ABB Inc.

Trademark Trial and Appeal Board

Oct 5, 2011

No. 77849109 (T.T.A.B. Oct. 5, 2011)

Mailed: October 5, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ABB Inc.
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Serial No. 77849109
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Paul R. Katterle for ABB Inc.

Rebecca Miles Eisinger, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney)
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Before Bucher, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

ABB Inc. has filed an application to register
in standard characters on the Principal Register for goods
ultimately identified as “data collection and monitoring
systems for power distribution switchgear comprising
computer hardware and sensors for measuring currents and
temperatures of the switchgear” in International Class 9.1

1 Application Serial No. 77849109, filed October 15, 2009,
alleging a bona fide intent to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).
THIS OPINION IS
NOT A PRECEDENT OF THE
TTAB
Serial No. 77849109
2
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 of its goods.
When the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
January 20, 2011, the examining attorney denied the request
for reconsideration and the appeal was resumed. We affirm
the refusal to register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of the goods or services related to the
mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). 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, or intended to be 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
Serial No. 77849109
3
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single ingredient, quality, characteristic, function,
feature, purpose or use of the goods. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Further, it is
well-established that 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 Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
In support of the refusal, the examining attorney
relies on dictionary definitions for “e” as a prefix
abbreviation meaning “electronic,” and “gear” meaning
“equipment.” Cambridge Advanced Learner’s Dictionary,
retrieved from dictionary.cambridge.org and MSN Encarta
Dictionary, retrieved from encarta.msn.com, attached to the
December 4, 2009 and July 7, 2010 Office Actions. In
addition, she submitted several third-party registrations
for various electronic goods in Class 9 where the letter
“e” or the word “gear” is disclaimed. See, e.g., Reg. No.
3675373 for the mark MEDINOTES E for “computer software for
Serial No. 77849109
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the collection and management of medical patient and clinic
information”; Reg. No. 2637351 for the mark E STAT for
“handheld computer device and software for tracking and
recording data, documenting actions and customer service
activities, and formulating reports, in the field of
sanitation and pest control”; Reg. No. 2896015 for the mark
ROVER GEAR for “wireless information transmission systems
comprised of servers, mobile and desk top computers,
wireless transmission hardware and software for providing
wireless transmission to the Internet and access to central
servers and software for accessing browser based
applications on central servers”; Reg. No. 2685603 for the
mark “SNAP GEAR” for “computer hardware for providing
access to individual or networked computers, for providing
firewall protection to prevent unauthorized access by
others to individual or networked computers, and for
creating virtual private networks within local area
networks or global networks.”
She also attached a copy of applicant’s brochure
describing its low voltage switchgear, which includes the
following excerpts:
In 1990, the Intelligent Motor Control system
with INSUM was the first switchboard including
electronic protection and control devices and
communication interfaces.

Serial No. 77849109
5
Excerpt from applicant’s brochure p. 6, attached to
December 4, 2009 Office Action.
In view of this evidence, the examining attorney
argues that “the entire mark E-GEAR therefore means, in the
context of applicant’s goods, ‘electronic equipment’.” In
making this conclusion, the examining attorney points to
applicant’s explanation of the nature of its goods set
forth below:
The identified goods comprise a system for
collecting data from switchgear that is necessary
for making maintenance and diagnostic decisions
with regard to switchgear. The system monitors
both temperature and current in the switchgear
installation so as to allow a user to identify
areas of concern before they reach failure mode.
Generally, the system includes temperature
sensors for measuring the temperatures in
cubicles of the switchgear, current sensors in
low voltage compartments of the switchgear for
measuring currents, and a computer for receiving
and processing the temperature and current
measurements. The temperature sensors and
current sensors are connected to the computers
through communication buses. The computer also
stores detailed information about the switchgear.
A display is associated with the computer and is
operable to display the temperature and current
measurements as well as the information about the
switchgear.

