Caterpillar Inc.

Trademark Trial and Appeal Board

Jul 6, 2015

No. 86027654 (T.T.A.B. Jul. 6, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Caterpillar Inc.
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Serial No. 86027654

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Christopher P. Foley and Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P. for Caterpillar Inc.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103, Michael
Hamilton, Managing Attorney.
_____

Before Lykos, Adlin, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Caterpillar Inc. (“Applicant”) has filed an application for registration on the
Principal Register of the mark DYNAMIC GAS BLENDING in standard characters
for the following goods:
Engines, other than for land vehicles; retrofit and
conversion kits for engines other than for land vehicles,
consisting of gas shut off valves being parts of engines
other than for land vehicles and also containing gas
pressure regulators, gas flow control valves, gas heaters,
gas lines, mixers, air system connectors comprised of
flanges, bolts, mixing tubes, flame arrestors, air filters,
mounting brackets, computer software for engine control,
Serial No. 86027654
2
engine control modules, engine sensors for sensing gas
exhaust temperatures, pressure, oxygen, and voltage,
electrical switches, operator interfaces for computers,
computer monitors and displays screens, gauges for
energy substitutions, gas rail pressure, exhaust port
temperature, RPM, engine power and error messages,
transformers, voltage regulators, and wiring harnesses;
retrofit and conversion kits for engines for land vehicles
consisting of gas shut off valves being parts of engines for
land vehicles and also containing gas pressure regulators,
gas flow control valves, gas heaters, gas lines, mixers, air
system connectors comprised of flanges, bolts, mixing
tubes, flame arrestors, air filters, mounting brackets,
computer software for engine control, engine control
modules, engine sensors for sensing gas exhaust
temperatures, pressure, oxygen, and voltage,; electrical
switches, operator interfaces for computers, computer
monitors and displays screens, gauges for energy
substitutions, gas rail pressure, exhaust port
temperature, RPM, engine power and error messages,
transformers, voltage regulators, and wiring harnesses, in
International Class 7;
Engines for land vehicles, in International Class 12.1
The Trademark 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
merely describes the identified goods. When the refusal was made final, Applicant
filed two requests for reconsideration, both of which the Examining Attorney
denied. This appeal ensued. The case is fully briefed.
Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a
mark which, (1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A
term is merely descriptive of goods within the meaning of Section 2(e)(1) if it

1 Application Serial No. 86027654 was filed on August 2, 2013 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b).
Serial No. 86027654
3
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods. 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 is merely
descriptive is determined in relation to the goods 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, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,
we evaluate whether someone who knows what the goods are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need
not immediately convey an idea of each and every specific feature of the goods in
order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of the goods. 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). Moreover, the mark need not describe all of the identified goods.
Rather, a descriptiveness refusal is proper with respect to all of the identified goods
in an International Class if the mark is descriptive of any of the goods in that class.
In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Stereotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). It is the Examining
Attorney’s burden to show that a term is merely descriptive of an applicant’s goods
Serial No. 86027654
4
or services. In re Gyulay, 3 USPQ2d at 1010; In re Accelerate s.a.l., 101 USPQ2d
2047, 2052 (TTAB 2012).2
Applicant’s goods are engines and retrofit and conversion kits for engines.
Applicant states that its engines feature “technology that enables the substitution
of two different fuel sources.”3 This “technology is not designed to blend the fuels,
rather it enables the substitution of fuels. In doing so, the engine may automatically
transition from operating primarily on liquid fuel, such as diesel, to natural gas to
improve fuel consumption.”4 Applicant argues that the word BLENDING is not
merely descriptive of its goods but has offered to disclaim the words DYNAMIC and
GAS “[t]o the extent the Board finds [them] to be descriptive.”5 Applicant argues
that BLENDING “is no more descriptive than it would be for a hybrid engine in a
car that can modulate between using gasoline and electricity as power sources.”6
The Examining Attorney’s position is that:
applicant’s mark is merely descriptive of the identified
goods because the applicant’s goods contain software and
hardware that dynamically blends gases together inside a
single engine … and/or the applicant’s goods blend two
different types of gas systems together into a single

2 The three-part test for mere descriptiveness described in Applicant’s brief at 7-8, 4
TTABVUE 12-13, citing No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226
USPQ 502 (TTAB 1985), has been superseded in the Federal Circuit by the rule that we
apply here, enunciated in In re Gyulay, 3 USPQ2d 1009, In re Chamber of Commerce of the
U.S., 102 USPQ2d 1217, and DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 103
USPQ2d 1753.
3 Applicant’s brief at 7, 4 TTABVUE 12.
4 Id. at 4, 4 TTABVUE 9, quoting declaration of Ryan Stockett.
5 Id. at 16, 4 TTABVUE 21.
6 Id. at 9, 4 TTABVUE 14.
Serial No. 86027654
5
system and dynamically switches between those systems
…7
The Examining Attorney has made of record the following relevant dictionary
definitions:
dynamic: Characterized by continuous change, activity, or progress:
a dynamic market.8

Characterized by or producing change or progression: a
dynamic process.9

gas: A gaseous fuel, such as natural gas.

