Calsonic Kansei North America, Inc

Trademark Trial and Appeal Board

Dec 15, 2020

88243196 (T.T.A.B. Dec. 15, 2020)

Mailed: December 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Calsonic Kansei North America, Inc.
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Application Serial No. 88243196
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Timothy L. Capria, Alexandria C. Lynn, and Richard W.F. Swor of Bradley Arant
Boult Cummings LLP for Calsonic Kansei North America, Inc.

Kelley L. Wells, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Zervas, Bergsman and English, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Calsonic Kansei North America, Inc. (Applicant) seeks registration on the
Principal Register of the mark TRANSLUCENT SKIN, in standard character form,
for the goods listed below:
Cruise controls for motor vehicles; Vehicle detection
equipment, namely, display monitors, computers, image
sensors, video cameras, and operating system and
application software to detect vehicle location; Safety and
driving assistant system for mobile vehicles and vessels
comprised of electronic proximity sensors and switches,
high-resolution cameras, integrated circuits for the
purpose of imaging processing, and display monitors;
Human-machine interface displays in an automobile,
namely, electronic display screens and touchscreens for use
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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in automobiles; Human-machine interface controls in an
automobile, namely, electronic display screens and
touchscreens for controlling electrical interior functions,
motor starters, cruise control, heat and air conditioning,
audio, and transmission gears, in International Class 9;
and
Gear shifts; Steering wheels for vehicles; Turn signal
levers for vehicles; Vehicle parts, namely, steering wheels,
in International Class 12.1
The Examining Attorney refused to register Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark
TRANSLUCENT SKIN is descriptive of the goods listed in the application. According
to the Examining Attorney, TRANSLUCENT SKIN describes a feature of the goods
(i.e., “they will feature a translucent automotive skin or be used in association with
such a skin.”).2
The evidence of record shows that the wording
TRANSLUCENT SKIN is used in the automotive industry
to describe things that have a surface or skin which is
transparent enough for light or lit items to be seen through
the skin of the part.3
To support the refusal on the ground that TRANSLUCENT SKIN is merely
descriptive, the Examining Attorney submitted the evidence listed below:

1 Serial No. 88243196 filed December 27, 2018, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in
commerce.
2 Examining Attorney’s Brief (9 TTABVUE 3).
3 Id. at 9 TTABVUE 4.
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● Dictionary definitions of “translucent”
Merriam-Webster defines “translucent,” inter alia, as “permitting the passage of
light” (e.g., “transmitting and diffusing light so that objects beyond cannot be seen
clearly”).4
● Dictionary definitions of “skin”
Oxford Living Dictionaries (oxforddictionaries.com) define “skin,” inter alia, as
“the outermost layer of a structure such as a building or aircraft.”5
● Excerpt from the CAR BODY DESIGN website (carbodydesign.com) for an
article entitled “Translucent Skin” regarding automotive interior fabric.6
● Copy of U.S. Patent Application No. US20110158906A1 for “Automobile
ornament panel including an icon and a light-transmitting material”
(patents.google.com/patent/US1011057906).7

4 March 22, 2019 Office Action (TSDR 5). See also MacMillan Dictionary
(macmillandicationary.com/dictionary/american) (“clear enough for light to pass through but
not completely clear”) (Id. at TSDR 12); Collins Dictionary
(collinsdictionary.com/dictionary/english) (“If a material is translucent, some light can pass
through it.”) (Id. at TSDR 15).
Citations to the examination record are to the USPTO’S Trademark Status and Document
Retrieval system (TSDR) by page number in the .pdf format.
5 March 22, 2019 Office Action (TSDR 37). See also MacMillan Dictionary
(macmillandicationary.com/dictionary/american) (“the outer layer of something, for example
an airplane or boat”) (Id. at TSDR 44).
6 March 22, 2019 Office Action (TSDR 20-21).
7 March 22, 2019 Office Action (TSDR 22-28). The owner of the patent application is a third
party Faurecia Interieur Industrie. (TSDR 22).
The Examining Attorney submitted a second excerpt regarding this patent application from
the Justia Patents website (patents.justia.com) as part of her October 16, 2019 Office Action
(TSDR 21-30).
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Abstract
A panel includes at least one icon area (8), the area (8)
being illuminated by a light source(10) placed under the
ornament panel, the ornament panel (1) including a
translucent skin (2) forming the outer surface (6) of the
ornament panel and a substrate layer (4) placed against
the skin (2) the substrate layer (4) including an opening(14)
placed at least between the light source (10) and the icon
area (8).8
___
Description
The present invention relates to an automobile trim panel
of the type comprising at least one pictogram area, said
area being illuminated by a light source arranged under
the trim panel, the trim panel including a translucent
skin forming the outer surface of the trim panel and a
substrate layer arranged against the skin, said substrate
layer including an opening arranged at least between the
light source and the pictogram area.9 (Emphasis added).
● An excerpt from the CAR ADVICE website (caradvice.com) (December 17, 2014)
“EDAG Light Cocoon Concepts Will Debut Leaf-Like Body Structure in Geneva.”10
The subject of the article is an automotive body structure made of minimal material.
The experimental automobile features a shell covered by fabric. “The company has
also fitted a backlight to highlight the car’s minimalist web-like structure and tightly
stretched translucent skin.”

