Veeco Instruments, Inc.

Trademark Trial and Appeal Board

Mar 22, 2006

No. 76383240 (T.T.A.B. Mar. 22, 2006)

Mailed:
March 22, 2006
Walters

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Veeco Instruments, Inc.
___________

Serial No. 76383240
___________

John P. Fredrickson of Boyle, Fredrickson, Newholm, Stein &
Gratz for Veeco Instruments, Inc.

Barbara A. Loughran, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
____________

Before Walters, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:
Veeco Instruments, Inc. has filed an application to
register on the Principal Register the mark DIGITAL
INSTRUMENTS, in standard character form, for, as amended,
“scientific and technological research and development of
products for others, namely, atomic force microscopes and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76383240
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scanning tunneling microscopes, in the field of metrology,”
in International Class 42.1
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive in connection with its services. Applicant
argued against the refusal and, in the alternative, filed
an amendment alleging that its mark has acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f). The examining attorney continued the
refusal to register on the ground of mere descriptiveness
and, further, refused applicant’s claim of acquired
distinctiveness on the ground that the mark is generic in
connection with applicant’s services and, thus, incapable
of acquiring distinctiveness. Both refusals were made
final.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
Mere Descriptiveness
Because applicant expressly made its claim of acquired
distinctiveness pursuant to Section 2(f) of the Trademark

1 Serial No. 76383240, filed March 12, 2002, based on use of the
mark in commerce, alleging first use anywhere and use in commerce
as of January 1, 1987.
Serial No. 76383240
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Act in the alternative, we must consider, first, whether
DIGITAL INSTRUMENTS is merely descriptive in connection
with the identified services. The examining attorney
contends that the mark merely describes the goods which are
the subject of applicant’s services; that such goods are
“‘instruments’ that provide and/or process highly precise
‘digital’ measurements” (brief, p. 6) within the common
dictionary meanings of the terms “digital” and
“instruments”; and that the composite mark has the same
descriptive meaning as the individual components thereof.
Applicant contends that the terms “digital” and
“instruments” are so vague and variously defined, whether
considered individually or in the composite, that the mark
does not immediately convey the nature of applicant’s
services or the goods that are the subject of those
services; that the record contains no evidence that the
composite mark would be connected by relevant consumers to
atomic force microscopes or services related thereto; and
that the examining attorney has improperly dissected the
mark in reaching her conclusion.
The evidence in the record includes dictionary
definitions of “digital,” “instruments” and “metrology,”
and excerpts from various Internet websites submitted by
Serial No. 76383240
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both applicant and the examining attorney. “Metrology” is
defined in The American Heritage Dictionary of the English
Language (4th ed. 2000) as “1. The science that deals with
measurement. 2. A system of measurement.” The term
“digital” is defined in pertinent part as follows:
3 – of, relating to, or using calculation by
numerical methods or by discrete units, 4 – of or
relating to data in the form of numerical digits,
5 – providing a readout in numerical digits ….
(Merriam-Webster Dictionary, www.m-w.com)

4 – expressed in numerical form, especially
for use by a computer, 5 – Computer Science – of
or relating to a device that can read, write or
store information that is represented in
numerical form …. (The American Heritage
Dictionary of the English Language, 4th ed. 2000,
www.dictionary.reference.com)

3 – Electronics – of a circuit or device
that represents magnitudes in digits …. (WordNet
1.6, 1997, Princeton University,
www.dictionary.reference.com)

Additionally, applicant would have us note that the
term “digital” includes the following definitions that are
not at all pertinent to the services involved in this case:
1 – of or relating to the fingers or toes …
6 – relating to an audio recording method in
which sound waves are represented digitally (as
on magnetic tape) so that in the recording wow
and flutter are eliminated and background noise
is reduced. (Merriam-Webster Dictionary, www.m-
w.com)

The term “instrument” is defined in pertinent
part as follows:
Serial No. 76383240
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4 – a device for recording, measuring, or
controlling …. (The American Heritage Dictionary
of the English Language, 4th ed. 2000,
www.dictionary.reference.com)

1 – a device that requires skill for proper
use …. (WordNet 1.6, 1997, Princeton University,
www.dictionary.reference.com)

Additionally, applicant would have us note that the
term “instrument” includes the following definitions that
are not at all pertinent to the services involved in this
case:
(1) a means by which something is done; an
agency. (2) one used by another to accomplish a
purpose; a dupe. (5) Music – a device for
playing or producing music. (6) a legal document,
such as a deed, will, mortgage, or insurance
policy. (The American Heritage Dictionary of the
English Language, 4th ed. 2000,
www.dictionary.reference.com)

The examining attorney submitted a product list from
applicant’s website; however, the use of the term DIGITAL
INSTRUMENTS therein is arguably a trademark use. The
examining attorney also submitted excerpts from several
third-party websites wherein the phrase “digital
instrument” is used. One site appears to be sponsored by a
company named Quesant, which is described as a manufacturer
of scanning probe microscopes and, as applicant admits, a
competitor of applicant. Quesant states the following in a
paragraph describing its business: “SPM [scanning probe
Serial No. 76383240
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microscope] usage continues to grow as a wide range of
digital instruments.” Applicant contends that this is an
infringing use of its mark and that the sentence is
nonsense. We agree with applicant that this evidence is of
minimal probative value due to the puzzling nature of the
sentence.
The following are examples from the other excerpted
websites:
Guideline Instruments [Ontario, Canada] …
can claim a track record and an outstanding
reputation unparalleled in the field of
electrical metrology.
In 1967 two of [the company’s products], the
resistance and voltage comparators[,] were
awarded the prestigious U.S. Industrial Research
Award as one of “the most significant new
products of the year.” …
Our presence in these laboratories is due in
part to the fact that today’s standards
laboratories are required to make measurements
well outside the precision and accuracy of
conventional potentiometers and digital
instruments. To satisfy these requirements,
Guildline manufactures a broad range of
metrological instrumentation including …
nanovoltmeters …. (www.guideline.ca)

