Rosemount Inc.

Trademark Trial and Appeal Board

Jul 11, 2002

No. 76034083 (T.T.A.B. Jul. 11, 2002)

Mailed: 11 JUL 2002
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rosemount Inc.
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Serial No. 76/034,083
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Christopher R. Christenson of Westman, Champlin & Kelly,
P.A. for Rosemount Inc.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
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Before Simms, Cissel, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Rosemount Inc. (applicant) filed an application1 to
register the term HOOKUPS (in typed form) on the Principal
Register for goods ultimately identified as follows:
Metal pipes and manually operated metal valves used to
connect sensing equipment, transmitters, or
controllers to industrial or manufacturing processes
in International Class 6.
1 Serial No. 76/034,083, filed April 26, 2000. The application
contains an allegation that applicant first used the mark and
first used the mark in commerce on February 16, 1999.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76/034,083
2
Machine parts, namely, metal and plastic pipes and
automatic and manually-operated metal valves used to
connect sensing equipment, transmitters or controllers
to industrial or manufacturing processes in
International Class 7.
Automatic valves used to connect sensing equipment,
transmitters, or controllers to industrial or
manufacturing processes in International Class 9.
The examining attorney refused to register the mark on
the ground that the mark, when applied to the goods, is
merely descriptive. 15 U.S.C. § 1052(e)(1).
The examining attorney’s position is that the mark
HOOKUPS is merely descriptive for applicant’s goods, which
are “mechanical and/or electrical units comprising pipes
and valves for connecting monitoring instrumentation to
industrial equipment.” Examining Attorney’s Br. at 3. A
“Hookup” is defined as a “system of electric circuits and
electrically powered equipment designed to operate
together” and “a configuration of mechanical parts or
devices providing a link between a supply source and a
user.” American Heritage Dictionary of the English
Language, Third Edition (1992) (See First Office Action).2
2 The examining attorney requests that we take judicial notice of
two additional definitions, which were submitted for the first
time with the examining attorney’s brief, in which “hookups” is
defined as “a system of components assembled together for a
particular purpose” (www.rhymezone.com) and “the connection
between a supply of something and its user, or a connection
between two or more pieces of equipment”
(http://dictionary.cambridge.org) (Examining attorney’s
emphasis). We, of course, can take judicial notice of dictionary
Ser. No. 76/034,083
3
The examining attorney concludes that “HOOKUPS merely
describes the nature, use and purpose of the applicant’s
goods, because applicant’s goods are a system of pipes and
valves assembled together for use in connecting monitoring
instrumentation to industrial equipment.” Examining
Attorney’s Br. at 3.
Applicant, on the other hand, maintains that “a
consumer in the market to buy Appellant’s goods, when
presented with the mark HOOKUPS, will not inexorably
conceive features of Appellant’s goods.” Applicant’s Br.
at 3. Applicant further argues that it offers a variety of
goods and that even customers familiar with the goods
“would not necessarily understand characteristics of the
goods from viewing Appellant’s mark.” Id. Applicant
concludes that its mark is not merely descriptive of its
goods.
After the examining attorney made the refusal final,
this appeal followed. Applicant and the examining attorney
have filed briefs. An oral hearing was not requested.
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). However, we do not normally
take judicial notice of on-line dictionaries that are submitted
for the first time on appeal. In re Total Quality Group, Inc.,
51 USPQ2d 1474, 1476 (TTAB 1999). Therefore, we will not
consider the on-line dictionary definitions submitted with the
examining attorney’s brief.
Ser. No. 76/034,083
4
We affirm the examining attorney’s refusal to register
applicant’s mark.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). A term may be descriptive even
if it only describes one of the qualities or properties of
the goods or services. In re Gyulay, 820 F.2d 1216, 1217,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987). We look at the mark
in relation to the goods or services, and not in the
abstract, when we consider whether the mark is descriptive.
