Siemens Aktiengesellschaft

Trademark Trial and Appeal Board

Mar 7, 2014

No. 79100971 (T.T.A.B. Mar. 7, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Siemens Aktiengesellschaft
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Serial No. 79100971
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Marie-Anne Mastrovito of Abelman, Frayne & Schwab for Siemens
Aktiengesellschaft.

April K. Roach, Trademark Examining Attorney, Law Office 115 (John T. Lincoski,
Managing Attorney).
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Before Bucher, Mermelstein and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Siemens Aktiengesellschaft filed an application on the Principal Register for
the mark ISCM, in standard character form, for the services ultimately identified
below:
Business management services, namely, business
management of the monitoring and analysis of the
condition of assets that are components of electric energy
supply networks to maximize performance and
component life and reduce costs and downtimes of those
components, namely, business management of programs
for monitoring and analyzing the condition of individual
pieces of equipment used in electrical power supply
Serial No. 79100791

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plants to determine if the equipment requires repair or
replacement, in Class 35.
The application is based on a request for extension of protection filed under Section
66(a) of the Trademark Act of 1946, 15 U.S.C. § 1144f(a).
The Trademark Examining Attorney refused to register applicant’s mark on
the ground that it is merely descriptive. Section 2(e)(1) of the Trademark Act of
1946, 15 U.S.C. § 1052(e)(1). According to the Trademark Examining Attorney,
ISCM is an “acronym” for the term “Integrated Supply Chain Management,” that
“Integrated Supply Chain Management” “is the coordinated management of the
entire supply chain of an entity to improve efficiency and decrease costs,”1 and that
because applicant’s services include the management of parts of the supply chain,
applicant’s mark is merely descriptive.2
In presenting the issue on appeal, both applicant’s counsel and the
Trademark Examining Attorney are commended for their precise arguments and
direct references to the evidence in the record.
Preliminary Issue
Applicant referenced an inapplicable recitation of services in its brief. During
the prosecution of the application, applicant went through several iterations of its
recitation of services. In its September 4, 2012 petition to revive and response to
Office action, applicant amended its recitation of services to read as follows:
Business management services, namely, business
management of the monitoring and analysis of the

1 Examining Attorney’s Brief, p. 2 (unnumbered).
2 Examining Attorney’s Brief, pp. 3-5 (unnumbered).
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condition of assets that are components of electric energy
supply networks to maximize performance and
component life and reduce costs and downtimes of those
components; professional business consultancy, namely,
ensuring cost effectiveness and quality of electric energy
supply networks through consultation regarding the
management of assets, namely, the management of the
components of electrical supply networks; statistics and
professional business expertise, namely, statistical and
business efficiency expert services in connection with
improving the effectiveness and efficiency of electric
energy supply networks through monitoring and analysis
of the condition of network components; organizational
project management, in particular analysis, optimization
and implementation of asset management processes in
the nature of managing assets in the form of components
of electrical supply networks.

The Trademark Examining Attorney accepted that recitation of services in her
October 2, 2012 Office action.
In its April 4, 2013 response to an Office action, applicant amended its
recitation to read as follows:
Business management services, namely, business
management of the monitoring and analysis of the
condition of assets that are components of electric energy
supply networks to maximize performance and
component life and reduce costs and downtimes of those
components, namely, business management of programs
for monitoring and analyzing the condition of individual
pieces of equipment used in electrical power supply
plants to determine if the equipment requires repair or
replacement.

The Trademark Examining Attorney accepted that recitation of services in her May
13, 2013 Office action.
Serial No. 79100791

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In its brief, applicant referenced the recitation of services from its September
4, 2012 response to an Office action, not the subsequently amended recitation of
services. The April 4, 2012 recitation of services does not include the following:
professional business consultancy, namely, ensuring cost
effectiveness and quality of electric energy supply
networks through consultation regarding the
management of assets, namely, the management of the
components of electrical supply networks; statistics and
professional business expertise, namely, statistical and
business efficiency expert services in connection with
improving the effectiveness and efficiency of electric
energy supply networks through monitoring and analysis
of the condition of network components; organizational
project management, in particular analysis, optimization
and implementation of asset management processes in
the nature of managing assets in the form of components
of electrical supply networks.

