Tech Transfer, Inc.

Trademark Trial and Appeal Board

Jul 2, 2014

No. 85656384 (T.T.A.B. Jul. 2, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tech Transfer, Inc.
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Serial No. 85656384
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Melissa M. Martinez of Keeling Patents & Trademarks, LLC for Tech Transfer, Inc.

Chrisie Brightmire King, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
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Before Cataldo, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Tech Transfer, Inc. (“Applicant”) filed an application1 for registration of the
mark shown below for the following services:
Engineering, design, and analyses services for
reciprocating compressor packages, namely, overall
package design, structural design, foundation design,
acoustical pulsation analysis, piping analysis, stress
analysis, dynamic analysis, and field vibration analysis,
in International Class 42.

1 Application Serial No. 85656384 was filed on June 20, 2012 under Trademark Act § 1(a),
15 U.S.C. § 1051(a), stating the date of first use and first use in commerce as February 24,
2005, and with a claim of first use in another form at least as early as December 8, 1998.
Color is not claimed as a feature of the mark.
Serial No. 85656384

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Applicant disclaimed the exclusive right to use INC. apart from the mark as
shown. Applicant entered a claim of acquired distinctiveness with respect to the
pictorial representation of the state of Texas, based upon Applicant’s substantially
exclusive and continuous use in commerce for at least five years.2 Applicant
claimed ownership of Reg. No. 2720976 for the mark shown below.3

The Examining Attorney required Applicant to disclaim the exclusive right to
use TECH TRANSFER INC., apart from the mark as shown, on the ground that
this wording is merely descriptive of Applicant’s services. Applicant declined to
enter the required disclaimer. The Examining Attorney made her requirement final
and, on that basis, refused registration of the mark. Applicant filed a request for

2 Applicant’s response of April 9, 2013.
3 Issued on June 3, 2003; cancelled on January 10, 2014. Applicant disclaimed the
exclusive right to use “Tech Transfer, Inc.” The circumstances resulting in the disclaimer of
this wording are not explained by the record before us. In any event, we decide each case
on its own facts and record.
Serial No. 85656384

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reconsideration, which was denied. This appeal ensued. Applicant and the
Examining Attorney have filed briefs.
The Director of the U.S. Patent and Trademark Office “may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a), 15 U.S.C. §1056(a). A mark or component is unregistrable if,
“when used on or in connection with the goods of the applicant,” it is “merely
descriptive … of them.” Trademark Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent
and Trademark Office may require a disclaimer as a condition of registration if the
term at issue is merely descriptive of any of the identified goods or services. In re
Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is
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 U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see
also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a
mark or a component of a mark 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 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea
of each and every specific feature of the goods or services in order to be considered
merely descriptive; it is enough if it describes one significant attribute, function or
Serial No. 85656384

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property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Moreover, the term need not describe all of the identified goods or services. Rather,
a finding of mere descriptiveness is proper with respect to all of the identified goods
or services in an International Class if the mark is merely descriptive of any of the
goods or services in that class. In re Chamber of Commerce, 102 USPQ2d at 1219;
In re Stereotaxis Inc., 77 USPQ2d at 108. It is the Examining Attorney’s burden to
prove that a term is merely descriptive of an Applicant’s goods or services. In re
Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). The determination that a
term is merely descriptive is a finding of fact and must be based upon substantial
evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007).
The Examining Attorney contends that the expression TECH TRANSFER is
the equivalent of “technology transfer,” and supports this contention with the
following definition of “tech”:
NOUN:
1. A technician.
2. Technology.
3. Technical work.4
The Examining Attorney argues that the term “technology transfer” means
“the transfer of technology from one source to another in order to enhance or