Why Calibrate Test Equipment?
You’re serious about your electrical test
instruments. You buy top brands, and you expect
them to be accurate. You know some people send
their digital instruments to a metrology lab for
calibration, and you wonder why. …
Calibration typically requires a standard
that has at least 10 times the accuracy of the
instrument under test. …
Serial No. 76383240
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What knocks a digital instrument “out of
cal?”
While this article focuses on calibrating
DMMs, the same reasoning applies to your other
handheld test tools, including process
calibrators. (www.coleparmer.com)

New Instruments Bring Functions of Recently
Released PXI Mixed-Signal Suite to Desktop PCs …
“In a matter of months, we leveraged the
SMC architecture that we developed for the PXI
instruments to quickly deliver this complete set
of analog and digital instruments for PCI,” said
Tim Dehne. … (www.siliconstrategies.com)

Bowers Metrology [UK] have recently been
awarded a prestigious order for supplying
measuring instruments to the Bae Eurofighter
Combat Aircraft project. This groundbreaking
aircraft requires a completely new and innovative
approach to measurement ….
Bowers over the last few years has been busy
extending their range to encompass every
conceivable hand-held measuring instrument under
the System Synergy banner.
This comprehensive range of digital
instruments has the advantage of a common two
button operating mode, all with an RS232 output
for data collection, improved ergonomics for ease
of use and shop-floor ruggedness at a cost
effective price. (www.manufacturingtalk.com)

The examining attorney also submitted an excerpt from
ThomasNet – Thomas Register Directory containing a listing
of companies under the heading “Metrology Instruments.”
The following entries are excerpted descriptors for several
of the twenty-five companies listed:
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• Gage calibration center, length-measuring machines,
bore gages, … machinists’ levels …
• complete line of pressure measurement instruments …
analog and digital pressure transducers, hand-held
calibrators …
• New flexible shaft measuring systems demonstrate
speed, versatility, accuracy …
• Applications include mapping, industrial metrology and
navigation and control …
• Full line of optical inspection instruments … a new
low-cost depth-measuring microscope with miniature
color viewing system …
• Products include 3D measurement hardware, software and
service products to bring measurement to the factory
floor…
• Complete line of electronic digital indicators
available…
• Portable, non-contact, laser-based dimensional
measurement and surface contour analysis instruments …
• Mfr. of automated vision and laser-based 3D measuring
systems with sub-micron accuracy for surface finish
and structure. Non-contact measurements include
profiles, flatness, waviness, step height, contours,
roughness and warpage of most materials…

Applicant submitted its informational brochure as a
specimen of use and copies of its advertisements and
product literature; five third-party registrations and an
application for marks that include the individual terms
“digital” or “instruments”; a list of four third-party
registrations for marks including either the terms
“electrical,” “apparatus,” “device” or “equipment,” that
applicant argues are so broad as to be non-descriptive;
excerpts from third-party websites that use the individual
terms “digital” or “instrument” in connection with goods
Serial No. 76383240
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unrelated to those herein; website excerpts for companies
in the fields of nanotechnology and molecular imaging to
show that other companies in applicant’s field do not use
the term “digital instruments”; and applicant’s declaration
of facts in support of its alternative Section 2(f) claim.
The third-party registrations are shown below:
• DIGITAL TEST LAB for consumer research, analysis and
news services relating to digital products (Reg. No.
2663250);
• LEARNING INSTRUMENTS for computer hardware and
software, INSTRUMENTS disclaimed (Reg. No. 2019507);
• CONTROL INSTRUMENTS for electronic gas detection
meters, INSTRUMENTS disclaimed (Reg. No. 1468036);
• DIGITAL RESEARCH TECHNOLOGIES for computer
peripherals, DIGITAL and TECHNOLOGIES disclaimed (Reg.
No.2254252);
• DIGITAL NATURE TOOLS for computer software, DIGITAL
disclaimed (Reg. No. 2264382); and
• Pending application (No. 75909953) for DIGITOOL
INSTRUMENTS for scientific measuring equipment,
INSTRUMENTS disclaimed.

The fact that the terms “digital” and “instruments”
are disclaimed in all but one of these registrations tends
to support the examining attorney’s position that the
individual terms are descriptive. Applicant’s list of
registrations with other allegedly broad terms are of no
probative value because applicant did not submit copies of
those registrations and, thus, we do not know what register
the marks are on or whether they include disclaimers. In
any event, these registrations, for marks so different from
Serial No. 76383240
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the mark involved herein, are of limited value because we
must decide each case on its particular facts.
The information contained in applicant’s material
about its services and its featured goods includes the
following statement:
Scanning Probe Microscopes (SPMs) are a
family of instruments that are used to measure
properties of surfaces, …. In their first
applications, SPMs were used solely for measuring
3D surface topography and, although they can now
be used to measure many other surface properties,
that is still their primary application. SPMs
are the most powerful tools for surface metrology
of our time, measuring surface features whose
dimensions are in the range from interatomic
spacing to a tenth of a millimeter. … As opposed
to optical microscopes and Scanning Electron
Microscopes (SEMs, TEMs), SPMs measure surfaces
in all three dimensions: x, y and z. Like SEMs,
SPMs image and measure the surface of the sample.
(applicant’s specimen – Exhibit 1 to Response
received January 9, 2003. Emphasis added.)