Gasoline.10
blend: To combine or mix so that the constituent parts are
indistinguishable from one another. “He has no difficulty
blending his two writing careers: novels and films”
(Charles E. Claffey).

To combine (varieties or grades) to obtain a mixture of a
particular character, quality, or consistency: blend
tobaccos.

To become merged into one; unite.11

To mix or mingle (components) together thoroughly.12

To mix smoothly and inseparably.

7 Examining Attorney’s brief, 6 TTABVUE 6.
8 Definition from , Office Action of November 20, 2013 at 13.
9 RANDOM HOUSE KERNERMAN WEBSTER’S COLLEGE DICTIONARY (2010) at
, Office Action of May 19, 2014 at 10.
10 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000) at
, Office Action of May 19, 2014 at 13.
11 Id. at 20.
12 COLLINS ENGLISH DICTIONARY (2003) at , Office Action of
November 5, 2014 at 17.
Serial No. 86027654
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To prepare by mixing various sorts or grades: I blend this
tea by mixing chamomile with pekoe.

To have no perceptible separation: Sea and sky seemed to
blend.13

That the term GAS has descriptive or generic meaning with respect to the goods is
beyond question. The Stockett declaration states that Applicant’s engines can use
natural gas as a substitute for diesel fuel.14
The Examining Attorney has also established that DYNAMIC is merely
descriptive. Applicant’s own advertising materials use the phrase “Dynamically
adjusts to fuel quality changes” to describe the goods.15 Another advertisement
states (emphasis added), “Cat® Dynamic Gas Blending continuously adjusts to
changes in incoming fuel quality and pressure …”16 This description of the goods is
consistent with the dictionary definition of “dynamic” as “characterized by
continuous change.”
We turn then to the word BLENDING. We find the clearest explanation of the
function of Applicant’s product in the affidavit of Gary Boyer ¶¶ 8-14 (emphasis
added):17
8. Inside the engine, the combustion process can be
illustrated in five separate steps. In the first step shown
below, which is a top down view of the cylinder inside the

13 RANDOM HOUSE KERNERMAN WEBSTER’S COLLEGE DICTIONARY (2010) at
, Office Action of November 5, 2014 at 17-18.
14 Stockett declaration ¶ 7, request for reconsideration of September 24, 2014 at 15.
15 Request for reconsideration of September 24, 2014 at 32.
16 Id. at 18.
17 Request for reconsideration of November 11, 2014 at 6-8.
Serial No. 86027654
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engine, air and natural gas (represented by blue) is drawn
into the cylinder: [illustration omitted]
9. In the second step, diesel fuel is injected into the air
and natural gas mixture. There is no intentional or
controlled mixing of diesel fuel and natural gas in this
step. …
10. In the third step, when the appropriate level of
oxygen for diesel combustion exists, diesel ignition occurs
and the diesel spray plumes combust to completion …
11. The burning diesel fuel in Step No. 3 then serves as
the ignition source for the next step, which involves the
combustion of the natural gas and air … As shown below,
the natural gas and air start to burn rapidly adjacent to
the individual burning diesel jets.
12. Finally, in the last step, the remaining natural gas
and air has been ignited by the flame from the diesel jets.
…
14. The process illustrated in Steps 1-5 occur in a
fraction of a second.
The Stockett declaration, in describing the engine’s “transition from operating
primarily on liquid fuel … to natural gas,” states (emphasis added):
When this happens, gas and liquid fuel may be admitted
from separate locations proximate the combustion
chamber for a fraction of a second before combustion. The
combustion cycle may repeat itself with or without the
combination of both gas and liquid fuel depending on load
conditions. In either case, I would not describe the air and
liquid fuel to be blended prior to combustion.18
Applicant urges that we view the function of its engines not as a “blending”
process, but as a “substitution” of fuels, or a “modulation” of the intake of fuels.
Applicant argues that its use of the word BLENDING is “incongruous given that no