“[O]nce the applicant has expressly amended the identification of good and services
to delete an item, it may not be reinserted in a later amendment.” TMEP
§ 1402.06(a) (October 2013).
In view thereof, the recitation of services as amended by applicant in its April
4, 2013 response to an Office action is the operative recitation of services.
Whether the mark ISCM is merely descriptive?
A term is merely descriptive if it “immediately conveys … knowledge of the
ingredients, qualities, or characteristics of the goods … with which it is used." In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the term is used,
not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588
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F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). This requires consideration of the context in which the mark is used
or intended to be used in connection with those goods, and the possible significance
that the mark would have to the average purchaser of the goods in the marketplace.
See In re Chamber of Commerce, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); In re Bayer, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending
Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether someone
presented only with the mark could guess the products listed in the description of
goods. Rather, the question is whether someone who knows what the products are
will understand the mark to convey information about them. In re Tower Tech, Inc.,
64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985).
“[I]f one must exercise mature thought or follow a multi-stage reasoning
process in order to determine what product or service characteristics the term
indicates, the term is suggestive rather than merely descriptive.” In re Tennis in
the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ
at 364-65; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). In
this regard, “incongruity is one of the accepted guideposts in the evolved set of legal
principles for discriminating the suggestive from the descriptive mark.” In re
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Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at
498 (the association of applicant’s mark TENNIS IN THE ROUND with the phrase
“theater-in-the-round” creates an incongruity because applicant’s services do not
involve a tennis court in the middle of an auditorium).
A series of letters that are a recognized abbreviation for a significant
characteristic of the services in the application is merely descriptive. Foremost
Dairies, Inc. v. The Borden Company, 156 USPQ 153, 154 (TTAB 1967); Calgon
Corporation v. Hooker Chemical Corporation, 151 USPQ 359, 360 (TTAB 1966).
However, not all abbreviations are necessarily merely descriptive.
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 understood as representing
descriptive words as to be accepted as substantially
synonymous therewith.
Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA
1956). See also Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ
566, 573 (TTAB 1977).
Accordingly, for ISCM to be merely descriptive of applicant’s services, we
have to find the following:
1. ISCM is an abbreviation for “Integrated Supply Chain Management”;
2. “Integrated Supply Chain Management” is merely descriptive of
applicant’s services; and
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3. A relevant consumer viewing ISCM in connection with applicant’s
services would recognize it as an abbreviation of the term “Integrated Supply Chain
Management.”
See In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984).
The factual issue in this appeal is whether applicant’s recitation of services
comprises “Integrated Supply Chain Management.” The Trademark Examining
Attorney submitted evidence showing that the letters “ISCM” is the abbreviation of
the term “Integrated Supply Chain Management,” and applicant did not challenge
the evidence or the conclusion.3 Thus, there is no question that ISCM is an
abbreviation for the term Integrated Supply Chain Management. Also, there is no
question regarding the meaning of the term Integrated Supply Chain Management.
For example, the examining attorney placed screen prints into the record of the
following websites:
Integrated supply chain management is the act of
ensuring that your supplier provides the right items on
schedule, built to the correct specifications, at the proper
cost. This means that you, as the purchaser of the
materials required to make your product, are the pivotal
station within your supply chain.4
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Integrated supply chain management includes every part
of the supply chain under the direction of one person. …
The supply chain starts at the supplier’s production line
and ends at the customer’s point of use. It includes every
function or department that can have a direct effect on

3 September 21, 2011 Office action.
4 “What is Integrated Supply Chain Management?” TML Business Services LLC website
(tml-business-services.com) attached to the October 2, 2012 Office action.
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raw materials, work-in-process and finished goods; this
includes storage, transportation, purchasing, production
and distribution.5
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Cat Logistics specializes in providing integrated supply
chain solutions that ensure the right product is in the
right place at the right time so customers get what they
need when they need it.6
Applicant’s services are the monitoring and analysis of the condition of
components of electric energy supply networks.7 The evidence shows that
applicant’s services are ensuring that the components in an energy supply system
are in good working condition, not the coordination of the supply of goods or raw
materials for electrical supply networks. In other words, applicant’s services do not
involve insuring that suppliers provide the right goods on schedule, built to the
correct specifications, at the proper cost. Accordingly, we find that when the
initialism ISCM when used in connection with applicant’s services is not merely
descriptive.
Decision: The refusal to register is reversed.

5 “What Is Integrated Supply Chain Management?” eHow Money (ehow.com) attached to
the September 21, 2011 Office action.
6 Cat Logistics website (logistics.cat.com) attached to the September 21, 2011 Office action.
7 Applicant argues that its use of ISCM is an abbreviation of the term “Integrated
Substation Condition Monitoring.” (January 12, 2012 response to Office action).