Another excerpt from applicant’s own materials
entitled “Triple DAC Configuration in NanoScope
Controllers, Superior Control, Resolution, and Flexibility”
includes the following statements:
The system controller is a critical
component of any … SPM system. … The DAC
configuration is an integral part of the digital
feedback loop in any controller, and plays a
major role in its level of control, accuracy,
resolution, and noise.
. . .
A digital-to-analog converter (DAC) converts a
digital output signal into an analog voltage.
Serial No. 76383240
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SPMs use DACs in their feedback loop to convert a
digital control signal from the computer into an
analog voltage, which is sent to the
piezoelectric scanner for movement in x, y, and
z. (Emphasis added.)

The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in
connection with which it is used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Furthermore, when
the mark involves more than a single term, we must consider
whether the mark as a whole is merely descriptive and not
just the individual elements. In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
While applicant argues that the multiple different
definitions for the two words comprising its mark require a
multistage reasoning process to determine the nature of
applicant’s goods, we note that it is well-established that
Serial No. 76383240
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the determination of mere descriptiveness must be made not
in the abstract or on the basis of guesswork, but in
relation to the goods or services for which registration is
sought, the context in which the mark is used, and the
impact that it is likely to make on the average purchaser
of such goods or services. In re Tower Tech Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); see also In re Patent &
Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); In re American Greetings Corporation, 226 USPQ
365 (TTAB 1985); and In re Recovery, 196 USPQ 830 (TTAB
1977).
The literature submitted by applicant touts its
research and development and the individualized service it
provides, and describes its products as leading the field.
It is clear that applicant’s products relating to its
services are highly sophisticated scientific “instruments”
that utilize “digital” technology. There is no question
that the individual terms retain their ordinary dictionary
meanings in the composite mark DIGITAL INSTRUMENTS.
“Instruments” describes the products that are the subject
of applicant’s identified services. “Digital” modifies
“instruments” and further describes a salient feature of
Serial No. 76383240
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these products because, certainly, without digital
technology, these highly sophisticated products would not
exist. The combination of these two words into the term
DIGITAL INSTRUMENTS does not create a connotation that is
unique or different from the ordinary meanings of the two
individual words. Further, the mere fact that the two
words have broad meanings, either individually or as a
composite, does not render the mark registrable. See In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988).
It is apparent, as applicant points out, that the
purchasers of its identified goods and services are highly
sophisticated in this area of technology and that the
question of mere descriptiveness of a mark must be
determined not from the standpoint of all consumers, but
rather from the standpoint of the relevant purchasing
public of the goods and/or services for which registration
is sought. Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991); and In re
Montrachet S.A., 878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed.
Cir. 1989). However, there is no indication that the
relevant sophisticated purchasers would attribute to the
term DIGITAL INSTRUMENTS any unique connotation other than
the common dictionary meanings of the two individual words
Serial No. 76383240
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and, thus, they, too, would perceive of the mark as merely
descriptive in connection with the identified goods and
services.
In conclusion, when applied to applicant’s goods and
services, the term DIGITAL INSTRUMENTS immediately
describes, without conjecture or speculation, a significant
feature or function of applicant’s goods and services, as
indicated above. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers of and
prospective customers for applicant’s goods and services to
readily perceive the merely descriptive significance of the
term DIGITAL INSTRUMENTS as it pertains to applicant’s
goods and services.
Genericness
In view of our finding that the mark DIGITAL
INSTRUMENTS is merely descriptive in connection with the
identified services, we now consider, further, whether it
is a generic term for such services. The examining
attorney contends that, as the two individual terms are
defined in the dictionary evidence, the goods which are the
subject of applicant’s services are “digital instruments”;
and that the evidence of record shows that the term “is
Serial No. 76383240
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used by members in the relevant field of metrology as the
generic name of the class of goods into which the
applicant’s goods clearly fall and about which the
applicant’s services are concerned” (brief, p. 9); and that
the mark “defines the name of a category of INSTRUMENTS
that use or incorporate DIGITAL parameters or measurements”
(brief, p. 11).
A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001), citing H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528 (Fed. Cir. 1986). The test for determining whether a
mark is generic is its primary significance to the relevant
public. Section 14(3) of the Act; In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999);
Magic Wand Inc. v. RDB Inc., supra; and H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc.,
supra. The examining attorney has the burden of
establishing by clear evidence that a mark is generic and
thus unregistrable. In re Merrill Lynch, Pierce, Fenner
and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir.
Serial No. 76383240
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1987). Evidence of the relevant public’s understanding of
a term may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals,
newspapers, and other publications. In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985).
As noted, supra, the services identified in the
application are “scientific and technological research and
development of products for others, namely, atomic force
microscopes and scanning tunneling microscopes, in the
field of metrology.” Therefore, we must, first, determine
the genus of these services. The examining attorney
contends that the focus of applicant’s services is to
develop the particular noted products and, therefore, if
the mark identifies the genus of the products produced by
applicant in connection with its research and development
services for others, then the mark is also generic in
connection with these services.
Although the examining attorney makes no specific
finding as to the genus of the relevant goods or services,
she refers several times to “the field of metrological
measurement.” Her evidence encompasses the entire field of
metrological measurement, which appears to include, at one
Serial No. 76383240
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end of the spectrum, small hand-held measuring devices for
use in a shop and, at the other end of the spectrum, highly
sophisticated microscopes and devices for measuring aspects
of sub-atomic particles. We find that this is so overly
broad as to be meaningless as a genus for applicant’s
services. In the absence of any other evidence herein, we
find that the genus of services is more appropriately
narrowed to those services pertaining to the research and
development of atomic force microscopes and scanning
tunneling microscopes. An example, by analogy, would be if
we had to determine whether a mark pertaining to tractor-
trailer trucks is generic. A genus of vehicles would be
over-broad because it would encompass all vehicles from
tractor-trailer trucks to motor scooters; and evidence that
the term is generic for motor scooters or a part for
scooters would be irrelevant unless we had specific
evidence also pertaining to the use of the term in
connection with tractor-trailer trucks or parts therefor.
Thus, the correct genus in our example would be much
narrower - tractor-trailer trucks rather than vehicles. It
is yet another step to determine what would be the
appropriate genus for services related thereto.
Serial No. 76383240
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In this case, we must agree with applicant that, aside
from the dictionary definitions, the evidence of record
primarily pertains to products that are quite different
from those that are the focus of applicant’s services,
albeit within the broad field of metrology. However, there
is insufficient evidence from which to determine whether
relevant purchasers would view the composite mark “digital
instruments” as the name of the class of services to which
applicant’s services belong, or that it would similarly
name the class of goods which are the subject of
applicant’s services. Therefore, we must conclude that the
examining attorney has fallen far short of meeting her
stiff burden of establishing genericness herein.2
Acquired Distinctiveness
Having determined that the mark is merely descriptive
in connection with the identified services, but that
genericness has not been established, we now consider
applicant’s claim of acquired distinctiveness under Section
2(f) of the Trademark Act. Applicant specifically
requested that, in the event the mark is found not to be
generic, the examining attorney address whether its

