BetaBatt, Inc.

Trademark Trial and Appeal Board

Dec 15, 2008

No. 77036122 (T.T.A.B. Dec. 15, 2008)

Mailed:
December 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BetaBatt, Inc.
________

Serial No. 77036122
_______

Raymond F. Ferrera of Arnold & Ferrera, L.L.P. for
BetaBatt, Inc.

Michael S. Levy, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Grendel, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

BetaBatt, Inc. (“applicant”) filed an intent-to-use
application to register the mark DEC, in standard character
format, for the goods and services identified below:
Power generating and/or storage
devices, namely, batteries deriving
power from nuclear decay processes, in
Class 9; and,

Treatment of radioactive materials
and/or porous substrates for use in the
fabrication of power generating and/or
storage devices, namely batteries
deriving power from nuclear decay
processes; consulting and technical
advisory services relating to the
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 77036122
2
treatment of radioactive materials
and/or porous substrates, and to the
fabrication of power generating and/or
storage devices, namely batteries
deriving power from nuclear decay
processes, in Class 40.

The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. According to the
Examining Attorney, DEC is an acronym for the term “direct
energy conversion,” “direct energy conversion” refers to
batteries and energy generation via radioactive isotopes,
and therefore DEC directly describes a particular type of
energy generation utilizing the nuclear decay of
radioactive materials in applicant’s batteries, as well as
describing the subject of applicant’s services.
To support the descriptiveness refusal, the Examining
Attorney submitted the following evidence:1

1 We do not give any probative weight to the fact that the
Examining Attorney’s search in the GOOGLE search engine for the
term “Direct Energy Conversion” retrieved 22,200 hits. It is
common knowledge that most search engine searches retrieve a
large number of hits and that many of the hits retrieved are
duplicates. Moreover, the “hit list” submitted by the Examining
Attorney to corroborate the number of hits is not probative that
there are 22,200 relevant references. Although some of the
entries are relevant because the text is sufficient to show the
context in which the term at issue is used, many entries may be
so abbreviated that the context regarding the use of term is
unclear. In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006); In re
Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002). Thus, we
cannot conclude that all of the references are relevant.
Serial No. 77036122
3
1. An entry from the AF Acronym Finder website
(www.acronymfinder.com) identifying DEC as
“Direct Energy Conversion.”

2. An article entitled “Nuclear Batteries for
Wireless Sensors” dated March 2006 in the
AutomationWorld website (www.automationworld.com)
identifying “direct energy conversion” as DEC and
as a power source.

3. An article entitled “Energy Conversion and
Storage” dated June 1995 in the Institution of
Energy and Technology website (www.iee.org)
regarding the conversion of raw materials into
energy. The article identifies “Direct Energy
Conversion” as an energy conversion term.
However, it did not reference DEC as an acronym
for “direct energy conversion.”

4. The “Energy Conversion” listing from the
Encyclopedia Britannica website
(http://secure.britannica.com) referencing
“direct energy-conversion” as an efficient way of
transforming energy into electricity. However,
in the excerpt submitted by the Examining
Attorney there was no reference to DEC as an
acronym for “direct energy conversion.”

5. An excerpt from the website for The 5th
International Conference on Fluid and Thermal
Energy Conversion (2006) (www.uic.edu). The
sponsors of the conference were soliciting papers
on thermal energy conversion systems including
“direct energy conversion (DEC).”

6. An article in Pure Energy Systems publicly
accessible online database in field of energy
(i.e., a wiki) (www.peswiki.com) discussing a
project by Potomac Energy Products, LLC to create
energy through “Direct Energy Conversion (DEC).”
The author subsequently used DEC in lieu of the
term “direct energy conversion.”

7. An abstract summarizing a paper entitled “High
Efficiency Magnetic-Nuclear Propulsion/Power
System” (http://www3.inspi.ufl.edu) including a
reference to a “highly efficient power system for
Serial No. 77036122
4
terrestrial applications from the DOE-NERI Direct
Energy Conversion (DEC) Power Production
Program.”

8. An excerpt from an unidentified source that
appears to be a course listing for an online
seminar (http://web.nitc.ac.in/~ee/departmental).
One of the modules is entitled “Direct Energy
Conversion (DEC)” and it references DEC devices.

