Mathis Instruments Ltd.

Trademark Trial and Appeal Board

Jul 10, 2002

No. 75872488 (T.T.A.B. Jul. 10, 2002)

Mailed: July 10, 2002
Paper No. 21
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Mathis Instruments Ltd.
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Serial No. 75/872,488
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Lawrence E. Laubscher, Jr. of Laubscher & Laubscher for
Mathis Instruments Ltd.
David M. Abrahams, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
____________
Before Hanak, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Mathis Instruments Ltd. has filed an application to
register the mark TC PROBE for an “electronic instrument for
testing and measuring thermal properties of material
comprised of a circuitry unit, a sensor unit, and related
software sold as a unit.”1 In response to the first office

1 Serial No. 75/872,488, in International Class 9, filed December 16,
1999, based on use of the mark in commerce, alleging first use and use
in commerce as of December 23, 1996. The application included a claim
of priority, under Section 44(d) of the Trademark Act, based on a
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/872,488
2
action, applicant entered a disclaimer of “probe” apart from
the mark as a whole.
The trademark examining attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive of its goods.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The examining attorney contends that TC is a commonly
recognized acronym for “thermal conductivity”; that “probe”
merely identifies the particular testing equipment, as
evidenced by applicant’s disclaimer thereof; and that TC
PROBE merely describes the nature of a probe used to measure
thermal conductivity.
The examining attorney submitted a page, dated May 4,
2000, from an Internet web site, www.acronymfinder.com, that
states there are 68 definitions for “TC” and showing one of
the definitions to be “Thermal Conductivity.” We take
judicial notice of the definition from volume 1 of the
Acronyms, Initialisms & Abbreviations Dictionary (22nd ed.,
1997), which lists “Thermal Conductivity” as a definition of

Canadian application filed on November 17, 1999. However, in
applicant’s response of September 25, 2000, applicant deleted the
priority claim.
Serial No. 75/872,488
3
“TC” along with numerous other unrelated definitions of
“TC.”
The examining attorney points to applicant’s product
fact sheet, entitled TC Probe™: Thermal Conductivity
Instrument, which was submitted by applicant and includes
the following statements:
The TC Probe™ Thermal Conductivity Instrument is
designed to measure thermal conductivities of
solid materials in the range of 0.001 to 10.0 W/m
K.
…
The TC Probe™ calculates the value of thermal
conductivity (k) given known values of heat
capacity … and density ….
Also, the examining attorney submitted an excerpt about
this product from applicant’s Internet web site,
www.mathis.unb.ca/tcprobe, dated December 4, 2000, which
includes the following statement:
The TC Probe™ measures in a non-destructive
manner, the thermal conductivity and other thermal
properties of materials such as foam, insulation,
polymers, ceramics, glass, silicone and natural
fibers. “TC” stands for thermal conductivity, a
thermal property desired by those looking at
thermal properties and heat transfer. (emphasis
in original.)
Applicant expressly does not dispute that the term “TC” as
it is used in the mark means “thermal conductivity.”
However, applicant argues that “TC” is not a common
abbreviation for thermal conductivity; that in the relevant
field of science, the common abbreviation for the term
thermal conductivity is the Greek letter kappa (κ) or the
Serial No. 75/872,488
4
Greek letter lambda (λ); that these abbreviations (κ and λ)
are “generally recognizable to the average purchaser of
applicant’s goods”; and that the evidence does not support
the examining attorney’s position, especially in view of the
numerous definitions submitted for “TC.”2
In support of its position, applicant submitted e-mails
from four scientists in the relevant field regarding the
accepted abbreviations for “thermal conductivity.”3 These
e-mails were in response to a request from applicant’s
president that states the following, in part:
We are in the process of obtaining a trademark
registration for “TC Probe.” The trademark office
has stated that “TC” is a commonly used
abbreviation of thermal conductivity. We are
appealing this.
What I am in need of is:
1 – a reply to this e-mail saying that k and
lambda are the only nomenclature terms you have
seen for thermal conductivity (if there are
others, include them, but it would be news to me).
The responses include the following statements:
“I know of no usage of the term “TC” as related to
thermal conductivity in any literature or
standards with which I have been involved or
reviewed.” [John Mumaw, Chair of the American
Standards and Test Methods (ASTM) C16 Subcommittee
which standardizes thermal conductivity methods.]