2 We note, however, that in reaching our decision we did not find
applicant’s arguments regarding the vagueness of the involved
terms (see In re Analog Devices Inc., supra), or the third-party
registrations for either the individual words comprising the mark
or for other marks to be persuasive.
Serial No. 76383240
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evidence establishes acquired distinctiveness. The
examining attorney should have considered the sufficiency
of the claim of acquired distinctiveness in the alternative
during examination, regardless of applicant’s request.
However, other than her statements that the mark is generic
and, thus, no amount of evidence of acquired
distinctiveness would suffice, the examining attorney made
no comment at all about applicant’s evidence of acquired
distinctiveness until her brief in this appeal. In her
brief (p. 12), the examining attorney made the following
statement: “[a]pplicant has submitted evidence of long use
and substantial sales, advertising expenditures and
promotional efforts related to its DIGITAL INSTRUMENTS
mark. The examiner does not challenge that the applicant
has indeed used its mark extensively.”
We conclude that the examining attorney’s statement
coupled with the absence of any statements finding
deficiencies in applicant’s claim of acquired
distinctiveness to constitute an acceptance, in the
alternative, by the examining attorney of the Section 2(f)
claim. We find, moreover, that the declaration submitted
by applicant in support of its claim of acquired
distinctiveness contains facts sufficient to support this
Serial No. 76383240
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conclusion. The declaration attests to use of the mark in
connection with the goods and services for more than
fifteen years; that applicant produced the first atomic
force microscope, is the leader in this field, and holds
numerous patents; that applicant has won awards for its
products and research; that its DIGITAL INSTRUMENTS
scanning probe microscope systems range in price from
$80,000 to $1,600,000 and are primarily purchased by
universities; and that, in view of the pricing and limited
consumer base, its annual sales and advertising are
substantial.
Decision: The refusal under Section 2(e)(1) of the
Act on the ground that the mark is merely descriptive is
affirmed; however, the refusal on the ground that the mark
is generic is reversed. Applicant’s amendment to seek
registration under Section 2(f) of the Act is accepted.
The registration will issue in due course on the
Principal Register with a claim of acquired distinctiveness
under Section 2(f) of the Trademark Act.
Serial No. 76383240
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Bucher, Administrative Trademark Judge, concurring in part
and dissenting in part:

Earlier in the digital age, a panel of this Board was
most prescient in anticipating the present case. In
discussing the term “analog devices,” the Board identified
its emerging counterpart, “digital devices,” as a
hypothetical term that a future applicant might argue is
too “broad,” “nebulous” or “vague” to be deemed generic:
We are satisfied from the foregoing evidence
that “analog devices” is a generic
designation, within the guidelines set forth
in the Ginn decision, supra, and that the
term cannot be exclusively appropriated by a
single entity. Applicant argues that the
term is too nebulous and vague to be
commercially useful for competitors of
applicant to use to describe any products.
However, while we readily concede that the
category of products which the term “analog
devices” names encompasses a wide range of
products in a variety of fields, we do not
believe this fact enables such a term to be
exclusively appropriated by an entity for
products, some of which fall within that
category of goods. For example, while terms
such as “digital devices,” “computer
hardware,” “computer software” and
“electronic devices,” just to name a few,
may be broad and even nebulous terms,
nevertheless, these terms may not be
exclusively appropriated but must be left
for all to use in their ordinary generic
sense.

