Bhasin Enterprise Corporation

Trademark Trial and Appeal Board

Jan 2, 2015

No. 86025037 (T.T.A.B. Jan. 2, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Bhasin Enterprise Corporation
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Serial No. 86025037
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Charles P. Kennedy of Lerner, David, Littenberg, Krumholz & Mentlik, LLP for
Bhasin Enterprise Corporation.

Patty Evanko, Trademark Examining Attorney, Law Office 119 (Brett J. Golden,
Managing Attorney).
_____

Before Seeherman, Adlin and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Bhasin Enterprise Corporation (“Applicant”) filed an application to register on the
Principal Register the mark COOMI 47AG in standard characters for “silver
jewelry,” in International Class 14.1
The Trademark Examining Attorney required Applicant, under Trademark Act §
6(a), 15 U.S.C. § 1056(a), to disclaim the exclusive right to use 47AG with respect to

1 Application Serial No. 86025037 was filed on July 31, 2013 on the basis of Applicant’s
asserted bona fide intent to use the mark in commerce, under Trademark Act § 1(b), 15
U.S.C. § 1051(b). The application states that “The name ‘COOMI’ is the nickname of a
living individual whose consent is of record.” The application also includes goods in Classes
18 and 25, but they are not at issue in this appeal.
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the goods in Class 14, on the ground that it is an unregistrable component of
Applicant’s mark, because it is merely descriptive of Applicant’s goods within the
meaning of Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1). When the requirement
was made final, Applicant filed a request for reconsideration, which the Examining
Attorney denied. This appeal ensued. Applicant and the Examining Attorney have
filed briefs and Applicant has filed a reply brief.2
The Director of the U.S. Patent and Trademark Office “may require the applicant
to disclaim an unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a), 15 U.S.C. § 1056(a). The Patent and Trademark Office may
require a disclaimer as a condition of registration if the term at issue is merely
descriptive of any of the identified goods or services. In re Stereotaxis Inc., 429 F3d
1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
A term is merely descriptive within the meaning of Section 2(e)(1) if it forthwith
conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark or a component of
a mark is merely descriptive is determined in relation to the goods or services for
which registration is sought and the context in which the term is used, not in the
abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811,

2 Citations herein to the briefs are to TTABVUE, the Board’s online docket numbering
system. Citations to the examination record are to the Trademark Office’s online
Trademark Status and Document Retrieval system (TSDR).
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200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). A term need not immediately convey an idea of each and every specific
feature of the goods or services in order to be considered merely descriptive; it is
enough if it describes one significant attribute, function or property of them. See In
re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In
re MBAssociates, 180 USPQ 338 (TTAB 1973).
The Examining Attorney contends that 47AG describes the material composition
of Applicant’s identified “silver jewelry.” She has demonstrated that “Ag” is the
recognized chemical symbol of the element silver, and that 47 is the recognized
atomic number3 of the element silver:
Silver is a chemical element with the chemical symbol
Ag [etymology omitted] and atomic number 47. A soft,
white, lustrous transition metal, it possesses the highest
electrical conductivity of any element and the highest
thermal conductivity of any metal. …
Silver has long been valued as a precious metal, used in
currency coins, to make ornaments, jewelry, high value
tableware and utensils … and as an investment in the
forms of coins and bullion.
Entry for “Silver” from Wikipedia.org.4 The same entry shows a table that includes
the following information:

3 An “atomic number” is “the number of positive charges or protons in the nucleus of an
atom of a given element ….” 132 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH
LANGUAGE (2d ed). The Board may take judicial notice of dictionary definitions. Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
4 Office Action of November 20, 2013 at 5.
Serial No. 86025037

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Silver
47Ag
…
Name, symbol,
number silver, Ag, 47

The Wikipedia entry also includes a representation of the periodic table of
elements,5 a relevant portion of which is shown below:6

The entry for “The Element Silver” from , also submitted by
the Examining Attorney,7 is reproduced in part below:

5 A “periodic table” is “a table illustrating the periodic system in which the chemical
elements, formerly arranged in the order of their atomic weights and now according to their
atomic numbers, are shown in related groups.” 1441 THE RANDOM HOUSE DICTIONARY.
Both THE RANDOM HOUSE DICTIONARY and WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY (1993), at 1680, contain representations of the periodic table as illustrations of
their respective definitions of “periodic table.”
6 We presume that “Ag” is highlighted in the periodic table shown because it was designed
as an illustration for the entry for “Silver.”
7 Id. at 17-18.
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The entry for “Silver Facts” from 8 includes the following
information:
Silver
Atomic Number: 47
Symbol: Ag
Atomic Weight: 107.8682
The web page at 9 includes the following chart, as
well as the illustration of a portion of the periodic table shown below it:

