MagCode AG

Trademark Trial and Appeal Board

Mar 6, 2006

No. 78233868 (T.T.A.B. Mar. 6, 2006)

Hearing:
November 16, 2005 Mailed: 3/6/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MagCode AG
________

Serial No. 78233868
_______

Neal E. Friedman of Davis & Bujold for MagCode AG

David Taylor, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Seeherman, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

MagCode AG filed an application to register the mark
MAGCODE for “electrical sockets, electrical plugs,
electrical power adapters, electrical switches, electrical
cables and electrical connectors for subassemblies in
machines and vehicles, electrical switching boxes and
modules, electrical switch plates, connecting parts for
electric conductors, namely, data connection modules,
electrical connection boxes, electrical controllers,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78233868
2
electrical connectors, electrical distribution boxes and
automobile data connectors.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, as applied to the goods, is merely
descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant’s counsel and the examining attorney appeared at
an oral hearing held before the Board.
The examining attorney maintains that the matter
sought to be registered is merely descriptive because the
goods “feature magnets that will only connect and allow the
flow of electricity when they are arranged in a specified
manner” and that this arrangement “is equivalent to a
code.” (Brief, unnumbered p. 5). In support of the
refusal, the examining attorney submitted dictionary
listings for “mag”; an excerpt of an article retrieved from
the Internet concerning applicant’s goods; a press release
about applicant; an excerpt from applicant’s website; and
excerpts of the websites of third parties. Based on the

1 Application Serial No. 78233868, filed April 4, 2003, based on
an allegation of a bona fide intention to use the mark in
commerce.
Ser No. 78233868
3
evidence, the examining attorney concludes that the
proposed mark “immediately conveys to potential purchasers
that the goods feature magnets arranged in a code.”
(Brief, unnumbered p. 6).
Applicant argues that its mark is only suggestive.
Applicant contends that its goods do not include any code,
magnetic or otherwise; rather, the term “code,” as used in
applicant’s mark, is a metaphor that suggests a feature of
the goods. Applicant places significant weight on the
dictionary definition of “code” that it submitted for the
first time with its brief, of which we take judicial
notice:
Any systematic collection of the
existing laws of a country, or those
relating to a particular subject; any
system or collection of rules and
regulations; a system for communication
by telegraph, heliograph, etc., in
which long and short sounds, light
flashes, etc., are used to symbolize
the content of a message; a system used
for brevity or secrecy of
communication, in which arbitrarily
chosen words, letters, or symbols are
assigned definite meanings; a word,
letter, number or other symbol used in
a code system to mark, represent, or
identify something; a system of symbols
for representing information and the
rules for their use; to arrange in a
code; enter in a code; to translate (a
message) into a code; encode; to
translate (a program) into language
which can be communicated to the
computer.
Ser No. 78233868
4

The Random House Dictionary of the English Language (1971).
Applicant contends that its goods do not have a “code” (or
“coding”) as defined by the dictionary. According to
applicant, “there are arranged polarized magnetic keys
which are simply not, in any normal sense, a system of
information, rules, symbols or communication or the like.”
Thus, applicant concludes, “the word ‘code’ is suggestive
of applicant’s goods which, when placed, turned and/or
moved such that their magnet keys come into proper
alignment, connect and effectively lock together and permit
the flow of electricity.” (Brief, pp. 8-9).
According to applicant, the magnet key arrangement employed
by applicant’s goods has no magnetic coding, and neither of
the terms “magnetic coded” nor “magnetic coding” merely
describes the goods. Applicant goes on to contend that the
third-party materials relied upon by the examining attorney
cover goods employing actual coding, making these goods
different in nature from applicant’s goods. With respect
to applicant’s own uses of “magnetically coded” and
“magnetic coding” highlighted by the examining attorney,
applicant asserts that the evidence does not show MAGCODE
as a substitute for these other terms. In addition to the
dictionary definition set forth above, applicant submitted
Ser No. 78233868
5
a printout of the results of a search of “MAGCODE” and
variations thereof using the GOOGLE search engine.
A term is merely descriptive of goods or services,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
Ser No. 78233868
6
different contexts is not controlling. In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999); and In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. 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. See, e.g., In
re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) [SMARTTOWER
merely descriptive of commercial and industrial cooling
towers]; In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
Ser No. 78233868
7
2001) [AGENTBEANS merely descriptive of computer programs
for use in development and deployment of application
programs]; In re Putnam Publishing Co., 39 USPQ2d 2021
(TTAB 1996) [FOOD & BEVERAGE ONLINE merely descriptive of
news information services for the food processing
industry]; and In re Copytele Inc., 31 USPQ2d 1540 (TTAB
1994) [SCREEN FAX PHONE merely descriptive of facsimile
terminals employing electrophoretic displays].
In order to properly analyze the issue, it is
imperative to understand the nature of applicant’s goods.
Applicant offers the following remarks regarding its goods
(Brief, pp. 5-6):
Certain of Applicant’s goods feature or
are connectors which, when placed,
turned and/or moved into the one
correct engagement position with
respect to one another (i.e. when
adjusted so that the magnetic keys of
the components come into the correct
alignment), connect and, in effect,
lock together and permit the flow of
electricity between the components.
Such occurs only when the polarity of
multiple magnetic keys on or near the
surface of one of the connector
component corresponds, by virtue of
having placed, turned and/or moved a
component into the correct position,
with the oppositely charged polarity of
the corresponding magnetic keys of
another component.