In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988)
[emphasis supplied].
Serial No. 76383240
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The word “Instruments”
According to dictionary entries of record, an
“instrument” is ‘a device for measuring’ … ‘that requires
skill for proper use.’ Applicant’s trade name is “Veeco
Instruments,” and not surprisingly, applicant uses the term
“instruments” in a generic fashion to name the devices that
it allegedly researches and develops for others.
According to applicant’s website, scanning probe
microscopy (SPM) describes a family of instruments that
measure the surface properties of materials to a high
degree of resolution. The relevant instruments include
atomic force microscopes (AFM) and scanning tunneling
microscopes (STM). Consistent with the dictionary
definitions, these high-tech devices certainly require a
high level of skill for proper operation.
The word “Digital”
According to dictionary entries of record, “digital”
is defined, inter alia, as ‘providing a readout in
numerical digits,’ ‘a device that can read, write or store
information,’ or ‘a device that represents magnitudes in
digits.’3

3 We must look at the alleged mark in the context within
which it is used. Hence, I do not take seriously applicant’s
Serial No. 76383240
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As pointed out by the majority, “without digital
technology, these highly sophisticated products would not
exist.” Indeed, various dictionary connotations of the
word “digital” keep resurfacing when one reads through the
specification of applicant’s named devices. For example,
these instruments rely on proprietary data-acquisition and
image-processing software to produce high quality digital
images. As pictured, some SPM instruments have digital
displays (not unlike digital watches) as well as analog
displays. Applicant’s website explains that an integral
hardware component of any SPM system is a sophisticated
controller. A digital signal processor (DSP) converts
analog signals to digital signals and can convert digital
output signal into an analog voltage. It appears various
SPM instruments have a “digital feedback loop” while others
discuss “analog feedback systems.” As opposed to having
components with mixed analog and digital circuitry,
presumably fully-digital microscopes implement all the
controller system functionalities in software.

argument that this designation cannot be generic because the word
“digital” could also mean, for example, “relating to the fingers
or toes.”
Serial No. 76383240
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The field of metrology
In 1998, applicant acquired a company known as Digital
Instruments – at that point a manufacturer and distributor
of scanning probe microscopes like AFMs.4 The affected
instruments do surface metrology, and are used primarily in
basic research applications at universities around the
world (materials science, nanotechnology, life sciences,
etc.), in national standards labs, as well as increasingly
in commercial projects, such as wafer/chip testing in the
semiconductor industry, aerospace and biotechnology.
Applicant’s highly sophisticated scientific “instruments”
all fit into the broad field of “metrology,” or the science
of measurement.
This is relevant to the first question of Marvin Ginn,
supra, which focuses on the genus of applicant’s services.
The Trademark Examining Attorney concluded that the genus
of the relevant services encompasses activities related to
the development, sale and distribution of metrological
devices generally. The majority objects to this as being

4 According to the letterhead submitted as the specimen of
record – and consistent with other information in the record –
this unit has now become part of the “Veeco Metrology Group”
within Veeco Instruments.

Serial No. 76383240
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overly broad. Rather, the majority holds that the genus of
services should be narrowed to researching and developing
scanning probe microscopes.
As gleaned from applicant’s literature and the
Internet sources the Trademark Examining Attorney placed
into the record, there is quite a range in the scale of
precision measurements within the field of metrology.
• Applicant’s nanoscale metrological devices are able
to create three-dimensional images on a scale of one
to 100 nanometer(s) (e.g., a nanometer is one-
billionth of a meter). This represents imagery and
manipulation at the atomic or molecular level.
• At the other end of the spectrum of metrological
instruments, one finds more conventional measuring
tools like mechanical micrometers that have been
available in industrial machine shops for decades.
• In between machine tools and nanotechnology, along a
continuum of orders of magnitude of measurement, are
increasingly precise metrological instruments.
• For example, right before getting to the twenty-
first century nanoscale, one reaches twentieth-
century microtechnology -- matter on the size scale
of microns (expressed as 1 millionth of a meter, one
Serial No. 76383240
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micrometer, 10-6 meters, or 1µm). Microelectronics,
or integrated circuits, which form the basis of
substantially all of our digital products, have
traditionally been fabricated in the sub-micron
dimension.
• Because there are not clear lines of delineation
here – both in fundamental research and in
commercial manufacturing, there is substantial
overlap in the range of some instruments between the
microscale and nanoscale.5
Third party uses of the term “digital instruments”
Against this background, it certainly behooves us to
look more closely at the third-party uses of the term
“digital instruments” within the field of metrology that
the Trademark Examining Attorney has placed into the record
to determine their relevance and probative value to the
question of genericness.
(1) Bowers Metrology, a company in the United
Kingdom, custom built high precision gauging

5 In fact, applicant’s own literature demonstrates this range
from nanoscale to features that one can see with the naked eye:
SPMs are the most powerful tools for surface metrology of
our time, measuring surface features whose dimensions are
in the range from interatomic spacing to a tenth of a
millimeter. [Emphasis supplied].
Serial No. 76383240
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instruments for testing the quality of construction on
the Typhoon EuroFighter at BAe Systems’ Samlesbury
plant. These testing devices now have digital
readouts as contrasted with the older analog dials.
They also offer a standard computerized interface for
data communications equipment [RS232 or EIA232], or a
digital link to a computer. According to the article,
in order to guarantee that the rivets are sufficiently
flush with the skin of the aircraft, Bowers’
“conventional equipment was rendered practically
useless.” Stealth technology requires a high degree
of accuracy (e.g., on the order of microns).
(2) The Cole-Parmer article focuses on
calibrating digital multimeters (DMMs) and process
calibrators. A DMM samples electrical inputs to give
very accurate readings of voltage, current, or ohms,
while a process calibrator measures flows of
electricity accurately to the scale of millivolts
and/or milliamperes. Again, these are measurements on
an extremely small scale.
(3) Guideline Instruments of Ontario, Canada
manufactures a broad range of metrological
instrumentation including nano-voltmeters. Guideline
Serial No. 76383240
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provides nanoscale electric metrology for national
standards laboratories, much as applicant provides
nanoscale surface metrology to these same customers.
According to Guideline’s webpage, their state-of–the-
art devices are also required to make measurements
well outside the precision and accuracy of
conventional potentiometers and older digital
instruments.
(4) The web page from the Australian National
Measurement Laboratory,6 like the Cole-Parmer article,
points out that calibration is a critical piece of
characterization and metrology. In fact, these
articles make reference to various specific numbered
standards set by the International Standards
Organization (ISO) – an International organization
working with the United Nations that maintains
standards for all applications of high technology for
global industry.
(5) The Trademark Examining Attorney shows that
ThomasNet.com, the online listing of industrial
information, products and services provided by