8 Office Action of February 19, 2014 at 9.
9 Id. at 13.
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The Examining Attorney argues that each of these terms is merely descriptive of
the material composition of Applicant’s silver jewelry and that when they are
combined, they “retain their descriptive meaning in relation to the goods, [and] the
combination results in a composite mark that is itself descriptive and not
registrable.”10
The Examining Attorney has shown, beyond question, that the designation “Ag” is
the chemical symbol for the precious metal silver; and that the number “47” is the
atomic number assigned uniquely to the element silver.11 However, Applicant
argues that:
[the] commercial impression that a mark conveys “must be viewed through
the eyes of a consumer.” [Citing DuoProSS Meditech Corp. v. Inviro Medical
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012).] The
relevant consumers in this case would be purchasers or shoppers for
jewelry, and they would have to immediately translate 47AG to mean silver
by knowing that 47 is silver’s atomic number and AG its chemical symbol
for 47AG to be merely descriptive.”12

Applicant also argues, “Although chemists and chemistry students might surmise
that 47AG is a combination of the atomic number and chemical symbol of silver,

10 Examining Attorney’s brief, 6 TTABVUE at 4.
11 Applicant admits that “these are true scientific facts.” Reply brief, 7 TTABVUE at 6.
12 Reply brief, 7 TTABVUE at 5.
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typical jewelry shoppers would not. … Because the Examining Attorney has been
unable to provide evidence that jewelry purchasers would translate 47AG to mean
silver without the use of imagination, thought, and perception, the requirement for
a disclaimer should be reversed.”13
In In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987), our principal reviewing court considered the argument that an allegedly
descriptive term would not be understood by most relevant customers:
[Appellant argues] that the board failed to determine
descriptiveness of “first tier” by its meaning to “average”
or “ordinary” customers, citing In re Colonial Stores, Inc.,
394 F.2d 549, 551, 157 USPQ 382, 385 (CCPA 1968)
(descriptiveness determined from standpoint of “potential
purchaser”). See also In re Abcor Development Corp., 588
F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978)
(“descriptiveness … is to be determined from the
standpoint of the average prospective purchaser”).
Appellant asserts that the “vast majority” of its customers
would not be knowledgeable of the meaning of “first tier”
in the banking industry.
2 USPQ2d at 1861.
The Court responded to this argument with the following explanation:
Appellant misunderstands the import of the above
decisions. In context, “average” or “ordinary” consumers
simply refers to the class or classes of actual or
prospective customers of the applicant’s particular goods
or services. In this sense, corporate users of banking
services who, appellant admits, understand the industry
meaning of a “first tier” bank are “average” or “ordinary”
customers. That corporate customers may constitute a
smaller number of accounts than individuals is irrelevant.
Descriptiveness is not determined by its meaning only to

13 Id., 7 TTABVUE at 5-6.
Serial No. 86025037

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the class of regular customers with the largest head
count.
Id.

