Nanomech, Inc.

Trademark Trial and Appeal Board

Aug 22, 2014

No. 85602143 (T.T.A.B. Aug. 22, 2014)

Mailed: August 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nanomech, Inc.
________

Serial No. 85602143
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J. Charles Dougherty of Wright Lindsey & Jennings LLP for Nanomech, Inc.

Karen Bracey, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
_______

Before Seeherman, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Nanomech, Inc. (“Applicant”) filed an application to register as a mark
on the Principal Register the term

(in standard characters) for “machine tools for the cutting of materials,
namely, coated substrates manufactured using nanotechnology” in
International Class 7.1

1 Application Serial No. 85602143, filed April 19, 2012, based upon applicant’s
assertion of its bona fide intent to use the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Serial No. 85602143

2
The Trademark Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground
that Applicant’s proposed mark, when used in connection with Applicant’s
goods, is merely descriptive thereof, namely, that “inserts” are a key feature
of cutting tools and that nSert would be immediately understood as a novel
spelling or misspelling of “insert.”. When the refusal was made final,
Applicant appealed. Applicant and the Examining Attorney filed briefs.
Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or services, within
the meaning of 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. In re Chamber of Commerce of the United States of
America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A mark 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;
rather, it is sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
It is further settled that whether a mark is merely descriptive is
determined not in the abstract, but in relation to the goods or services for
Serial No. 85602143

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which registration is sought, the context in which it is being used on or in
connection with the goods or services, and the possible significance that the
mark would have to the average purchaser of the goods or services because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). “The question is not whether someone presented with only the mark
could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods or services are will understand the mark
to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
In support of her position that the applied-for mark merely describes
the identified goods, the Examining Attorney submitted screenshots from
Applicant’s Internet website (nanomech.biz/products), excerpted below
(emphasis added):

NanoMech
Making atoms work harder and smarter.™
TuffTek®

NanoMech’s award winning technologies include the patented
and patent-pending TuffTek® extreme wear resistant coating
products lines which provide a breakthrough increase in
performance never achieved before. TuffTek® enhanced nSert®
tools can improve tool life 300-1000% or more compared to
conventional processes. The combination of exceptional wear
resistance and unsurpassed toughness brings TuffTek® nSert®
cutting tools performance beyond any other cutting insert
presently on the market. …2

2 August 13, 2012 Office Action.
Serial No. 85602143

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The Examining Attorney further made of record with her Office
Actions evidence from commercial and informational Internet websites in
which the term “insert” is used in relation to machine tools used for cutting
materials. The following examples are illustrative (emphasis added):

(business.com)
Business.com Buy Smarter
Cutting Tool Inserts Key Terms
Familiarize yourself with cutting tool inserts terminology
Cutting tools are important for any manufacturing company, as
the quality of products depends upon the properties of cutting
tools. A cutting tool insert is a small part attached to cutting
tools that can be replaced after pre-defined operation time.

If you want to buy cutting tool inserts, you will need to be
conversant with certain terms that indicate specifications, types
or materials for cutting tool inserts. This guide will introduce
you to some technical terms, such as hardness, cold or hot
forming, cutting speed and cermet.

Hardness
Selection of a cutting tool insert depends upon the hardness of
the component material. …

Cold or hot forming.
As the name indicates, a cold forming (or cold working) process
is a metal forming operation carried out at room temperature. …
While buying a cutting tool insert, you will need to specify
whether you want to use it for a cold or hot forming operation.

Cutting speed
Cutting speed can be defined as the relative speed between the
cutting tool insert edge and component material just ahead of
this cutting edge.

Tool steel
Once you understand the different specifications, you must learn
about various types of materials for cutting tool inserts. Tool
steel includes a typical variety of plain carbon steel and alloy
steel materials that are suitable for cutting tools and inserts.
Serial No. 85602143

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CBN (Cubic Boron Nitride)
CBN is ceramic material that is very useful for manufacturing
cutting tool inserts. CBN inserts have applications in high
speed cutting operations.