More specifically, Applicant’s
connectors feature magnetic keys, with
each connector having at least one
Ser No. 78233868
8
magnetic key with south polarity facing
out and at least another magnetic key
with north polarity facing out. In
order to connect to a source of
electricity, a component (e.g. an
electrical plug) must be connected to a
mating or corresponding component (e.g.
an electrical socket). In order to, in
fact, connect the components, such
components must be placed, turned
and/or moved about so that polarity of
the corresponding magnetic keys (e.g.
the keys at the end of the electrical
plug and on the electrical outlet) are
aligned properly into the correct
locking position (e.g. the component
must be turned so that the north and
south poles of magnetic keys on the
electrical plug are aligned to the
correct locking position so as to face
the corresponding but oppositely
polarized magnetic keys on the
electrical outlet).

Further, the components are designed so
that their magnets interact with the
electrodes of the components in a
manner which permits the flow of
electricity (e.g. from the electrical
outlet to the electrical plug) only
when the components are actually
connected and locked together. By
contrast, when not properly aligned,
not only do the components fail to
connect and lock together but
electricity will not flow. Accidental
short circuits and electrocution are
thereby prevented even if a user places
his or her hands directly on an
electrically active outlet.

By way of analogy, Applicant’s magnetic
keys are analogous to the prongs used
on ordinary electric plugs and the
openings on corresponding outlets. In
modern electrical plugs and outlets,
one prong is normally larger than the
Ser No. 78233868
9
other and the corresponding electrical
outlet will have one opening larger
than another so that the plug can only
be inserted into the outlet in the
proper manner. Further, some plugs for
components of higher voltage will
include at least one prong facing at a
right angle to another prong of the
plug and the corresponding electrical
outlet will have openings shaped only
to accept such a plug. Where
Applicant’s goods differ in principle
is that Applicant’s magnetic keys also
include a safety feature that prevents
the flow of electricity entirely except
when the magnetic keys of corresponding
components connect and effectively
lock.