Similarly, in In re BetaBatt, Inc., 89 USPQ2d 1152 (TTAB 2008), a case that
involved “batteries deriving power from nuclear decay processes,” the applicant
argued 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 will know that DEC stands for direct energy conversion.” 89
USPQ2d at 1154. The Board, noting that applicant’s description of goods was not
limited to batteries used in connection with hearing aids and other consumer goods,
considered that the goods could also be offered to persons having knowledge of the
technical meaning of the acronym DEC. Id. at 1156. See also Wise v. Bristol-Myers
Co., 107 F.Supp. 800, 94 USPQ 327 (S.D.N.Y. 1952) (in considering the mark
BUFFERIN, “It is not material that the word ‘buffer’ is mostly known in trade
circles, and may be unknown to a large portion of the general public.”)
In the case before us, silver jewelry is a consumer item of potentially universal
appeal to individuals, and the identification of goods in the application sets forth no
limitations on the nature of customers to whom the goods will be offered.
Accordingly, we must presume that the goods will be offered to all normal
customers for such goods, including individuals who have knowledge of the meaning
of the terms “Ag” and “47.” We note that the Board has previously acknowledged the
descriptive nature of chemical symbols found on the periodic table. See Plus
Products v. Medical Modalities Associates, 211 USPQ 1199 (TTAB 1981)
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(recognizing the descriptive significance of the chemical symbols Zn, Mn, and Ca14
in the marks ZN-PLUS, MN-PLUS, and CA-PLUS). It also bears noting that, unlike
the terminology at issue in Omaha National and BetaBatt, the terms Ag and 47 are
not jargon, but long-established and universally recognized scientific terms whose
objective meaning with respect to silver is indisputable. In any event, symbols and
even atomic numbers, especially those for common, desirable elements, are not
obscure and are taught in many high schools, such that many members of the
consuming public, even those without a scientific background, would likely be aware
of them.15
Having determined that the terms 47 and AG individually have an established
significance and immediately describe the material composition of Applicant’s silver
jewelry, we must further determine whether the composite 47AG is merely
descriptive within the meaning of Section 2(e)(1). When two or more merely
descriptive terms are combined, the determination of whether the composite mark
also has a merely descriptive significance turns on whether the combination of
terms evokes a new and unique commercial impression. If each component retains
its merely descriptive significance in relation to the goods, the combination results
in a composite that is itself merely descriptive. See e.g., In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely

14 According to the decision, they are the chemical symbols for, respectively, zinc,
manganese, and calcium.
15 Moreover, the public’s purported ignorance of these terms is subject to change. Ordinary
consumers of no particular technical sophistication have become familiar with many
technical terms, through repeated exposure to them in the marketplace, even though those
terms might originally have seemed unintelligible.
Serial No. 86025037

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descriptive of computer software for managing a database of records that could
include patents, and for tracking the status of the records by means of the Internet);
In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely
descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB
2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate
consultation and real estate listing services).
First, the absence of a space between the components 47 and AG is immaterial. In
re Greenliant Systems Ltd, 97 USPQ2d 1078, 1084 (TTAB 2010); In re 3Com Corp.,
56 USPQ2d 1060, 1062 (TTAB 2000); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d
1628, 1631 (TTAB 1998). Moreover, there is nothing incongruous or unique about
the combination of the terms 47 and AG, as the evidence shows that they are
commonly used, together and/or in close proximity in referring to the element silver.
For example, the evidence discussed above shows the following:

47Ag Ag, 47 47 47 Ag Silver
Ag

Also in evidence is an advertisement depicting a silver plated money clip engraved
with a small superscript “47” to the left of the term “Ag.”16
We do not agree with Applicant that the designation 47AG, when used in
connection with silver jewelry, requires a multi-stage reasoning process in order to
derive from it an understanding that it designates the material composition of the

16 Advertisement from , Office Action of November 20, 2013 at 21.
47
Ag

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goods. The record shows that both 47 and Ag are not only conventional and
recognized symbols that identify the element silver, but also that 47 is the only
atomic number and Ag is the only chemical symbol identifying silver. Although each
term has a different derivation, each is literally a symbol meaning “silver.” When
they are used together, they simply reinforce each other’s identification of silver,
without giving rise to any other new or nondescriptive meaning. In this regard, the
use of 47 and AG together only increases the likelihood that each term, and their
combination, will be immediately understood as identifying silver. As previously
discussed, even if many customers in the jewelry market are not currently familiar
with these terms, that would not justify removing these descriptive terms, or the
combination of the two descriptive terms, from the lexicon available to purveyors of
silver goods.
Accordingly, we find that 47AG is merely descriptive within the meaning of
Section 2(e)(1) and is an unregistrable component of Applicant’s mark within the
meaning of Section 6(a). We therefore AFFIRM the Examining Attorney’s
requirement of a disclaimer of the exclusive right to use 47AG apart from the mark
as shown in connection with the Class 14 goods.
Decision: The refusal to register is affirmed. Applicant is allowed until
thirty (30) days from the date of this decision to submit to the Board a disclaimer (in
proper form) of the designation 47AG, in which case this decision will be set aside.
See Trademark Rule 2.142(g). If Applicant does not submit the required disclaimer
within the time allowed, the application in Class 14 will stand abandoned, and the
Serial No. 86025037

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application will be forwarded to publication ONLY in Classes 18 and 25. See 37
C.F.R. § 2.65(a); TMEP § 718.02(a).