Cermet
Cermet is another popular tool insert material. It is a
composite material of metal and ceramic constituents produced
by different processes, such as agglomeration, sintering and
spray drying.3

(globalspec.com)
Cutting Tool Inserts Information
Cutting tool inserts are replaceable attachments for cutting
tools that typically contain the actual cutting edge. Cutting tool
inserts applications include boring, construction, cutoff and
parting, drilling, grooving, hobbing, milling, mining, sawing,
shearing and cutting, tapping, threading, turning and brake
motor turning.

Cutting tool inserts can have many different geometries.
Round or circular inserts are used in applications such as
button mills or in radius groove turning. … A diamond insert is
a four-sided insert with two acute angles used for material
removal. Triangle inserts have a triangular shape….4

(ctemag.com)
Small-Scale Thinking
“Nanotechnology” has been a buzzword in a variety of industries
for some time now. But what does it mean when it comes to
coating materials for cutting tools, and what’s the current state
of nanostructured tool coatings?

Defining nanoscale might be a good place to start. A consensus
defines nanoscale as features on the order of 100 nanometers or
smaller (a nanometer is one billionth of a meter).

For cutting tool coatings, however, it’s not that simple.
Although feature sizes of nanocoating materials certainly fit the

3 Id.
4 March 6, 2013 Office Action.
Serial No. 85602143

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100mm or smaller scale, development of new coating processes
and materials is producing tools for difficult machining
applications that, in some cases, can far exceed the performance
of conventional tools in both life and machining capability. …

Swiss Tek’s Bartos, however, sees a wider application for
nanocoatings. He said they are a significant step toward the
mythical universal coating material that would improve tool life
and productivity in all types of machining applications. “What
everybody wants in a coating is a silver bullet – a single coating
that can be applied to milling and drilling tools, turning inserts,
carbide and HSS substrates, and works well in every
application,” he said.5

(green.tmcnet.com)
Nanomech (Applicant) Wins 2012 Innovator of the Year Award
from Leading Nanotechnology Trade Organization

NanoMech, an international material science company and
leader in nanotechnology innovation, is pleased to announce
that the NanoBusiness Commercialization Association
(NanoBCA) has selected it for the 2012 Top Emerging Nano
Innovators Award. …

Dr. Ajay P. Malshe, the CTO of NanoMech said, “In 2012
NanoMech commercialized two nano-engineered product
platforms never achieved before. TurboTuff is a nano-inspired
industrial lubricant which reduces friction (to near zero) and
wear of mechanical parts by orders of magnitude allowing
hundreds of percent enhancements in wear reduction in
machines, vehicles, and components such as valves, gears and
much more. These performance increases also produce
incredible energy savings. Our second nanotechnology platform
of products is TuffTek coated cutting tool inserts and wear
parts made of carbides, metals and ceramics. …6

(ehow.com)
Definition of Milling Machine Cutting Tools
Insert Cutters

5 Id.
6 Id.
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Insert cutters are similar to end mills but are constructed of
multiple removable inserts that are held in place by a screw or
retention clip on a tools shaft. The individual inserts are often
coated with carbide for long life and have different shapes as
well as radii for various operations. Insert cutters are often run
on a mill without the need for coolant as the insert is capable of
deflecting and dissipating the heat itself.7

The Examining Attorney also made of record screenshots from
commercial Internet websites offering for sale machine tool “inserts” of
various types.8 These websites include:
mesatool.com – carbide inserts of various shapes;
boltonhardware.com – turning inserts of various materials and shapes;
wttool.com – ceramic and carbide inserts of various shapes; and
(cuttingtooltech.com) – carbide inserts of various shapes, as
displayed below.