4 Definition from , Office action of April 29, 2013 at 29.
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improve the technology of the second source.”5 The Examining Attorney appears to
contend that “technology transfer” is essentially synonymous with the sale or
licensing of technology and, as such, is merely descriptive of Applicant’s services.
The evidence submitted by the Examining Attorney indicates that the
expression “technology transfer” has a number of nuanced meanings. Most of the
evidence indicates that “technology transfer” is understood to mean the
dissemination of new technology resulting from research, so that it may be used in
practical applications. A website of the Federal Laboratory Consortium for
Technology Transfer states the following:
What is Technology Transfer?
Although there are many definitions of technology
transfer, generally speaking, technology transfer is the
process by which technology or knowledge developed in
one place or for one purpose is applied and used in
another. This broad definition covers a wide variety of
procedures or mechanisms that can be used to transfer
technology and is not necessarily restricted to federal
activities.
However, the federal government has for many years been
actively supporting and encouraging technology transfer
with respect to federal generated technologies. Therefore,
the phrase “technology transfer” most often refers
specifically to transfers occurring between federal
laboratories and any nonfederal organization, including
private industry, academia, and state and local
governments. The Federal Laboratory Consortium for
Technology Transfer (FLC) … has developed the following
definition that accommodates the technology transfer
activities of a wide variety of federal agencies and their
R&D laboratories and centers:

5 Examining Attorney’s brief at 9.
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Technology transfer is the process by which existing
knowledge, facilities, or capabilities developed under
federal research and development (R&D) funding are
utilized to fulfill public and private needs.6
The above definition is consistent with the entry for “Technology transfer” in
Wikipedia, which states in pertinent part:
Technology Transfer, also called Transfer of
Technology (TOT) and Technology
Commercialisation, is the process of transferring skills,
knowledge, technologies, methods of manufacturing,
samples of manufacturing and facilities among
governments or universities and other institutions to
ensure that scientific and technological developments are
accessible to a wider range of users who can then further
develop and exploit the technology into new products,
processes, applications, materials or services. It is closely
related to (and may arguably be considered a subset of)
knowledge transfer.
Some also consider technology transfer as a process of
moving promising research topics into a level of maturity
ready for bulk manufacturing or production.
…
Many companies, universities and governmental
organizations now have an Office of Technology Transfer
(TTO, also known as "Tech Transfer" or "TechXfer")
dedicated to identifying research which has potential
commercial interest and strategies for how to exploit it.
For instance, a research result may be of scientific and
commercial interest, but patents are normally only issued
for practical processes, and so someone—not necessarily
the researchers—must come up with a specific practical
process. Another consideration is commercial value; for
example, while there are many ways to accomplish
nuclear fusion, the ones of commercial value are those
that generate more energy than they require to operate.7

6 Office action of April 29, 2013 at 12.
7 Office action of October 16, 2012 at 8-9 (citations omitted).
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In the sense discussed above, “technology transfer” appears to describe a public
policy that encourages the sharing of new technology resulting from research
performed by government, educational institutions, scientific laboratories, and
other non-commercial entities so that it may be used in widespread practical
applications. The expression “technology transfer” is used in a manner consistent
with the definitions discussed above in the following documents of record:
A publication of the Environmental Protection Agency
regarding its Natural Gas STAR program (widespread
sharing of technology).8
A publication of Global Environmental Facility
(widespread sharing of technology).9
Advertisement for Columbia University’s technology
transfer office (commercialization of university
research).10
Advertisement for a program at Florida International
University (commercialization of university research).11
Advertisement of Frost & Sullivan for services offered to
“Tech Transfer & Engineering Schools”
(commercialization of university research).12
Reference to Turbomachinery Symposium (promoting
technology sharing among peers and industry
professionals).13
A paper entitled “Requirements Engineering and
Technology Transfer: Obstacles, Incentives and