9. An article, dated July 18, 2005, entitled “2020
Vision – Next generation batteries” published in
the online version of The Peak: Simon Fraser
University’s Independent Student Newspaper
(www.peak.sfu.ca). In its discussion regarding
batteries, the article provides the following:

The Direct Energy Conversion (DEC)
cell is a beta-voltaics-based
“nuclear” battery that can run for
over a decade on the electrons
generated by the natural decay of
the radioactive isotope tritium.
Because tritium’s half-life is
12.3 years, the DEC cell could
provide a decade’s worth of power
for many applications.2

On the other hand, applicant contends that DEC is not
merely descriptive because DEC is not a recognizable
acronym. Applicant does not dispute that DEC stands for
“Direct Energy Conversion.” However, applicant asserts
that the Examining Attorney failed to prove that “the
common everyday purchaser of a battery that is used in
connection with hearing aids or similar medical devices

2 This excerpt was referenced in another website found at
www.core77.com. It appears to be a blog. A similar quote was
excerpted in the Advanced Information Networks website
(www.advancedinformation.net), a website that appears to be
compilation of articles regarding new technology.
Serial No. 77036122
5
will know that DEC stands for direct energy conversion.”
Moreover, there is no evidence that any other company uses
DEC as a trademark.3
Applicant also argues that “DEC is not merely
descriptive because it is not possible to associate the
mark with Applicant’s services without a multistage
reasoning process and additional information.”4
In this case, a consumer will not
readily know what DEC stands for, and
even if a consumer did know, the
consumer would still have to conduct
some multi-stage reasoning to determine
the operation of Applicant’s products.
The term, DEC does not describe in any
clear or precise way (or an indirect
way), the goods or services offered
under this trademark, and the Internet
excerpts cited by the Office do not
support this finding either.5

A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and
services for which registration is sought and the context
in which the term is used, not in the abstract or on the

3 Applicant’s Brief, pp. 5-6.
4 Applicant’s Brief, p. 8.
5 Applicant’s Brief, p. 9.
Serial No. 77036122
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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). In other words, the
question is not whether someone presented only with the
mark could guess what the products and services are.
Rather, the question is whether someone who knows the
products and services will understand the mark to convey
information about them. In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-1317 (TTAB 2002); In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
A word, term, or letters that are a recognized
abbreviation for the goods and services in the application
is merely descriptive. Foremost Dairies, Inc. v. The
Serial No. 77036122
7
Borden Company, 156 USPQ 153, 154 (TTAB 1967); Calgon
Corporation v. Hooker Chemical Corporation, 151 USPQ 359,
360 (TTAB 1966). However, not all abbreviations are
necessarily merely descriptive.
While each case must be decided on the
basis of the particular facts involved,
it would seem that, as a general rule,
initials cannot be considered
descriptive unless they have become so
generally understood as representing
descriptive words as to be accepted as
substantially synonymous therewith.

Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110
USPQ 293, 295 (CCPA 1956). See also Southwire Co. v.
Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 573 (TTAB
1977).
Accordingly, for DEC to be merely descriptive of
applicant’s batteries deriving power from nuclear decay
processes and services relating to batteries deriving power
from nuclear decay processes, we have to find the
following:
1. DEC is an abbreviation for “direct energy
conversion”;

2. “Direct energy conversion” is merely descriptive
of the products and services listed in the
application; and,

3. A relevant consumer viewing DEC in connection
with applicant’s products and services would
recognize it as an abbreviation of the term
“direct energy conversion.”

Serial No. 77036122
8
In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984).
A. DEC is an abbreviation for “direct energy conversion.”
The entry in the AF Acronym Finder identifying DEC as
“direct energy conversion,” the references in the articles
and websites to “direct energy conversion (DEC),” and
applicant’s concession, demonstrate that DEC is an
abbreviation for “direct energy conversion.”
B. “Direct energy conversion” is descriptive of the
products and services listed applicant’s application.

As demonstrated by the evidence of record, the term
“direct energy conversion” describes a power source and an
efficient way of transforming energy into electricity.
Indeed, the author of the “2020 Vision – Next generation
batteries” article in The Peak: Simon Fraser University’s
Independent Student Newspaper stated that “[t]he Direct
Energy Conversion (DEC) cell is a beta-voltaics-based
‘nuclear’ battery that can run for over a decade on the
electrons generated by the natural decay of the radioactive
isotope tritium.”
Applicant’s products are batteries deriving power from
nuclear decay processes and its services are related to
batteries deriving power from nuclear decay processes.
Accordingly, the term “direct energy conversion” directly
Serial No. 77036122
9
describes a feature or characteristic of applicant’s
products and services (i.e., applicant’s products generate
power from the decay of radioactive sources and its
services are rendered in connection with batteries
generating power from the decay of radioactive sources).
C. Relevant consumers will recognize DEC as an
abbreviation for “direct energy conversion.”