Abcor, 200 USPQ at 218.
In this case, applicant’s goods consist of pipes and
valves used to connect sensing and other equipment.
Applicant’s literature (p. 1) describes its Transmitter
Connection System as featuring “transmitter process
connections that are pre-fabricated and pre-engineered.”
It “is a prefabricated process connection for all types of
pressure-based measurement applications: flow, pressure,
differential pressure, and level” (p. 2). The literature
also points out (p. 3):
Ser. No. 76/034,083
5
Corporate standards exist for installing pressure
transmitters. A look at a typical process plant
reveals a wide range of practices actually employed.
The end result is that the intention of the designer
is rarely achieved.
The HookUps system provides a standardized
installation system for nearly all applications. With
the HookUps system, variability in instrumentation is
eliminated. There are over 100 pre-engineered designs
nearly all types of applications.
In addition, we take judicial notice of the following
definitions of “hook up”:
1. A group or a number of items cooperating or acting
together as
(a) an assemblage (as of apparatus or circuits) used
for a specific purpose (as radio transmission or
reception)
(b) a sequence or arrangement of communications and
usu. interacting parts.
2. The establishment of a hookup; a linking of two or more
items into an interacting whole as (a) an assembling of
parts into a functional whole.
Webster’s Third International Dictionary of the
English Language Unabridged (1993).
A review of applicant’s literature makes it clear that
applicant’s goods are a “connection system” that provide “a
standardized installation system for nearly all
applications.” If effect, applicant’s pipes and valves
provide a means to connect transmitters and other equipment
to industrial or manufacturing processes. Inasmuch as a
“hook up” is defined as “a linking of two or more items
into an interacting whole” and “an assemblage (as of
Ser. No. 76/034,083
6
apparatus or circuits) used for a specific purpose,”
applicant’s term would inform prospective purchasers that
its pipes and valves link the transmitters, sensing
equipment, or controllers with industrial or manufacturing
processes. To those purchasers in the market for an item
to link transmitters, sensing equipment, and controllers to
a system, applicant’s term would immediately inform these
purchasers of a feature or function of the goods, i.e.,
that they link or “hook up” these parts with the system.
Applicant argues that it “offers a vast array of goods
related to process control and monitoring. The goods
themselves can be mechanical, electrical, and/or systems
employing combinations thereof. Given that the dictionary
definition is applicable to mechanical and electrical
systems, Appellant respectfully believes that consumers
familiar with Appellant’s goods will require imagination,
thought or perception to reach a conclusion as to the
nature of the specific goods.” Appellant’s Br. at 3.
First, even if applicant’s term only described some of
its products, a mark is properly refused registration on
the ground of descriptiveness if it is descriptive of any
of the goods for which registration is sought. In re
American Society of Clinical Pathologists, 442 F.2d 1404,
169 USPQ 800, 801 (CCPA 1971). Second, the dictionary
Ser. No. 76/034,083
7
cited by the examining attorney makes it clear that the
term “hook ups” has descriptive significance for electrical
and mechanical systems. It is not clear why it would lose
that significance simply because the system has both an
electrical and a mechanical component. Third, the other
dictionary definition makes it clear that the term “hook
ups” would apply to any linking of two or more items into
an interactive whole. Inasmuch as that is what at a
minimum, at least some of, applicant’s goods do, the term
“hook ups” is merely descriptive.
Also, the fact that the term “hook ups” may have other
meanings is not significant in this case because we must
look at the term in relation to the goods for which
registration is sought. Abcor, 200 USPQ at 218. When
viewed in the light of applicant’s pipes and valves for
connecting transmitters and other equipment to industrial
or manufacturing systems or equipment, it will be
immediately apparent to prospective customers that the term
“hook ups” is referring to a characteristic or feature of
the goods, i.e., its ability to link or connect these items
into an interacting whole.
Ser. No. 76/034,083
8
Decision: The Examining Attorney’s refusal to
register the term HOOKUPS on the ground that the mark is
merely descriptive of the involved goods is affirmed.