2 In its brief, applicant requests that, should it lose its appeal, the
application be remanded to assert a claim of acquired distinctiveness.
Raising the possibility of a Section 2(f) claim after appeal is untimely
and will not be considered. Further, once an appeal is concluded, the
Board has no jurisdiction to entertain such a request.
3 This evidence was submitted with applicant’s request for
reconsideration. We are disappointed that the examining attorney
responded to this evidence with what appears to be a form rejection
without addressing the merits of the evidence submitted.
Serial No. 75/872,488
5
“The notation TC is never used in mathematical
texts …. I am seeing quite a number of
manuscripts every year as a referee on thermal
transport properties for five or six international
… journals and TC is not used as a general
notation for thermal conductivity in any written
text.” [Silas Gustafsson, inventor and
distributor of thermal conductivity equipment from
Sweden.]
“For thermal conductivity, we typically use either
k, K or lambda as nomenclature apart from the
phrase ‘thermal conductivity.’ As far as I know,
this is never abbreviated in any way….” [Wilfried
Rombauts, Board member of the Vacuum Insulation
Society and employee of Huntsman polyurethanes, a
world supplier of insulation, of which thermal
conductivity (R factor) is the major property.]
“I have seen k, the Greek letter lambda, the Greek
letter kappa (lower case) and the capital K used
as the nomenclature terms used to represent
thermal conductivity. I have never seen TC used
as an abbreviation of thermal conductivity except
in cases where the authors were ignorant of the
subject matter to which they were referring.”
[Keith Kociba, editor of the proceedings of the
North American Thermal Analysis Society (NATAS)
and an employee of Lubrizol.]
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). 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 quality,
Serial No. 75/872,488
6
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
Further, with respect to abbreviations, we refer to the
following statement of the predecessor court of our primary
reviewing court in Modern Optics, Incorporated v. The Univis
Lens Company, 110 USPQ 293, 295 (CCPA 1956) [In an
opposition brought on the ground of descriptiveness, the
court found insufficient evidence that “CV,” an abbreviation
for “continuous vision,” was merely descriptive, regardless
of whether or not “continuous vision” was merely
descriptive]:
[I]t is not necessary to determine whether those
words [“continuous vision”] are merely descriptive
of trifocal lenses, since appellee is not seeking
registration of those words, but a mark whose
dominant feature is the letters “CV.” The letters
“CV” are, of course, the initial letters of the
words “continuous vision,” and it is possible for
initial letters to become so associated with
descriptive words as to become descriptive
themselves. [citations omitted.] It does not
follow, however, that all initials of combinations
of descriptive words are ipso facto unregistrable.
While each case must be decided on the basis of
the particular facts involved, it would seem that,
as a general rule, initials cannot be considered
descriptive unless they have become so generally
Serial No. 75/872,488
7
understood as representing descriptive words as to
be accepted as substantially synonymous therewith.
See also Racine Industries Inc. v. Bane-Clene Corp., 35
USPQ2d 1832, 1838 (TTAB 1994); and Intel Corporation v.
Radiation Incorporated, 184 USPQ 54, 56 (TTAB 1974).
In the case before us, there is no question that the
term “thermal conductivity” is generic for a property of
materials. Applicant readily admits that in its mark, “TC”
stands for “thermal conductivity.” But, as the above-cited
cases demonstrate, this is not enough. The question is
whether the evidence establishes that the initials “TC” are
“accepted as substantially synonymous” with “thermal
conductivity.” Applicant’s product information is neutral
on this issue. We find that the dictionary excerpts
submitted by the examining attorney, indicating that, among
numerous other possibilities, “TC” stands for “thermal
conductivity” are insufficient to establish that “TC” is
“accepted as substantially synonymous” with “thermal
conductivity. This is particularly true in view of the e-
mails from scientists indicating that “TC” is not used in
the technical writing and discussion in this field.4

4 While these e-mails are in response to a direct request from applicant
for the statements made therein, we have taken the scientists statements
as accurately reflecting their knowledge and, thus, acceptable to raise
doubts as to the significance of the dictionary definitions as indicia
of a widespread use of “TC” as an abbreviation for “thermal
conductivity.”
Serial No. 75/872,488
8
In view thereof, we cannot conclude that TC PROBE is
merely descriptive of the goods identified in this
application.
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.