Reaction Design

Trademark Trial and Appeal Board

Mar 16, 2005

No. 76460914 (T.T.A.B. Mar. 16, 2005)

Mailed:03/16/05 March 16,
2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Reaction Design
________

Serial No. 76460914
_______

Stacy L. Taylor and Michael A. Whittaker of Foley & Lardner LLP
for Reaction Design.

James T. Griffin, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Hohein, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Reaction Design has filed an application to register
the term "REACTION DESIGN" for "computer software, namely[,]
programs delivered on media such as CD-ROMs and via electronic
communications networks for chemical reaction simulations,
chemical kinetics simulations, and chemical flow simulations; and
user manuals and instructions sold as a unit with the above" in
International Class 9; "training in the use and operation of
software for chemical reaction simulations, chemical kinetics
simulations, and chemical flow simulations" in International
Class 41; and "consultation in the field of modeling chemical
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76460914
2
reactions, chemical kinetics, and chemical flows; [and]
consultation in the field of incorporating software for chemical
reaction simulations, chemical kinetics simulations, and chemical
flow simulations into other software environments" in
International Class 42.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods and
services, the term "REACTION DESIGN" is merely descriptive
thereof.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d

1 Ser. No. 76460914, filed on October 22, 2002, which is based on an
allegation of dates of first use anywhere and in commerce of January
1, 1997 for the goods and January 1, 1996 for the services.

2 As stated in his brief, "the examining attorney ... notes that the
additional search engine printouts attached to the applicant's appeal
brief, showing a printout date of September 13, 2004, are untimely,
and the examining attorney accordingly objects to the Board's
consideration of this evidence." Inasmuch as the Examining Attorney's
objection is well taken, the objection is sustained and the additional
evidence attached to applicant's brief has not been considered.
Trademark Rule 2.142(d). It should also be pointed out, however, that
even if such evidence, which is basically more of that which applicant
properly made of record with its request for reconsideration of the
final refusal, were to considered, it would make no difference in the
result herein.
Ser. No. 76460914
3
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, 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 such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test." In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant contends in its brief that "[t]he term
REACTION DESIGN simply does not in any way describe computer
software, consulting, and training services in relation to
chemical synthesis." According to applicant, "[t]he development
and implementation of chemical reactions is typically referred to
as either 'chemical synthesis' or, more broadly, as 'reaction
engineering.'" Citing, in particular, the results of webpages
located by its search of the term "reaction engineering" (rather
than "reaction design") using the "Google" search engine,

Ser. No. 76460914
4
applicant asserts that such evidence not only shows "[e]xtensive
use of the ... phrase in the chemical industry to refer to
processes for development of chemical reactions," but that:
Notably, not a single one of the references
identified in the ... webpages utilizes the
term "reaction design." Therefore, it is
clear that the art considers the accepted
term for development of chemical reactions to
be "reaction engineering" and not "reaction
design", and so would not recognize the
latter phrase as referring to such processes.

Citing, in addition, definitions from Webster's II New
College Dictionary (1999) of (i) the word "reaction," which is
listed as noun meaning, among other things, "4. A chemical
transformation in which a substance decomposes, combines with
other substances, or interchanges constituents with other
substances," and (ii) the word "design," which is variously
defined, inter alia, as a verb meaning "2. To form a plan for
" and as a noun connoting "6. A
project or plan,"3 applicant insists that, [a]s seen from the ...
definitions of the words REACTION and DESIGN, none of these
definitions are used to describe or suggest computer software,
consulting or training services of the kinds offered by
Applicant." Instead, applicant maintains, at best "the word

3 While the definition of "reaction" was made of record with its
response to the initial Office Action, the definition of "design" was
furnished only as an attachment to applicant's appeal brief and thus
is technically untimely under Trademark Rule 2.142(d). Nevertheless,
inasmuch as the Examining Attorney in his brief has not objected
thereto, and since in any event it is settled that the Board may
properly take judicial notice of dictionary definitions, we have
considered such definition. See, e.g., Hancock v. American Steel &
Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
Ser. No. 76460914
5
REACTION or the words REACTION DESIGN apply to many categories of
goods and services that are designed but that does not make the
word(s) descriptive of any such goods [or services]."
As a final consideration, applicant argues that the
term "REACTION DESIGN" "simply does not immediately convey
specific information about Applicant's ... computer software,
consulting or training services." Reiterating its contention
that "[t]he term itself is not one that is used in the chemical
arts," applicant asserts with respect to the evidence furnished
by the Examining Attorney that:
Indeed, the only use of the phrase "reaction
design" in relation to chemical synthesis
[which was] identified by the Examining
Attorney was in a single news story (press
release of 6/24/03), and even that was not a
direct quote from the chemist being
interviewed. As such, there is no evidence
of record to indicate that the phrase is used
in the chemical industry, or would be
understood by consumers for Applicant's
product [and services] as having any
established meaning relevant to Applicant's
products [and services].