The examining attorney submitted dictionary listings
to show that “mag” is an abbreviation for the term
“magnetic.” www.acronymfinder.com; and
www.encarta.msn.com. The examining attorney also furnished
a dictionary definition of “magnetic”: “of or relating to
magnetism or magnets; having the properties of a magnet;
capable of being magnetized or attracted by a magnet;
operating by means of magnetism.” The American Heritage
Dictionary of the English Language (4th ed. 2000).
An article regarding new financing for applicant
reads, in relevant part, as follows: “The company holds
worldwide patent rights for magnetically-coded connector
systems which are the basis of a new, secure transmission
technology and outlet for electricity and data transmission
Ser No. 78233868
10
in the automotive industry.” Mergers & Acquisitions
Magazine (November 2001). Also of record is a press
release from a venture capital company announcing its
investment in applicant. The release reads, in pertinent
part, as follows: “[Applicant] has global patents for
magnetic-coded connection systems for the secure
transmission of data and electrical power.”
www.innotech.com
The record includes portions of applicant’s website
showing applicant’s use of “magnetic coding” or
“magnetically coded” in a merely descriptive manner in
connection with applicant’s goods. The website contains
the following statement: “In contrast to conventional
connectors, MagCode Systems are working with magnetically
coded flat contacts instead of pins and pin holes.” The
website goes on to read:
The basic principle of the
MagCodeTechnology is the use of the
repulsive and attractive forces of
permanent magnets in the MagCodePort as
well as in the MagCodeClip. An
arrangement of permanent magnets
provides the pressure to assume
reliable electric contacts. Different
orientations of the individual magnets
results in a coding effect that allows
closure of the connections only in the
proper way. Short circuits and
misconnections are not possible...The
flat contacts carry power only when the
moveable plate in the MagCodePort that
Ser No. 78233868
11
carries the permanent magnets is
attached by the permanent magnets in
the MagCodeClip that are arranged in
the same coding pattern as the magnets
in the MagCodePort. Other metal
objects or regular permanent magnets
cannot energize the contact. This
feature is the main characteristic of
the MagCodeTechnology.

(Emphasis in original). The website also indicates the
following: “Both PowerSystems are available as
MagCodePowerSystem 12V and MagCodePowerSystem 24V, and/or
MagCodePowerSystemPro 12V and MagCodePowerSystemPro 24V.
Due to different magnetic coding, a mix of 12 and 24V
products is impossible.”
The examining attorney also introduced several
excerpts of third-party websites with information about
various types of switches. The information includes the
following statements: “Where noncontact magnetically coded
switches are required, the Euchner CMS series is based on
coded magnets.” (www.engineeringtalk.com); “Sipha non-
contact safety switches consist of a magnetically coded
sensor and actuator pair that prevents defeat of the safety
system by simple magnets.” (www.shareholder.com); “The
Duraloc Electronic Switch is magnetically coded using
multiple magnets arranged to provide a selection of
different codes.” (www.mistura.com); and “XCSDM non-
contact safety interlock switches are designed for the same
Ser No. 78233868
12
functions as mechanical safety interlock switches. The
difference is that the non-contact safety interlock
switches are magnetically coded devices and require no
contact between the switch and coded magnet. This is a
benefit where door or guard mis-alignment is an issue, or
where the machine designer does not want to use a
mechanical device.” (www.analogsquared.com).
Based on the record before us, we find that the
applied-for mark MAGCODE, when used in connection with the
goods, merely describes a significant characteristic or
feature of them, namely, that applicant’s goods are part of
a magnetically coded connector system.
Among applicant’s goods are “electrical switches for
subassemblies in machines and vehicles.” The examining
attorney’s evidence includes information relating to
switches for machines sold by third-party manufacturers.
As shown by that evidence, these switches are described as
being “magnetically coded.” Although it would appear that
these switches are different in nature from applicant’s
switches, applicant’s identification of goods, as worded,
is broad enough to encompass all types of “electrical
switches for subassemblies in machines and vehicles,”
including the types shown in the third-party websites.
Ser No. 78233868
13
As evidenced by the articles and press release about
applicant, others have used the term “magnetically coded”
or “magnetic coding” to describe applicant’s goods. More
significantly, applicant itself has used, as referenced
above, the same words in a merely descriptive manner as
applied to its products. Contrary to applicant’s argument
that the term “code” is metaphorical rather than
descriptive, the evidence of record shows it being used in
a merely descriptive manner by applicant and third parties
in the machinery trade. Although this use of “code” may
not be in the normal sense of the dictionary meaning, the
term appears to have a recognized meaning in the trade when
used in the context of “magnetic coding” for goods of the
type sold by applicant. See In re Hunter Fan Company,
___USPQ2d___(TTAB, ser. no. 78195616, February 15,
2006)[ERGONOMIC is merely descriptive of ceiling fans].
Applicant’s goods, by their very nature, would be
bought by knowledgeable purchasers (e.g., automobile
manufacturers), and they necessarily would be aware of the
“magnetically coded” feature of applicant’s goods. The
term MAGCODE, when encountered by these purchasers,
immediately informs them, without conjecture or
speculation, that the goods are magnetically coded.
Decision: The refusal to register is affirmed.