6 This is the Australian counterpart to the National
Institute of Standards & Technology (NIST), the standards-
defining agency of the US government (formerly the National
Bureau of Standards).
Serial No. 76383240
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ThomasRegister, has a category of “Digital
Instruments” where the products are industrial
measuring instruments, gauges, force and load
indicators, precision imaging, inspection,
measurement, and temperature-control instrumentation,
etc. Among the entries the Trademark Examining
Attorney placed into the record, are descriptors such
as “complete line of electronic digital indicators
available …,” “Mfr. of automated vision and laser-
based 3D measuring systems with sub-micron accuracy
for surface finish and structure,” “Non-contact
measurements include profiles, flatness, waviness,
step height, contours, roughness and warpage of most
materials …,” and “analog and digital pressure
transducers,” etc. In fact, individual company’s
listings of specific digital instruments are routinely
paired with analog devices designed to measure the
same metric.
(6) The Silicon Strategies article targeted to
semiconductor professionals contains a discussion of
virtual instrumentation for test, control and design.
Named components include analog inputs and outputs,
digital inputs and outputs, and a digital signal
Serial No. 76383240
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processor. The author highlights the ways in which a
dynamic range, flexible-resolution digitizer solves
demanding applications, such as characterization of
high-resolution digital-to-analog converters (DACs) –
itself an integral component of applicant’s goods.
In the language of Marvin Ginn, supra, what is the
genus of applicant’s scanning probe microscopes?
Applicant’s industry uses a variety of ever-broadening
terms for applicant’s field of endeavor, from scanning
probe microscopy to advanced electronic microscopy or
nanoscale metrology. Judging by the evidence of record,
“digital instruments,” while definitely much broader than
any one of these terms, is still an overarching category of
goods that would include applicant’s goods and services.
In short, I would argue from the uses the Trademark
Examining Attorney pulled from the Internet that the goods
that are the focus of applicant’s claimed services are much
closer to these third-party goods and services (e.g.,
micron-scale gauges, calibrators, nano-voltmeters, 3D sub-
micron measuring systems, virtual instrumentation
digitizers, etc.) than the majority has found them to be.
The incredible breadth of the term “digital instruments” is
reinforced by other evidence scattered throughout the
Serial No. 76383240
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record showing use on items such as digital cameras,
electronic keyboards, weather-related instruments, audio
equipment, and the like. However, this widespread usage
does not detract from the usages shown in connection with
goods and services in the field of nanoscale metrology.
How is “Digital Instruments” understood by the relevant public?
I turn then to the second Marvin Ginn question,
namely, whether the term sought to be registered is
understood by the relevant public primarily to refer to
that genus of goods or services.
In the Analog Devices case, the Board dismissed that
applicant’s claims that the term could not be generic
because it was too “nebulous” or “vague.” In a footnote,
the majority expressly dismisses as unpersuasive this
applicant’s claims of “vagueness.” And “nebulous” is a
synonym for “vague.” However, the majority reverses the
Trademark Examining Attorney because “digital instruments”
is an overly broad term. Hence, it follows from their
conclusion that any number of device manufacturers or
merchants of high-tech instruments in a variety of fields
may exclusively appropriate the term “digital instruments.”
I disagree. By analogy, if the category is “things one can
eat,” the term “Food” is hardly “nebulous” or “vague.” And
Serial No. 76383240
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while it covers a multitude of very different items, it is
generic for all of them.
Similarly, we have seen that “digital instrument” is
used in connection with a very wide array of goods. Yet,
its usage in these various contexts carries with it
consistent and specific meanings. It often tells the
consumer that the product has digital readouts, that it
employs state of the art electronics, and in the context of
metrology, that the device is capable of processing
measurements with a high degree of precision.
Accordingly, I conclude from this record that
manufacturers, merchants and ultimate users of a variety of
metrology devices use the term “Digital Instruments”
generically for precision measuring instruments that depend
upon technologies quite similar to electron microscopy,
that have similar digital readouts, etc.
We have seen that applicant, Veeco Instruments, uses
the term “instruments” generically for these goods. Based
upon the dictionary meanings, a digital instrument is a
device with digital readouts, state of the art electronics,
and/or having a high degree of precision in its
measurements. Even the majority concludes, in fairly
compelling and straightforward language, the highly
Serial No. 76383240
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descriptive nature of this combined term (supra pp. 12 –
14). In spite of an unequivocal position on
descriptiveness, the majority is hesitant to conclude that
the relevant purchasers would view the composite mark
“digital instruments” as the name of the class of goods or
services involved herein.7
However, based on the entire record, I find that
“Digital instruments” is merely a combination of generic
terms that has no separate or distinct commercial
impression apart from what one who understands the
individual meanings of the terms would expect. In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987);