The Examining Attorney, on the other hand, takes the
position that the term "REACTION DESIGN" "immediately describes
the purpose and intended use of the [applicant's] software and
services, i.e. that they can be used in the design of chemical
reactions." Relying on dictionary definitions which he made of
record from The American Heritage Dictionary of the English
Language (4th ed. 2000), which in relevant part list the word
"design" as a verb meaning, among other things, "2. To plan out

505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).

Ser. No. 76460914
6
in a systematic, usually graphic form: design a building; design
a computer program," the Examining Attorney urges that:
Applicant's software for chemical reaction
simulations, chemical kinetics simulations,
and chemical flow simulations allows a user
to "design," or "plan out in systematic,
usually graphic form," such reactions. As
such, the [applicant's] mark is merely
descriptive of the goods. Likewise, the mark
is descriptive of services involving reaction
design software, namely, training in the use
of such software and consulting regarding
such software.

With respect to applicant's argument that "the common
term for the goods/services is 'reaction engineering' rather than
'reaction design,'" the Examining Attorney contends that the
"printouts of several pages of 'hits' from the Google search
engine showing usage of the term 'reaction engineering'" is not
probative evidence that the term "REACTION DESIGN" is lacking in
descriptive significance. In particular, the Examining Attorney
maintains that:
[S]ince the actual text of the web pages that
these hits link to was not included, it is
unclear what the term "reaction engineering"
means. The examining attorney submits that
the search engine report fails to show that
"reaction engineering" is the proper term to
refer to the applicant's goods and services.
Rather, it simply demonstrates the existence
of the term.

In contrast, the Examining Attorney insists that he
"has shown via printouts from the Lexis-Nexis database and via
evidence from the Internet (both attached to the final refusal)
that 'reaction design' is an industry term and that other
entities are involved in the design of reactions or the creation
Ser. No. 76460914
7
of software for reaction design." Of the excerpts made of
record, the following are particularly relevant (emphasis added):
"[CEM Corporation and Synthematix] Inc.
announced today that they have entered into a
strategic alliance to co-develop a software
platform based on Synthematix's Arthur
Suite(TM) of reaction planning tools and
CEM's ChemDriver(TM) reaction monitoring
software for its line of systems designed for
microwave-enhanced life science applications.
The software package will be the first
tool to truly provide the market a
combination of database, search engine,
reaction design, and instrument control
package. The software package will be
designed to function as electronic
institutional memory for the chemistries
developed within an organization over time."
-- PR Newswire, October 27, 2003;

"Dr. Charette has distinguished himself
in the area of asymmetric processes. ....
He has also devised conceptually novel
approaches to catalyst and reaction design
with important applications in alpha-chiral
amine synthesis and piperidines which are
important subunits of bioactive compounds."
-- PR Newswire, June 24, 2003; and

"reaction design
In addition to making new molecules,
sometimes we are interested in making new
reactions. In some cases we are trying to
design unique catalysts to help carry out
difficult transformations. In other
applications we are trying to control
specificity through intermolecular
cooperativity. We are tackling some
important synthetic processes, reinventing
ways of performing functional group
transformations within the framework of Green
Chemistry." -- website of the "Center for
Green Chemistry," undated, which also sets
forth the term "reaction design" in a list of
topics which includes "solar energy devices";
"non-covalent derivatization"; "polymer
chemistry"; "medicinal chemistry"; and
"educational research."

Ser. No. 76460914
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According to the Examining Attorney, inasmuch as "[a]ll of this
shows that 'reaction design' is a common industry term to refer
to design of chemical and other types of reactions," and "[s]ince
applicant's software performs this function, and applicant's
services involve teaching and consulting about reaction design
and reaction design software, the [applicant's] mark is merely
descriptive of the goods and services."
Finally, "[a]s further evidence that applicant intends
its software and services to be used in [the] design of chemical
reactions," the Examining Attorney made of record "several
printouts from applicant's own web site." One of such excerpts,
we observe, provides the following information concerning
applicant's goods and services:
In an industry dominated by competitive
process technologies, kinetic modeling is
essential in streamlining research and
development. To improve yield while avoiding
unwanted by products and prolonging catalyst
life, Reaction Design's powerful software
tools and consulting services offer a state-
of-the-art engineering approach. Whether we
develop customized kinetic models of your
existing facility, apply reactor modeling
toward optimizing plant operation, or develop
models for use in the design of new
facilities, we help our customers succeed in
the global chemical industry.
....
Consulting services can range from
development of custom CHEMKIN models or
chemical mechanisms to development of system-
level models that point out key areas for
improvement and can be maintained onsite for
continued use.