7 Examining Attorney’s September 30, 2013 Office Action.
8 Id.
Serial No. 85602143

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Applicant, while conceding that “insert” merely describes its goods,
nonetheless argues that the letter “n” at the beginning of its mark is widely
understood to indicate the term “nanotechnology” and that its nSert mark is
a double entendre suggesting that the identified goods are produced using
nanotechnology. In support of its arguments in favor of registration,
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Applicant made of record a screenshot from the Internet website (nist.gov) of
the National Institute of Standards and Technology (NIST) indicating that
“n” is the prefix symbol for “nano.”9 Applicant further made of record
screenshots from websites (nano.gov, hp.com and n-tec.com) explaining the
nature of nanotechnology that are largely cumulative of evidence made of
record by the Examining Attorney and discussed above.10 Finally, Applicant
submitted copies of the following third-party registrations, all on the
Principal Register, consisting in part of the letter “N” as a prefix denoting
goods that incorporate nanotechnology in whole or in part:11

Reg. No. 2889757 for the mark NPOINT for, inter alia,
piezoelectric actuators, micro and nano-positioning stages, and
controllers and parts therefor;

Reg. No. 3145730 for the mark NTERA for, inter alia, providing
technical information in the fields of nanotechnology,
information in the field of nanotechnology, information
technology development of nanotechnology, licensing of
intellectual property in the field of nanotechnology, and
information and scientific research and development advice
services in the field of nanotechnology;

Reg. No. 3324888 for the mark NSILVER,
Reg. No. 3352624 for the mark NCLEAR,
Reg. No. 3939916 for the mark NAERO and
Reg. No. 3427102 for the mark NHALO
all owned by the same entity for, inter alia, machines and
machine tools for use in chemical, physical, optical and
mechanical processes and production in the field of functional
coatings and nanotechnology, namely, atomic layer deposition
reactors, computer software and instruments used in

9 Applicant’s September 6, 2013 Request for Reconsideration.
10 Id.
11 Id.
Serial No. 85602143

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controlling, regulating processes and machines in the field of
functional surfaces and nanotechnology;

Reg. No. 3359974 for the mark NAMBITION for, inter alia,
computer hardware and software for laboratory research in the
field of nanotechnology;

Reg. Nos. 4019526 and 4176549 owned by the same entity for
the following mark

for, respectively,
research, development and testing in the field of nanosurfaced
medical implants and nano-structured biomaterials; and
dental and medical implants made with nanosurfaced and nano-
structured materials and made primarily with artificial
materials.

Based upon the evidence of record, we find that the Examining
Attorney has made a prima facie case that the applied-for mark is
descriptive as used in connection with Applicant’s goods. Specifically, the
word “insert” clearly and unambiguously describes a significant feature of
Applicant’s “machine tools for the cutting of materials, namely, coated
substrates manufactured using nanotechnology,” i.e., a replaceable
attachment containing the cutting edge of machine tools. Indeed,
Applicant’s own Internet advertisements for its goods under the involved
mark utilize the term “inserts” to describe this key feature or
characteristic thereof, and Applicant has conceded that this term describes
its goods.
Serial No. 85602143

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We similarly are persuaded that Applicant’s mark is a double
entendre. As discussed above, an “insert” is a key component of a machine
cutting tool. However, Applicant’s mark further suggests an
additional feature of Applicant’s goods, namely, that they are
“manufactured using nanotechnology.” Evidence submitted by Applicant
demonstrates that the “n” prefix is understood to denote “nano-,” and that
cutting tool inserts are manufactured using nanotechnology. Further, the
third-party evidence submitted by Applicant, in which “N” is used as part
of marks for goods and services in the field of nanotechnology, indicates
that “N” suggests this meaning. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987) (third-party registrations are relevant to show how
language is used). As a result, consumers seeing the separated “n” in
Applicant’s mark will view it as suggesting “nanotechnology.” The
Examining Attorney, while arguing12 that “applicant has not shown the
wording “nSert” has an alternative meaning,” did not present any evidence
to cast doubt upon the prefix “n” being perceived as denoting
nanotechnology. As a result, we find that consumers will view the involved
mark as having more than one connotation. See In re Colonial Stores Inc.,
394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Tea and Sympathy, Inc.,
88 USPQ2d 1062 (TTAB 2008); In re Simmons Co., 189 USPQ 352 (TTAB
1976); and In re Del. Punch Co., 186 USPQ 63 (TTAB 1975). In short,

12 Brief, unnumbered p. 7.
Serial No. 85602143

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because of the stylization of the mark, the consuming public will
perceive it as a double entendre.
Decision: The refusal of registration is reversed.