The Examining Attorney has made of record sufficient
exhibits, including, but not limited to, the entry from the
acronym finder, showing the use of DEC to reference the
term “direct energy conversion.” In most of the exhibits,
DEC appears immediately after the term “direct energy
conversion” (e.g., Direct Energy Conversion (DEC)). Based
on this evidence, we find that DEC is routinely used as an
abbreviation for the term “direct energy conversion.”
Accordingly, it was incumbent upon applicant to submit
evidence showing that the letters DEC will not be readily
recognized as an abbreviation for “direct energy
conversion.” However, applicant did not submit any
evidence. The arguments and opinion of counsel are
insufficient to overcome the facts established by the
Examining Attorney. See Spin Physics, Inc. v. Matsushita
Electric Co., 168 USPQ 605, 607 (TTAB 1970).
Serial No. 77036122
10
D. Applicant’s other arguments.
1. Applicant’s products are batteries for hearing
aids and other medical devices.

Applicant argues that there is no evidence that the
“common everyday purchaser of a battery that is used in
connection with hearing aids or similar medical devices
will know that DEC stands for direct energy conversion.”6
However, applicant’s description of goods is not limited to
batteries used in connection with hearing aids or similar
medical devices, and we may not insert such a limitation in
the description of goods. In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1998) (since applicant's
identification of services does not restrict their location
to sites away from the actual place of performance, it is
presumed that such services may be offered at the site of
performance or away from it). It is well settled that the
Board may not read unstated restrictions into the goods and
services. In the absence of a restriction in the
description of goods and services as to the type of goods
or services, channels of trade, or classes of purchasers,
the presumptions afforded to a registration under Section
7(b) of the Trademark Act of 1946 include a presumption of
use on all the goods and services encompassed by the

6 Applicant’s Brief, p. 6.
Serial No. 77036122
11
description of goods in all of the normal markets or
channels of trade for such goods and services to all
potential purchasers therefor. Cf Autac Inc. v. Viking
Industries, Inc., 199 USPQ 367, 374 (TTAB 1978), and cases
cited therein.
Because the description of goods is unrestricted, the
products identified in the application include all
consumers of batteries deriving power from nuclear decay
processes, not just consumers of hearing aids and other
medical devices. For example:
a. The AutomationWorld website article references
batteries that use direct energy conversion to
power industrial wireless sensors;

b. The Encyclopedia Britannica website article
references direct energy conversion devices for
use in spacecraft; and,

c. The excerpt from the Pure Energy Systems website
references “this new DEC method has the potential
to produce megawatts of clean electricity for
powering cars, trucks, and everything in our
homes within the next 10 years.”

Finally, applicant’s belated attempt to restrict the
description of goods to batteries for hearing aids and
other medical devices does not address the services related
to batteries deriving power from nuclear decay processes.
Presumably, applicant would also limit the services to
generating power for hearing aids and other medical
devices. However, as indicated above, we may not insert
Serial No. 77036122
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such a limitation into the description of services. Thus,
the description of services extends beyond consumers of
hearing aids and other medical devices.
2. No one else uses DEC as a trademark.
Applicant argues that “there is no evidence that other
manufacturers of batteries utilize the designation DEC as
the brand name of their batteries or consulting relating
thereto.”7 In this regard, however, it is well settled that
the fact that an applicant may be the first and only user
of a merely descriptive term does not justify registration
if the only significance conveyed by the term is merely
descriptive. See In re Sun Microsystems, Inc., 59 USPQ2d
1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792
(TTAB 1985).
3. A multi-stage reasoning process is required to
associate the mark with the characteristics of
the products and services.

Applicant contends that even if consumers recognized
DEC as an abbreviation for “direct energy conversion,” they
would still have to conduct multi-stage reasoning to
determine the characteristics and features of applicant’s
products and services.8 As indicated above, we have found
that DEC directly informs consumers that applicant’s

7 Applicant’s Brief, p. 6.
8 Applicant’s Brief, p. 9.
Serial No. 77036122
13
products generate power from the decay of radioactive
sources and its services are rendered in connection with
generating power from the decay of radioactive sources.
Thus, the problem with applicant’s argument is two-fold:
(1) applicant does not describe the multi-stage reasoning
process; and, (2) applicant did not submit any evidence to
support its argument. Merely claiming that a multi-stage
reasoning process is necessary does not make it so. At a
minimum, applicant should have set forth the multi-stage
reasoning process for our consideration.
In view of the foregoing, we find that the term DEC,
used in connection with batteries deriving power from
nuclear decay processes and services related thereto, is
merely descriptive.
Decision: The refusal to register is affirmed.