Another such excerpt, we note, sets forth the following "Company
information" about applicant and its business:
Reaction Design, Inc. is the exclusive
developer and distributor of CHEMKIN, the de
Ser. No. 76460914
9
facto standard for modeling of gas and
surface-phase chemistry. Today, as both a
software developer and a services provider,
we focus on reactor and combustor design and
improvement. Our world-class engineers,
chemists, and programmers have expertise that
spans multi-scale engineering from the
molecule to the plant. We incorporate our
reactor models into our customers' design
environments, drawing on our experience with
a variety of simulation tools, and reaction
chemistries.
....
We remain committed to the development
of a comprehensive and easy-to-use set of
software simulation tools, and also to
providing expert consulting services to
companies in order to deliver software-based
solutions to specific chemical process
problems. These software products and
consulting services help our over 150
government and industrial customers develop
better products faster, at lower costs, and
with minimized impact on the environment.

The Examining Attorney, in addition, notes in
particular that a third excerpt states that applicant "provides
'better reactions, by design'" and maintains, as to a fourth
excerpt which bears the caption "Background," that such
"indicates that the applicant markets, supports, enhances and
expands the CHEMKIN software which aids in 'the design of
processes that utilize chemical reactions.'" He concludes that
"REACTION DESIGN, therefore, is clearly merely descriptive of
software that aids in the design of chemical reaction processes."
Upon consideration of the evidence and arguments
presented,4 we agree with the Examining Attorney that, when

4 We note that applicant has not criticized the evidence offered by the
Examining Attorney on the ground that some of the excerpts are of
limited probative value because their source is a wire service rather
than a trade journal or other technical publication directed to the
field of commercial and industrial chemical processes. See, e.g., In
re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1555 (TTAB 1987) at n.
Ser. No. 76460914
10
considered in its entirety, the term "REACTION DESIGN" is merely
descriptive of applicant's "computer software ... for chemical
reaction simulations, chemical kinetics simulations, and chemical
flow simulations ..." as well as its "training [services] in the
use and operation of" such software and its "consultation
[services] in the field of modeling chemical reactions, chemical
kinetics, and chemical flows .... [and] in the field of
incorporating software for chemical reaction simulations,
chemical kinetics simulations, and chemical flow simulations into
other software environments." Specifically, it is clear from the
record that, as contended by the Examining Attorney, "applicant's
software and services are intended for use in designing chemical
reactions" for industrial and commercial applications. The term
"REACTION DESIGN" immediately conveys, without speculation or
conjecture, that the purpose or subject matter of applicant's
goods and services is the design of chemical reactions. Nothing
in such term is incongruous, ambiguous or suggestive, nor is
there anything which would require the exercise of imagination,
cogitation or mental processing, or necessitate the gathering of
further information, in order for the merely descriptive
significance thereof to be readily apparent to customers and
users of applicant's goods and services. Instead, to chemists,
chemical engineers and others involved in designing, modeling

6 and In re Men's Int'l Professional Tennis Council, 1 USPQ2d 1917,
1918-19 (TTAB 1986). Nonetheless, in light of the ready availability
of the Internet, we find that the wire service excerpts relied upon by
the Examining Attorney are of some probative value in that they are
indicative of the significance of the term "REACTION DESIGN" to at
least those who write about developments in the field of chemical
Ser. No. 76460914
11
and/or simulating of chemical reactions, the term "REACTION
DESIGN" conveys forthwith that applicant's software, training
services and consultation services are for use in the field of
chemical reaction design.
Moreover, as to applicant's argument that "[t]he
development and implementation of chemical reactions is typically
referred to as either 'chemical synthesis' or, more broadly, as
'reaction engineering,'" suffice it to say that even if, for
instance, potential competitors of applicant are able to describe
or advertise the same or similar goods and services by terms
other than "REACTION DESIGN," that does not mean that such term
is not merely descriptive of applicant's goods and services.
See, e.g., Roselux Chemical Co., Inc. v. Parsons Ammonia Co.,
Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962). Thus, even if
applicant is in fact the first and/or only user of the term
"REACTION DESIGN" in connection with its software and training
and consultation services, it is well settled that such does not
entitle applicant to the registration thereof where, as here, the
term has been shown only to immediately convey a merely
descriptive significance in the context of applicant's goods and
services. See, e.g., In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In re Mark A. Gould,
M.D., 173 USPQ 243, 245 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
affirmed.

reaction design. See, e.g., In re Cell Therapeutics Inc., 67 USPQ2d
1795, 1797-98 (TTAB 2003).