Under-ground Systems, Inc.

Trademark Trial and Appeal Board

Aug 9, 2001

No. 75639325 (T.T.A.B. Aug. 9, 2001)

8/9/01

Paper No.13
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Underground Systems, Inc.
________

Serial No. 75/639,325
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Marilyn Matthes Brogan of Frommer Lawrence & Haug LLP for
Underground Systems, Inc.

M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Simms, Cissel and Bucher, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On February 9, 1999, applicant filed the above-
identified application to register the mark “MULTIGAS” on
the Principal Register for “sensors and analyzers for
testing the presence and measuring the concentration of
gases,” in Class 9. The application was based on
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce on these goods.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/639,325
2
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section
1052(d), on the ground that the mark applicant seeks to
register is merely descriptive of the goods identified in
the application. She included dictionary definitions1 of
“multi” as a prefix meaning “many; much; multiple”; and of
“gas” as “a substance in the gaseous state.” She concluded
that the mark “MULTIGAS” is merely descriptive of sensors
and analyzers for testing the presence and measuring the
concentration of gases because it identifies a feature or
characteristic of the goods, namely that they can sense and
analyze multiple gases.
Responsive to the refusal of registration, applicant
presented argument that the mark is a coined word which is
suggestive, rather than merely descriptive, of the goods
set forth in the application because “a certain degree of
thought or imagination is required to come to any
conclusion about Applicant’s sensors and analyzers when
presented with the MULTIGAS mark.” No evidence in support
of this conclusion was presented.
The Examining Attorney was not persuaded by
applicant’s arguments, and the refusal to register was made

1 The American Heritage Dictionary of the English Language, third
edition (1992), Houghton Mifflin Co., (electronic version).
Ser No. 75/639,325
3
final by the second Office Action. Attached to the final
refusal were seven excerpts from published articles
retrieved from the Nexis database. In each excerpt, the
term “multigas” is used to describe gas sensors and
analyzers. Examples include the following:
They are compatible with a variety of
commercially available liquid and gas instruments,
including multigas photo acoustic infrared analyzers,
electromechanical sensors, and mass spectrometers for
maximum flexibility in measuring a variety of
compounds and concentration levels.

Also under development and expected to be
available in mid-1998 is a multigas analyzer that uses
a series of semiconductor-based microsensors to detect
hydrogen, CO 2, acetylene, and ethylene as they
diffuse into a sensor chamber immersed in transformer
oil.

Multigas analyzer is capable of measuring HCL, SO
2, NOx, CO, CO 2, HC, CH 4, H20, N2O, and O2(with
optional built-in zirconia sensor).

The device is available as a single point
monitor, a multipoint monitor, or is part of a
multipoint, multigas monitoring system.

The alliance hopes to develop reliable, compact
and highly sensitive multigas sensors at a lower cost
than the current continuous emissions monitors.

and

Neotronics N.A. Inc.’s Multigas is a certified
intrinsically safe analyzer designed for continuous
monitoring and analysis of oxygen, carbon monoxide and
methane in underground, ambient monitoring, and in
combustion applications.

Ser No. 75/639,325
4
The Examining Attorney took the position that this
evidence establishes conclusively that prospective
purchasers of these products are likely to understand the
term sought to be registered as a description of the
capability of these devices to sense and analyze multiple
types of gases.
Responsive to the final refusal to register, along
with a Notice of Appeal, applicant filed a request for
reconsideration. Applicant made the apparently
contradictory arguments that the mark is at once suggestive
of its goods, and, at the same time, that applicant “chose
the designation MULTIGAS because it had an attractive sound
and appearance and, in applicant’s view, is arbitrary and
distinctive as applied to its goods.” Submitted with the
request for reconsideration were copies of several
unpublished decisions of the Board, as well as an
advertisement for applicant’s product.
The Examining Attorney was not persuaded by applicant’s
reconsideration request, the final refusal to register was
maintained, and both applicant and the Examining Attorney
filed briefs on appeal. Applicant did not request an oral
hearing before the Board.
The sole issue before the Board in this appeal is
whether Section 2(e)(1) of Lanham Act precludes registration
Ser No. 75/639,325
5
of the term “MULTIGAS” in connection with sensors and
analyzers for testing the presence and measuring the
concentration of gases. Based on careful consideration of
the record in this application, the arguments presented by
applicant and the Examining Attorney and the relevant legal
precedent on this issue, we hold that the term applicant
seeks to register is merely descriptive of the goods
specified in the application.
It is well settled that a term is merely descriptive
of goods within the meaning of Section 2(e)(1) of the Act
if it immediately and forthwith conveys information with
regard to an ingredient, quality, characteristic, function,
feature, purpose or use of the relevant goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818
(Fed. Cir. 1986); In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). Whether a term is merely descriptive must be
determined in relation to the identified goods, rather than
in the abstract. In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987). The test, therefore,
is not whether from consideration of only the mark, one
could determine or speculate what the goods are. Instead,
the issue is whether the mark would inform one who knows
what the goods are about a particular feature,
Ser No. 75/639,325
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characteristic, purpose or intended use of the goods. It
is not necessary that a term describe all of the purposes,
functions, characteristics or features of the goods in
order to be merely descriptive of them. It is enough if
the term describes one significant attribute of the goods.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
In the case at hand, the dictionary definitions and
excerpts from publications submitted by the Examining
Attorney, as well as the sales brochure submitted by
applicant, make it abundantly clear that “MULTIGAS” is
descriptive of applicant’s sensors and analyzers for
testing the presence and measuring the concentration of
gases because the sensors and analyzers test for multiple
gases. No thought, imagination or mental gymnastics would
be required for potential purchasers of these goods to
understand from the mark “MULTIGAS” that a significant
feature or characteristic of the goods is their ability to
sense and analyze multiple gases.
Applicant’s arguments to the contrary are not well
taken. There is no logical or evidentiary support for
applicant’s contention that its mark is suggestive, much
less that it is arbitrary in connection with the goods set
forth in the application. Applicant cannot distinguish the
Ser No. 75/639,325
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descriptive uses shown by the excerpted articles submitted
by the Examining Attorney. In fact, applicant itself (in
its argument in its brief, p.3) characterizes its products
as alternatives to “standard existing commercial multiple
gas measuring units.”
As the Examining Attorney points out in her brief, the
copies of unpublished decisions submitted by applicant are
not proper for our consideration. TBMP Section 101.03.
Moreover, even if we were to have considered applicant’s
inappropriate submissions, our decision in this case would
not have changed. Nothing in any of those cases is
inconsistent with our finding here that the record in the
instant case establishes that in connection with the goods
specified in the application, the term sought to be
registered would immediately convey to prospective
purchasers information about a significant characteristic
or feature of the goods.
Accordingly, for the reasons set forth above, the
refusal to register is affirmed.

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