8 Office action of April 29, 2013 at 20.
9 Id. at 23-25.
10 Office action of November 14, 2013 at 4.
11 Id. at 5.
12 Id. at 6
13 Id. at 7.
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Improvement Agenda” (dissemination of engineering
research results into mainstream engineering practice).14
A paper entitled “Technology transfer and public policy: a
review of research and theory” (dissemination of
government and university research).15
Program of University of Delaware (promoting
dissemination of bridge engineering technologies).16
Other items of evidence indicate that “technology transfer” refers to the
adaptation of existing technology that is currently used in a given field for use in a
different field. The following evidence supports this interpretation of the term:
A paper entitled “Innovation in Reciprocating
Compressors by Technology Transfer from Modern
Combustion Engines,” which states, “To be competitive,
modern reciprocating compressors require new
technologies or at least detailed improvements. In this
paper a possible way to progress is presented by applying
technology transfer from modern internal combustion
engines.”17
A paper entitled “Systematic technology transfer from
biology to engineering.”18
Usage of the term to mean adaptation of technology from one field of
application to another is relatively consistent with the definition adopted by the
Federal Laboratory Consortium for Technology Transfer, discussed above.
Relatively few items of evidence show use of “technology transfer” in the
sense of a delivery of a technology product to a customer. Among these we note in

14 Id. at 9.
15 Id. at 12-14.
16 Id. at 15.
17 Office action of April 29, 2013 at 27-28.
18 Office action of November 14, 2013 at 14.
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particular a promotional sheet of GE Energy entitled “Technology transfer improves
availability of GE high-speed reciprocating compressors,” which discusses
“technology transfer” in the context of deploying newly developed components and
methods to existing owners of GE reciprocating compressors.19 This reference has
special relevance because the reciprocating compressors discussed are for use in the
oil and gas production industry and appear to be similar in nature to the
compressors with respect to which applicant provides engineering services. In the
context of the GE Energy promotion sheet, “technology transfer” appears to describe
the upgrades and retrofits that the manufacturer makes available to its existing
customers.
We also note the website of a company called Flowserve, which offers services
that include “Engineering…, Finite element analysis…, Project management…,
Installation and commissioning…, Training and technology transfer back.”20
Viewing the record as a whole,21 we find that most of the evidence relates to
uses of the term “technology transfer” that, at best, have only a very distant

19 Office action of April 29, 2013 at 22.
20 Id. at 21.
21 We have noted the webpage of Kien Cuong Technology Transfer and Trading Company,
an entity that is apparently in Vietnam (Office action of October 16, 2012 at 15-19). We
have given it no consideration as it is not written in idiomatic English. We have also noted
the website at of a company that is apparently in Ireland (id. at 13),
which uses “technology transfer” in the sense of delivery of a technology product; and the
press release of Kobe Steel Group, apparently a Japanese company (Office action of April
29, 2013 at 26), which uses “technology transfer” in the sense of cooperative sharing of
technology with another business. We give very little weight to these two references. In
the context of our attempt to discern the precise meaning of a rather elusive term, the use
of that term by foreign entities is not a reliable indication of how customers in the United
States market would perceive it. We note also that their uses of “technology transfer” are
not consistent with each other.
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relationship to applicant’s services. Applicant provides engineering and analysis
services relating to “reciprocating compressor packages” which, according to
evidence in the record, appear to have an application in the oil and gas industry.22
There is nothing in applicant’s recitation of services to indicate that applicant is
involved in the sharing of research results for public policy reasons, or efforts to
develop new applications for technology previously used in a different field of
business. Although GE Energy and Flowserve may use the term “technology
transfer” in connection with engineering services that they provide to their own
customers, the examples of their use of the term do not demonstrate what
particular information would be immediately conveyed to engineering customers by
the expression “technology transfer.” Indeed, it is not even clear that the two
references use “technology transfer” to mean the same thing. Overall, when
encountering the term “technology transfer” used in connection with “engineering,
design, and analyses services for reciprocating compressor packages,” customers
would have to use a multistep reasoning process to link the mark with the services.
Although we are not without doubt as to whether the term may have
descriptive meaning in the relevant field, we resolve that doubt in favor of
applicant. In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1144 (Fed. Cir. 1987). The record before us does not support the
Examining Attorney’s requirement of a disclaimer of the term TECH TRANSFER

22 Id. at 7-9.
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on the ground that this term is merely descriptive of the Applicant’s services.23
Accordingly, we reverse the Examining Attorney’s refusal of registration. The
disclaimer of INC. stands as currently set forth in the record.
Decision: The refusal to register is reversed.

23 We observe nonetheless that on a different record, such as might be adduced in an
opposition proceeding, we might reach a different conclusion.