18 Stockett declaration ¶ 7, request for reconsideration of September 24, 2014 at 15-16.
Serial No. 86027654
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mixing of diesel and natural gas actually occurs.”19 In this regard, Applicant focuses
on the first definition of “blend” cited above, i.e., to “combine or mix so that the
constituent parts are indistinguishable from one another,” which suggests that
unless the gas and the diesel fuel are combined and indistinguishable, they are not
truly “blended.” However, the Examining Attorney has shown that the word “blend”
is also understood to mean to “mix or mingle … together thoroughly”; to “mix[ ]
various sorts”; to “combine [varieties] to obtain a mixture”; or to “unite.”20 In this
sense, when Mr. Boyer states that “diesel fuel is injected into the air and natural
gas mixture,” he appears to be describing a process of mixing, mingling, and
combining that is consistent with a dictionary definition of “blend.”
Applicant, in its brief, seeks to portray its system as one that alternates between
use of natural gas and use of diesel fuel, and argues that “there is no chamber or
other location for the ‘blending’ of diesel and natural gas to occur.”21 However, the
declarations of record state otherwise. When Mr. Boyer describes the injection of
diesel fuel “into the air and natural gas mixture” in the engine’s cylinder, it is clear
that the gas and the diesel fuel are in the same place. The disclaimer of any
“intentional or controlled mixing of diesel fuel and natural gas” does not mean that
“blending,” as that term is commonly understood and defined, does not occur. The
fact that “diesel ignition occurs” “when the appropriate level of oxygen for diesel

19 Applicant’s brief at 9, 4 TTABVUE 14.
20 The usage examples in the quoted definitions indicate that “blend” is understood to have
a rather general meaning: tea leaves of different kinds, when combined, are not truly
inseparable, yet they are said to be “blended.” The same is true of varieties of tobacco.
21 Applicant’s brief at 4, 4 TTABVUE 9.
Serial No. 86027654
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combustion exists” means that the combustion of the diesel fuel makes use of the
oxygen in the “air and natural gas mixture.” The fact that “the natural gas and air
start to burn rapidly adjacent to the individual burning diesel jets” shows that the
gas and the diesel fuel burn simultaneously adjacent to each other. The Stockett
declaration states that both “gas and liquid fuel may be admitted” into the engine22
only “for a fraction of a second before combustion”; however, the Boyer declaration
makes clear that the whole process of injection and combustion happens “in a
fraction of a second.” Presumably the process is repeated over and over in the
operation of the engine. On the basis of the declarations, we can only conclude that
a mixing of gas and diesel fuel occurs in the engine, as well as some degree of
simultaneous combustion of both fuels. This conclusion is supported by an article in
Oil & Gas Monitor which, in discussing Applicant’s engines, refers to “[t]he
capability of simultaneously operating with the two different fuel sources...” and
“continuously optimized diesel and gas usage.”23 Applicant’s own advertising states,
“As the natural gas is injected, the amount of diesel being consumed is reduced”24
(note that it says “reduced,” not “eliminated”), strongly suggesting that both fuels
are being used at the same time.
The evidence establishes that relevant customers for Applicant’s goods would view
Applicant’s engines, in which natural gas and diesel fuel are used simultaneously,
are mixed together, and are sometimes combusted simultaneously, as a system in

22 It appears that they are admitted into the “the combustion chamber,” but the language of
the declaration avoids saying this.
23 Office Action of November 5, 2014 at 56-57.
24 Id. at 54.
Serial No. 86027654
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which “blending” occurs. Thus, the word BLENDING creates no incongruity, as
Applicant contends, in the context of the goods.25
We must now consider the mark as a whole and ask whether the combination of
the component words of Applicant’s mark “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).
Applicant contends, and Mr. Boyer expressed the opinion, that BLENDING “is a
play on the word ‘substitution,’ which is the term that actually describes the
technology underlying the product …”26 Inasmuch as the dictionary definitions of
“blend” are consistent with what actually happens inside Applicant’s engines, we
detect no wordplay here.
We find that the three component words of the mark combine in a manner and
order that would be easily interpreted by persons familiar with the English
language and the goods. DYNAMIC would readily be understood as an adjective
that modifies the process BLENDING, and GAS BLENDING would be immediately
understood to mean a process of BLENDING that involves GAS. In the context of
the goods, relevant customers would readily interpret the mark as a whole to mean
a process of mixing or combining substances (BLENDING), in a manner
characterized by continuous adjustment in response to changes (DYNAMIC), and

25 We note Applicant’s argument that “a number of mental leaps exist between the
commonly understood meaning of the term ‘blending’ and the functionality of [Applicant’s]
product.” Applicant’s brief at 9, 4 TTABVUE 14. However, this argument, too, depends on
the contention, which we have rejected, that Applicant’s engines do not “blend.”
26 Applicant’s brief at 9, 4 TTABVUE 14; Boyer declaration ¶ 14, request for reconsideration
of November 11, 2014 at 8.
Serial No. 86027654
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involving natural gas (GAS). In this regard, the mark conveys an immediate idea of
a significant function of the goods.
We find that Applicant’s mark is merely descriptive of Applicant’s goods within
the meaning of Trademark Act Section 2(e)(1).
Decision: The refusal to register is affirmed.