Based on this description, the examining attorney
contends that applicant’s “own explanation of the goods and
their function makes clear that the system is electronic in
nature (as it features computer hardware) and that it is
equipment suited for a very specific purpose, namely, to
Serial No. 77849109
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help an operator monitor switchgear and make important
decisions about the switchgear’s functioning. The plain
meaning of applicant’s E-GEAR mark is therefore merely
descriptive of the nature of applicant’s goods.” Br. p. 6.
In traversing the refusal, applicant takes issue with
the definitions of “gear” and the prefix “e,” arguing that
they do not encompass applicant’s goods. Specifically,
applicant argues that the definition of “gear” “requires
that the equipment be used by a human to perform an action.
... [but t]he identified goods (monitoring equipment) are
not used by a human to perform an action. The identified
goods can run without any human interaction at all. Thus,
pursuant to the Examining Attorney’s definition of ‘GEAR’,
the identified goods would not typically be considered
‘GEAR.’” Br. p. 3. Further, applicant argues that the
“most prevalent definition of the prefix “e” is “anything
that has moved from paper to its electronic alternative,
such as e-mail, e-cash, etc.” Thus, because applicant’s
goods have not moved from paper to an electronic
alternative, or are transferred via the internet the prefix
“e” does “not convey an immediate idea of the quality or
characteristics of the identified goods.” Br. p. 4.
In addition, applicant posits that the potential
consumers of its goods, substation engineers, “would much
Serial No. 77849109
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more likely associate the term ‘GEAR’ with switchgear (with
which the identified goods are used) rather than with the
identified goods themselves.” Br. p. 4. Applicant argues
that to the consumers of these goods the term E-GEAR would
be incongruous in that switchgear is “typically referred to
as being electrical and not electronic.” Br. p. 5. That
knowledge coupled with the understanding of “GEAR” to be
“switchgear” it would take “a switchgear engineer a series
of mental steps to conclude that ‘E-GEAR’ relates to
electronic monitoring of switchgear.” Id.
We determine the descriptiveness of a term in the
context of the goods in issue, not in the abstract. From
the description set out above the term E-GEAR immediately
describes a significant feature of the goods, i.e., that it
is electronic equipment. We do not subscribe to
applicant’s narrow reading of the definitions for “e” and
“gear.” The examples of use given in the dictionary
definitions, fishing and hiking gear, are just that,
examples of use, they do not limit the scope of application
of the term. Moreover, this electronic equipment is used
by a human to perform an action.
Applicant’s arguments regarding who the potential
consumer would be and how such consumer would perceive the
mark are not supported by evidence. Of course, we must
Serial No. 77849109
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look at the average or ordinary prospective customers of
applicant’s identified goods. In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). Presumably,
the average consumer of “data collection and monitoring
systems for power distribution switchgear comprising
computer hardware and sensors for measuring currents and
temperatures of the switchgear” would certainly know and be
familiar with such technical equipment. Thus, it is
plausible that when the consumer is purchasing or using
data monitors for switchgears the word “GEAR” would evoke
the meaning switchgear such that E-GEAR could be perceived
as electronic monitoring of switchgear. However, this is
no less descriptive.
Applicant’s proposition that it would be incongruous
because switchgear is electrical, does not take into
account that the consumer is viewing the mark in the
context of the computer hardware goods and the meaning
“electronic” is not incongruous in that context.
Viewing E-GEAR as a whole, contrary to applicant’s
argument, the combination of these two terms is not
incongruous nor does it present a unique impression. In re
Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002). Moreover,
the prefix “e” and the word “gear” are not broad and
general as used in connection with applicant’s goods but
Serial No. 77849109
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rather, in a concise manner, inform the consumer that
applicant’s product is electronic equipment and, if the
substation engineer may perceive the even more descriptive
meaning of GEAR, that these electronic goods are for use
with a switchgear.
Thus, we are persuaded that when applied to
applicant’s goods, the term E-GEAR immediately describes,
without conjecture or speculation, a significant feature or
function of applicant’s goods, namely electronic equipment
used in connection with switchgears. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for prospective
consumers of applicant’s goods to perceive readily the
merely descriptive significance of the term E-GEAR as it
pertains to applicant’s goods.
Finally we do not have any doubt that this mark is
merely descriptive in connection with the identified goods.
In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
Decision: The refusal to register is affirmed.