7 As I read the majority opinion, if my colleagues in the
majority had found sufficient evidence of genericness as to the
involved goods, they would have had no problem taking the
additional step in this case, namely that a term which is generic
for a particular class of goods is also deemed to be generic for
an intimately-related class of services such as designing or
developing those goods. See e.g., In re Log Cabin Homes Ltd., 52
USPQ2d 1206 (TTAB 1999) [LOG CABIN HOMES generic for
“architectural design of buildings, especially houses, for
others”]. See also In re Candy Bouquet International Inc.,
73 USPQ2d 1883 (TTAB 2004) [CANDY BOUQUET generic for retail,
mail, and computer order services in the field of gift packages
of candy]; In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB
2002) [BONDS.COM generic for providing information regarding
financial products and services on the Internet and providing
electronic commerce services on the Internet]; In re A La Vielle
Russie Inc., 60 USPQ2d 1895 (TTAB 2001) [RUSSIANART generic for a
particular field or type of art and also for dealership services
directed to that field]; In re Bonni Keller Collections Ltd., 6
USPQ2d 1224 (TTAB 1987) [LA LINGERIE generic for “retail store
services in the field of clothing”]; and In re Half Price Books,
Records, Magazines, Incorporated, 225 USPQ 219 (TTAB 1984) [HALF
PRICE BOOKS RECORDS MAGAZINES generic for “retail book and record
store services”].
Serial No. 76383240
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In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB
1994); and In re Lowrance Electronics, Inc., 14 USPQ2d 1251
(TTAB 1989).
I find that the dictionary definitions alone are
compelling. Assuming arguendo that the terms “digital” and
“instruments” are individually considered generic,
admittedly, a combination of generic terms can sometimes
result in composite marks that are protectable.8 In light
of the admonitions of our primary reviewing Court in
American Fertility Society, supra, although we still
consider the dictionary definitions of the individual words
as evidence of the likely perception of the whole term, the
Trademark Examining Attorney must meet the rather heavy
burden placed on the United States Patent and Trademark
Office to demonstrate genericness through additional
evidence of generic uses of the term.
Under the standard set by American Fertility Society,
I find that the evidence of record of media usage of the
term “digital instruments” shows it used as a lower case,

8 See In re Chesapeake Corp. of Virginia, 164 USPQ 395 (CCPA
1970); Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co.,
186 USPQ 557 (TTAB 1975), aff’d., 189 USPQ 348 (CCPA 1976);
California Cooler Inc. v. Loretto Winery Ltd., 227 USPQ 808 (9th
Cir. 1985); Texas Pig Stands, Inc. v. Hard Rock Cafe Int'l.,
Inc., 21 USPQ 2d 1641 (5th Cir. 1992), reh’g., en banc, denied, 23
USPQ 2d 1639 (5th Cir. 1992).
Serial No. 76383240
- 35 -
generic term for precision measuring instruments that are
not analog devices.
Admittedly, there is minimal evidence establishing
generic use of the term “digital instruments” by
manufacturers, distributors, sellers or consumers of
competitive goods. And applicant’s own web pages made part
of the record do not contain any self-defeating uses of
“digital instruments,” i.e., use in a way that would be
perceived as generic. However, its use of the term in the
manner of a service mark is not determinative of the
ultimate issue in this case. Any business could present a
generic term on its website in a technically correct
trademark fashion. But such a self-serving use would not
reveal the likely perception of the relevant public when the
term is displayed in its normal fashion.
Scanning probe microscopes are not “a newly created
product category.” See In re Ferrero S.P.A., 24 USPQ2d
1155 (TTAB 1992); and American Fertility Society at 1345.
Rather, this type of product has been available in the
marketplace for almost two decades. Yet, the Trademark
Examining Attorney found only a single example of a
competitor’s use of this exact phraseology in relation to
scanning probe microscopy, and less than a dozen uses in
Serial No. 76383240
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conjunction with nanoscale (and related microscale)
metrological devices.
What might be the explanations for this dearth of
third-party uses in the field?
For one, “digital instruments” is, indeed, a very
broad term, and may have multiple connotations.
Nonetheless, I would contend that all of these uses –
whether signifying the form of the readouts, the computer
hardware or the precision of the measurements, each and
every one of the identified uses is still a generic usage.
Applicant positioning in the field may also be
relevant. Applicant noted that more than fifteen years ago
“[its] predecessor in interest produced the first
commercially available atomic force microscope ….” On its
website, applicant touts itself as “The World Leader in
Scanning Probe Miscroscopy.” The record contains claims
that applicant “dominates the scanning probe microscope
market” and “applicant has sold more scanning probe
microscopes than all other competitive systems combined.”
All the above factors may well account for the fact
that most of applicant’s competitors have avoided use of
the designation “digital instruments.” Nonetheless, having
established that applicant’s “instruments” are
Serial No. 76383240
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characterized as “digital” in a variety of critical ways, I
conclude that “digital instruments” is one of those generic
terms that any manufacturer (e.g., including applicant’s
competitors), any merchant or any user of these scanning
probing microscopes should be permitted to use to refer to
this item, irrespective of its source.
As to the sole third-party usage in connection with
competitive goods, in a response to an Office action,
applicant took the position that “[a]pplicant strongly
believes that the term ‘digital instruments’ was inserted
by Quesant in an attempt to divert legitimate customers of
the Applicant to Quesant’s website.” Of course, this
exchange puts into sharp focus a critical query, the answer
to which separates me from my colleagues in the majority:
Can one of applicant’s competitor -- also a leading
scanning probe microscope manufacturer, make the claim that
it is “supplying quality digital instruments for metrology
scanning” without potentially infringing applicant’s
rights?
Furthermore, while the majority finds this term to be
merely descriptive, I question the logic of how others in
the field of nanoscale metrology could even use the term
“digital instruments” in a manner that would be merely
Serial No. 76383240
- 38 -
descriptive, but not generic? And if others can use the
phrase in a descriptive (or generic) manner, why should
applicant be entitled to an exclusive registration even on
the Supplemental Register? When used by others in the
field of metrology, I conclude that “digital instruments”
could be perceived as nothing other than the name of high
technology measuring devices characterized by digital
readouts, digital inputs and outputs, etc.9
I do appreciate the harsh result that flows from a
finding by this Board and/or by our reviewing Court that a
term is a generic designation. However, the other side of
the coin is a real public policy interest in securing for
all competitors the unencumbered right to use the names of
generic terms (“what-are-you”) for goods and services.
After all, I am sure that the Court in American Fertility
Society did not change the notion that “[a]ll of the
generic names for a product belong in the public domain.”

