American Biomimetics Corp.

Trademark Trial and Appeal Board

Feb 3, 1998

No. 74528628re (T.T.A.B. Feb. 3, 1998)

Hearing: Paper No. 17
March 6, 1997 JQ
2/3/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Biomimetics Corporation
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Serial No. 74/528,628
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Stuart E. Beck for applicant.
James A. Rauen, Trademark Examining Attorney, Law Office 103
(Kathryn D. Erskine, Managing Attorney).
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Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by American Biomimetics
Corporation to register the mark AMERICAN BIOMIMETICS
CORPORATION for “financial services in the field of
materials, namely, raising capital, organizing ventures, and
providing financial management in connection with searching
for and creating new materials, development of techniques
for their manufacture in commercial quantities, and research
and engineering in connection with their commercial
utilization” (International Class 36); and “consulting and
research services for others in the field of materials,
Ser No. 74/528,628
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namely, searching for and creating new materials,
development of techniques for their manufacture in
commercial quantities, and research and engineering in
connection with their commercial utilization” (International
Class 42).1
The Trademark Examining Attorney has refused
registration under Section 2(e)(2) of the Act on the ground
that applicant’s applied-for mark, if used in connection
with applicant’s services, would be primarily geographically
descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs, and both
were present at an oral hearing before the Board.
Applicant contends that the Examining Attorney has
improperly dissected applicant’s mark in considering
registrability, and that “while its components are ordinary
words in the English language, the mark is not.” (brief, p.
2) Applicant further argues that “AMERICAN is not being
used to signify that applicant’s services are being provided
for or by Americans or in America or according to an
American system or technique. Rather, AMERICAN is simply
being used to suggest that applicant’s services are of high
quality and are to be desired.” (brief, pp. 5-6) Applicant

1 Application Serial No. 74/528,628, filed May 24, 1994, based on
a bona fide intention to use the mark in commerce. The word
“Corporation” is disclaimed apart from the mark.
Ser No. 74/528,628
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concludes that its applied-for mark, when considered in its
entirety, creates “a unique commercial impression” that is
not primarily geographically descriptive.
The Examining Attorney argues that the primary
significance of the term “American” is geographic and that
applicant’s services come from the geographical place named
in the mark. The Examining Attorney goes on to assert that
the term “biomimetics” is highly descriptive of the services
and that the term “corporation” is an entity designation
without trademark significance. According to the Examining
Attorney, the addition of these terms to the geographic term
does not diminish the primarily geographic significance of
the mark as a whole. In support of the refusal to register,
the Examining Attorney submitted dictionary listings for
“bio-”, “mimetic” and “biomimetic chemistry.”2 The
Examining Attorney also submitted twenty-five excerpts
retrieved from the NEXIS database which, according to the
Examining Attorney, show descriptive uses of the term
“biomimetics.”
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to show that (i) the mark

2 This last listing accompanied the Examining Attorney’s appeal
brief. Pursuant to the Examining Attorney’s request, we have
taken judicial notice of this dictionary definition. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
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sought to be registered is the name of a place known
generally to the public, and that (ii) the public would make
a goods(services)/place association, that is, believe that
the goods/services for which the mark is sought to be
registered originate in that place. In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988), citing In re
Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1987). Where there is no
genuine issue that the geographical significance of a term
is its primary significance and where the geographical place
is neither obscure nor remote, a public association of the
goods or services with the place may ordinarily be presumed
from the fact that the applicant’s own goods or services
come from the geographical place named in the mark. In re
Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
It hardly needs to be said that "America" is
universally known as a geographic name for the United States
of America.3 We find, therefore, that the geographic
significance of "America" (or, in this case, “American”) is
its primary significance4 and that America is neither
obscure or remote.

3We take judicial notice of the listing for "America" in
Webster’s Third New International Dictionary (1976). The word is
defined, in relevant part, as "of or from the U.S."
4 In saying this, we recognize that the term “American” may also
suggest that the involved services are of high quality or are to
be desired. We reiterate, however, that the primary significance
is geographic.
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Having found that the term “American” is a primarily
geographic term, the question becomes whether the composite
mark AMERICAN BIOMIMETICS CORPORATION is primarily
geographically descriptive as contemplated by the statute.
The mere addition to AMERICAN of the descriptive term
BIOMIMETICS and the entity designation CORPORATION does not
change the geographic significance of AMERICAN. The
dictionary listings of record indicate that “biomimetics” is
a term referring to a mimicry or imitation of natural
processes in living systems. In this connection, the NEXIS
excerpts show descriptive uses within the scientific field.
One of the articles includes the following statement:
“Their efforts have even spawned a new field, biomimetics,
whose premise is that humanity can create better materials
and structures by understanding and imitating the way
spiders make their silk. . .” Discover (October 1994).
Another article states that “[t]he field of biomimetics, in
which scientists emulate nature’s own processes for
fashioning high-quality compounds, is emerging with force.”
Science News (February 12, 1994). Other examples include
“the biomimetic character of the system”, “biomimetic
materials”, “biomimetics project”, biomimetic synthesis”,
“biomimetic products” and “biomimetic approach.” Applicant
has failed to offer any persuasive evidence and/or argument
to show that the term “biomimetics” is anything but a merely
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descriptive term as used in connection with applicant’s
consulting, research and financial services which are
rendered in the field of biomimetics.
Simply put, the addition of the descriptive words
“biomimetics” and “corporation” to “American” does not
detract from the primary geographic significance of AMERICAN
BIOMIMETICS CORPORATION when the mark is considered as a
whole. In re Chalk’s International Airlines Inc., 21 USPQ2d
1637, 1639 (TTAB 1991) [PARADISE ISLAND AIRLINES for air
transportation services is primarily geographically
descriptive]. Moreover, as the Board has stated in the
past, the determination of registrability under Section
2(e)(1) should not depend on whether the mark is unitary or
composite. In re Cambridge Digital Systems, 1 USPQ2d 1659,
1662 (TTAB 1986) [the addition of the descriptive word
DIGITAL does not detract from the primary geographic
significance of CAMBRIDGE DIGITAL].
We now turn to the second part of the test as set forth
above, namely, whether the public would make a
services/place association. In the present case, applicant
is located in the United States (specifically, in the state
of Pennsylvania). Having found that the geographic
significance of AMERICAN BIOMIMETICS CORPORATION is its
primary significance and that America is neither obscure or
remote, we presume, from the fact that applicant's own
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services originate from that place, a public association of
the services with the place named in the mark. See: In re
BankAmerica Corporation, 231 USPQ 873, 875 (TTAB 1986) and
cases cited thereat [BANK OF AMERICA primarily signifies an
American bank and, with respect to computerized financial
data processing services which emanate from this country, a
public association of those services with the place named in
the mark (i.e., America) may be presumed]. See also, e.g.:
In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989); and In re
Jim Crockett Promotions, 5 USPQ2d 1455 (TTAB 1987).
Decision: The refusal to register is affirmed.
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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