8 Id.
9 Id.
10 March 22, 2019 Office Action (TSDR 29-32).
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● Which Car website (whichcar.com.au) (Australia) posting “Cars made of fabric,”
(June 11, 2015) regarding concept or experimental automobiles.11
The big difference here is that underneath Light Cocoon’s
translucent skin are LEDs that shine through the
branching frame to create patterns of light on the car’s
panels. It’s like a lamp on wheels.12
● An excerpt from Applicant’s website (calsonickansei.co.jp) referring to
Translucent Skin in connection with HVAC controls in an automobile.
Integration of Translucent Skin & Display
Information is displaced on the outermost level of the skin
with sizing and positioning that is easy to seek as the
situation demands.
The display appears when necessary, but is normally
switched off to reduce inconvenience and maintain a
beautiful appearance.13
● A second excerpt from Applicant’s website referring to automotive instrument
panels.14 The Internet excerpt describes Applicant’s manufacture of automotive
instrument panels and Applicant’s use of various “skins” to cover the instrument
panels.
● An excerpt from the National Digital Science Library (ndsl.kr/ndsl) regarding
“Translucent Skin Material, And Method For Manufacturing The Same.”15 There is
not enough English language in this exhibit to make it relevant.

11 March 22, 2019 Office Action (TSDR 33-36).
12 Id. at TSDR 35.
13 October 16, 2019 Office Action (TSDR 4).
14 October 16, 2019 Office Action (TSDR 12-18).
15 October 16, 2019 Office Action (TSDR 19-20).
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● Excerpts from four websites showing the word “Skin” used to refer to automotive
surfaces.16 For example, Camo Wraps (camowraps.com) advertises “Auto Interior
Skin” referring to automotive interior coverings.17
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
precludes registration of a mark on the Principal Register that, when used in
connection with an applicant’s goods, is merely descriptive of them. 15 U.S.C.
§ 1052(e)(1). “A mark is merely descriptive if it immediately conveys information
concerning a feature, quality, or characteristic of the goods or services for which
registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965,
128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363,
123 USPQ2d 1707, 1709 (Fed. Cir. 2017)).
We “must consider the mark as a whole and do so in the context of the goods
or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (emphasis added); In re
Calphalon Corp., 122 USPQ2d 1153, 1162 (TTAB 2017). “Whether consumers could
guess what the product is from consideration of the mark alone is not the test.” In re
Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Indeed, “[t]he question is not
whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods and