9 See Filipino Yellow Pages Inc. v. Asian Journal
Publications Inc., 198 F.3d 1143, 53 USPQ2d 1001 (9th Cir. 1999)
[“In light of the evidence presented by [defendant], it would
seem that under the ‘who-are-you/what-are-you’ test, the term
‘Filipino Yellow Pages’ is generic. … Giving [plaintiff]
exclusive rights to the term ‘Filipino Yellow Pages’ might be
inappropriate because it would effectively” grant a monopoly].
See also Blinded Veterans Association v. Blinded American
Veterans Foundation, 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir.
1989) [Ginsburg, R.B., J. held “‘blinded veterans’ is generic
when used to refer to once-sighted persons who served in the
armed forces,” and the BLINDED VETERANS ASSOCIATION name
therefore was not entitled to trademark protection].
Serial No. 76383240
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In re Sun Oil Company, 426 F.2d 401, 165 USPQ 718, 719
(CCPA 1970).
Is this term Merely Descriptive?
The issue has also been joined as to whether this
matter should be refused as being merely descriptive and
lacking in acquired distinctiveness during the relevant
time period. While my reasoning may be somewhat different,
I reach the same conclusion as does the majority on this
question. Namely, I find that all the same evidence
reviewed above to support genericness also demonstrates,
a fortiori, that the term was merely descriptive in 1987
and continues to be merely descriptive to the present.
Applicant’s showing of Acquired Distinctiveness
If applicant’s proposed mark is generic, as I have
concluded it is, then no amount of evidence of acquired
distinctiveness can establish that the mark is registrable.
In re Northland Aluminum Products, Inc., supra at 964.
Even long and successful use of a term does not
automatically convert a generic term into a non-generic
term. In re Helena Rubinstein, Inc., 410 F.2d 438,
161 USPQ 606, 609 (CCPA 1969). However, if I were to agree
with the majority that this term is not generic, for the
Serial No. 76383240
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sake of completeness, I turn to the sufficiency of
applicant’s proffered showing in support of its claim of
acquired distinctiveness under Section 2(f) of the Act. On
this issue, it is applicant’s burden to establish a prima
facie case of acquired distinctiveness. In re Hollywood
Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)
[“There is no doubt that Congress intended that the burden
of proof [under Section 2(f)] should rest upon the
applicant"]. Further, as an alleged “mark’s
descriptiveness increases,” it is logical that the amount
of proof required to demonstrate acquired distinctiveness
likewise increases. Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988). Even if “Digital Instruments” is not generic
for applicant’s services, it must be considered to be
highly descriptive of them, in which case that standard is
extremely difficult to meet.
The question is whether the declaration submitted by
applicant in support of its claim of acquired
distinctiveness contains facts sufficient to support such a
finding. The declaration attests to use of the mark in
connection with the goods and services for more than
Serial No. 76383240
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fifteen years, and that its levels of annual gross sales
and advertising expenditures have been substantial.
I find that applicant may well have enjoyed
significant dollar sales of the involved products over a
period of more than fifteen years. As a result of early
entry into the field, a series of acquisitions, etc., it
may well be the dominant player in this niche market.
However, I find in light of this record, where the applied-
for matter is so highly descriptive, that applicant has not
provided persuasive evidence of acquired distinctiveness.
The statement made by Mr. Don R. Kania includes annual
listings of the “ … approximate dollar amounts of gross
sales of products bearing the DIGITAL INSTRUMENTS trademark
… ” Inasmuch as the statement in the declaration
references product sales, it does not appear to be evidence
of acquired distinctiveness for the recited services.
Moreover, it appears as if applicant does continue to
use the “Digital Instruments” trade name in order to retain
within its “Veeco Metrology Group” some of the historic
value associated with the “Digital Instruments” name. On
the other hand, according to applicant’s web pages made
part of the record, applicant has adopted and is promoting
individual product marks on each of the involved goods that
Serial No. 76383240
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it sells (e.g., BioScope, CP-II, Dimension, EnviroScope,
NanoMan, etc.). The “Digital Instruments” trade name,
along with the “di logos” in the letterhead (footnote 5
supra), that serves as the specimen in this application.
While this is the closest thing to service mark usage we
see in this record, nonetheless, it is not at all clear
just how prominently this designation is used in promoting
these research and development services, or what the annual
values of such service are? The most we can conclude is
that applicant has experienced a relatively large dollar
volume of scanning probing microscopes, but that they are
evidently marketed under a variety of other product marks.
Accordingly, without more detail on how “Digital
Instruments” is used in promoting the recited services, or
what the value of these services are in relation to the
sale of products, I find applicant’s gross sales to be most
inadequate to support registrabilty of this highly
descriptive matter for the recited services.
My Conclusions:
I would affirm the refusal to register on the ground
that this alleged mark is generic. Moreover, while I
concur with the majority that the term “Digital
Instruments” is merely descriptive under Section 2(e)(1) of
Serial No. 76383240
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the Act, I would also find that this highly descriptive
matter should not be registered under Section 2(f) of the
Act based upon applicant’s claims of acquired
distinctiveness. For all of these reasons, I would affirm
the refusals of the Trademark Examining Attorney, and deny
applicant the issuance of this registration.

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