Tech Transfer, Inc.Download PDFTrademark Trial and Appeal BoardJul 2, 2014No. 85656384 (T.T.A.B. Jul. 2, 2014) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 2, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Tech Transfer, Inc. _____ Serial No. 85656384 _____ 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). _____ 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 2 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 3 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 4 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. Serial No. 85656384 5 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. Serial No. 85656384 6 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). Serial No. 85656384 7 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. Serial No. 85656384 8 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. Serial No. 85656384 9 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. Serial No. 85656384 10 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. Serial No. 85656384 11 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. Copy with citationCopy as parenthetical citation