressing
customers of applicant’s wireless/two-way communications
Ser. No. 75/111,023
22
systems, “Industrial Communications” is much more in the
nature of a type of service than of a source identifier.
Furthermore, the literature uses the generic term
“communications” in its ordinary dictionary sense. This is
totally consistent with the fact that applicant voluntarily
disclaimed the word “communications” in these application
papers for a registration on the Supplemental Register.
In another case also involving goods (rather than
services), Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628
(TTAB 1998), this Board found the word "Massflo" to be
generic for flowmeters for measuring flow of mass of fluid,
reasoning as follows:
In this case, because the term MASSFLO
directly names the most important or central
aspect or purpose of applicant's goods, that
is that the meters are mass flowmeters
(meters that measure mass flow), this term
is generic and should be freely available
for use by competitors.
The above evidence and analysis should make it clear
that “industrial communications” is generic, and should be
freely available for use by applicant’s competitors --
whether they consider themselves to be in the wireless
communications business or merely the business of erecting
communications towers. See In re Northland Aluminum
Products, Inc., supra [BUNDT for coffee cake held generic];
In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970)
Ser. No. 75/111,023
23
[CUSTOMBLENDED for gasoline held generic because category of
gasoline was blended personally for the motorist]; In re
Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA
1969) [PASTEURIZED for face cream held generic]; In re
Preformed Line Products Co., 323 F.2d 1007, 139 USPQ 271
(CCPA 1963) [PREFORMED for preformed electrical equipment
held generic]; Roselux Chemical Co., Inc. v. Parsons
Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (CCPA 1962)
[SUDSY for aqua ammonia containing a synthetic detergent
held generic]; Servo Corp. of America v. Servo-Tek Products
Co., 289 F.2d 955, 129 USPQ 352 (CCPA 1961) [SERVO for
servomechanisms held generic]; J. Kohnstam, Ltd. v. Louis
Mark & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960) [MATCHBOX
for toy vehicles held generic because that category of toy
cars was sold in matchbox-sized boxes]; In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991) [MULTI-VIS for
multiple viscosity motor oil held generic]; In re Reckitt &
Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991)
[PERMA PRESS for soil and stain removers held generic]; In
re National Patent Development Corp., 231 USPQ 823 (TTAB
1986) [ULTRA PURE for biological interferons for medical use
held generic]; Fluid Energy Processing & Equipment Co. v.
Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) [FLUID ENERGY for
hydraulic/pneumatic equipment held generic]; Copperweld
Ser. No. 75/111,023
24
Corp. v. Arcair Co., 200 USPQ 470 (TTAB 1978) [COPPERCLAD
for copper-coated carbon electrodes held generic]; In re
Demos, 172 USPQ 408 (TTAB 1971) [CHAMPAGNE for salad
dressing held unregistrable]; and Ethicon, Inc. v.
Deknatel, Inc., 183 USPQ 503 (TTAB 1963) [COTTONY for
sutures held generic].
I agree with the Examining Attorney that if an
industrial purchasing agent were seeking to find someone to
erect a communications tower, it would be reasonable for
him/her to refer to this product as an “industrial
communications” tower. That applicant may have been the
first company to adopt this matter in this context, or is
currently the only entity using the term “industrial
communications” (with the word “towers” implied), does not
undercut the fact that the term “industrial
communications” tower is understood to be a type of tower.
See Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196
USPQ 566, 572 (TTAB 1977).
Hence, in spite of the heavy burden placed on the
Trademark Examining Attorney to demonstrate genericness, I
believe that given the facts contained within the record of
this application, our prevailing case law clearly supports
the common sense position taken by the Trademark Examining
Ser. No. 75/111,023
25
Attorney. Accordingly, I disagree with the conclusion of
my colleagues, I would find that the asserted mark is
generic, and hence not registrable on the Supplemental
Register.
D. E. Bucher
Administrative Trademark
Judge, Trademark Trial and
Appeal Board