16 May 7, 2020 Request for Reconsideration Denial (TSDR 4-26). We do not consider the Sekan
Skin website (sekanskin.com) because it is a Canadian company and the Examining Attorney
did not submit any evidence showing U.S. consumers encountering this company or accessing
the website. Id. at TSDR 8-14.
17 May 7, 2020 Request for Reconsideration Denial (TSDR 4-5).
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services are will understand the mark to convey information about them.” DuoProSS,
103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002)). This applies to compound marks as well.
In considering a mark as a whole, the Board may weigh the
individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its
various components. … [I]f ... two portions individually are
merely descriptive of an aspect of appellant’s goods [or
services], the PTO must also determine whether the mark
as a whole, i.e., the combination of the individual parts,
conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
The issue before us is whether the mark TRANSLUCENT SKIN as a whole is
merely descriptive in relation to the identified goods. If each component retains its
merely descriptive significance in relation to the goods, then the mark as a whole is
merely descriptive. Id. at 1374; In re Mecca Grade Growers, LLC, 125 USPQ2d 1950,
1955 (TTAB 2018).
The words “Translucent” and “Skin” retain their dictionary meanings when used
together in the composite mark TRANSLUCENT SKIN. The term TRANSLUCENT
SKIN means a covering transparent enough to let light pass through.
With respect to the descriptiveness refusal vis-à-vis the products in International
Class 9, we focus our attention on “human-machine interface displays in an
automobile, namely, electronic display screens and touchscreens for use in
automobiles; human-machine interface controls in an automobile, namely, electronic
display screens and touchscreens for controlling electrical interior functions, motor
starters, cruise control, heat and air conditioning, audio, and transmission gears .”
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The mark need not describe all the goods identified, as long as it merely describes one
of them. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir.
2005) (“[T]he Trademark Office may require a disclaimer as a condition of
registration if the mark is merely descriptive for at least one of the products or
services involved.”); In re Oppedahl & Larson LLP, 71 USPQ2d at 1371 (“A mark may
be merely descriptive even if it does not describe the ‘full scope and extent’ of the
applicant’s goods or services.”) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Gyulay, 820 F.2d 121, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171
(TTAB 2013) (“[I]f the mark is descriptive of some identified items – or even just one
– the whole class of goods still may be refused by the examiner.”).
The term TRANSLUCENT SKIN used in connection with the above-noted display
screens and touchscreens immediately conveys to relevant consumers that the
display screens and touchscreens consist of a covering transparent enough to permit
light to pass through. The backlit display screens and touchscreens will display the
vehicle controls clearly. Therefore, TRANSLUCENT SKIN is merely descriptive for
the goods in International Class 9.
We disagree with Applicant’s contention that TRANSLUCENT SKIN “connotes
high tech features that do not interfere with driving and the driving experience” and
that “Applicant’s Goods will seamlessly and discreetly integrate into the automobile,
much like a second ‘skin,’ that bridges human communication and interaction with
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automobile functionality while also minimizing driver distraction.”18 There is no
evidence that supports these contentions. In addition, the contentions fly in the face
of the meaning of the term – a covering transparent enough to permit light to pass
through – discussed above.
Applicant also asserts that TRANSLUCENT SKIN is not merely descriptive
because it is open to multiple interpretations (e.g., it relates to any type of surface
covering technology, it relates to wearable technology products, or it refers to skin
care products that gives the skin a smooth translucent appearance).19 As noted above,
we analyze whether a term is merely descriptive in relation to the goods for which
Applicant seeks registration. The fact that a term may have a different meaning in a
different context is not controlling. See Robinson v. Hot Grabba Leaf, LLC,
2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc.,
126 USPQ2d 1590, 1598 (TTAB 2018)); In re RiseSmart Inc., 104 USPQ2d 1931, 1933
(TTAB 2012); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); In re
Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974). “It is well settled that so long
as any one of the meanings of a term is descriptive, the term may be considered to be
merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB
2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).

18 Applicant’s Brief, p. 9 (7 TTABVUE 10).
19 Id. at p. 12 (7 TTABVUE 13).
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If a term has a primary significance that is descriptive in relation to at least one
of the recited goods, and does not create a double entendre or incongruity, then the
term is merely descriptive. See, e.g., Calphalon, 122 USPQ2d at 1164 (finding nothing
incongruous about the use of the word sharpen (or its phonetic equivalent SHARPIN)
to describe the function of knife blocks with built-in sharpeners that automatically
sharpen knives).
Finally, Applicant argues that the Examiner’s evidence does not show extensive
or persistent use of TRANSLUCENT SKIN by others.
[T]he evidence proffered by the Office does not show
extensive or persistent use of TRANSLUCENT SKIN by
others. Rather, the Office’s evidence of Applicant’s own use
of TRANSLUCENT SKIN, in fact, bolsters the finding that
Applicant’s Mark has a distinctive commercial
impression.20
The fact that an applicant may be the first user of a merely descriptive designation
does not justify registration if the only significance conveyed by the term is merely
descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB
2016); In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983).
See also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122
(2004) (trademark law does not countenance someone obtaining “a complete
monopoly on use of a descriptive term simply by grabbing it first”) (citation omitted).
With respect to the goods in International Class 12 (i.e., gear shifts, turn signal
levers, and steering wheels), the term TRANSLUCENT SKIN does not impart any

20 Applicant’s Brief, p. 13 (7 TTABVUE 14).
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readily apparent meaning describing a quality, characteristic or function of the
products. There is no evidence of record demonstrating an association or nexus
between the coverings for the goods identified in International Class 12 and any
characteristic or function of those products and none is readily apparent. The Internet
website excerpts regarding automotive skins do not refer to covering specific
automotive instruments such as gear shifts, turn signal levers, or steering wheels.
We find that the mark TRANSLUCENT SKIN for the goods listed in International
Class 12 is not merely descriptive.
Decision: The Section 2(e)(1) refusal to register the mark TRANSLUCENT SKIN
for the goods listed in International Class 9 is affirmed.
The Section 2(e)(1) refusal to register the mark TRANSLUCENT SKIN for the
goods listed in International Class 12 is reversed.