Celtech, Inc.

Trademark Trial and Appeal Board

Oct 27, 2015

No. 85865775 (T.T.A.B. Oct. 27, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Celtech, Inc.
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Serial No. 85865775
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Gerald F. Meek of Jerry Meek, PLLC,
for Celtech, Inc.

James MacFarlane, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Acting Managing Attorney.
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Before Zervas, Shaw and Lynch,
Administrative Trademark Judges.
Opinion by Lynch, Administrative Trademark Judge:

Celtech, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark TUBECELL (in standard characters) for
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Structural components specially designed for electrocoat
painting machines in International Class 7.1

The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(e)(1), 15 U.S.C. § 1052(e)(1), as merely descriptive of the identified goods.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board.2 We affirm the refusal to register.
I. Applicable Law

Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods of the applicant is merely
descriptive ... of them.” 15 U.S.C. § 1052(e)(1). A term qualifies as merely
descriptive within the meaning of § 2(e)(1) “if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is
used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015).
Descriptiveness must be assessed “in relation to the goods for which registration
is sought, the context in which it is being used, and the possible significance that
the term would have to the average purchaser of the goods because of the manner of
its use or intended use.” Bayer Aktiengesellschaft, 82 USPQ2d at 1831 (citing In re

1 Application Serial No. 85865775 was filed on March 4, 2013, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as October 25, 1990.
2 Applicant offered no claim of acquired distinctiveness, even in the alternative, to overcome
the descriptiveness refusal, though the application claims use dating back to 1990.
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Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). Thus, the
inquiry involves whether someone familiar with the goods will understand the mark
to convey information about them, rather than consideration of the mark in the
abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012); Abcor Dev., 200 USPQ at 218; In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002).
When a composite mark combines two descriptive terms, the descriptiveness
analysis turns on whether the combination of terms evokes a new and unique
commercial impression. “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.” In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). The mere combination
of descriptive words does not necessarily create a nondescriptive word or phrase. In
re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding
SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing
systems composed primarily of light-emitting diodes for industrial and commercial
applications); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB
1988). If the combination retains the descriptive significance of the individual parts,
the mark as a whole must be considered merely descriptive. In re Petroglyph Games
Inc., 91 USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely descriptive for
computer game software). However, if the combination of terms creates a unitary
mark with a nondescriptive meaning, or if the composite takes on a bizarre or
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incongruous meaning, the mark as a whole would not be considered merely
descriptive. See generally In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (“unusual association or arrangement in the applicant's mark
[SUGAR & SPICE] results in a unique and catchy expression which does not,
without some analysis and rearrangement of its components suggest the contents of
applicant's goods”); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983)
(finding suggestiveness, rather than descriptiveness, of “hitherto unused and
somewhat incongruous word combinations whose import would not be grasped
without some measure of imagination and ‘mental pause’”).
II. Analysis

Applicant’s structural components for electrocoat painting machines facilitate an
industrial paint process whereby the object being painted and the paint are infused
with opposite electrical charges. The opposite charges attract, and the reaction
causes the paint to go on evenly and thoroughly. Applicant’s components include
anode cells that provide the positive charge, and the object being painted contains
the negative charge.3
Applicant does not dispute that its structural components are referred to as
“cells” and that they come in a “tube” shape.4 The record includes definitions
establishing that the word “TUBE” means a long, hollow cylindrical object and the

3 Applicant’s March 4, 2003 Specimen at 2.
4 4 TTABVUE 5-6 (Applicant’s Brief pp. 4-5 referring to Applicant’s “anode cells” and
conceding that they can be “tubular”); see also Applicant’s March 4, 2003 Specimen.
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word “CELL” can refer to a device for current/electricity generation.5 Applicant’s
brochure provided as a specimen of use calls its goods anode “cells”6 and includes
the following statement: “Each cell is comprised of an Anode Tube, which is the
positive electrode in the painting process, and a larger, concentric Membrane Tube,
which provides selective removal of the paint acid and other anions from the paint
bath.”7 The brochure also includes a diagram of the TUBECELL anode cell,
reflecting that the overall shape is tubular, and showing the location of the anode
tube and membrane tube found therein.8 Thus, both TUBE and CELL describe
features of the goods. Moreover, “an otherwise merely descriptive term is not made
any less so by merely omitting spaces between the words.” Minnesota Mining &
Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967).
The Examining Attorney also alleges that additional evidence attached to the
March 12, 2015 Office Action shows that “the combined wording ‘TUBE CELL’ also
is in widespread use in reference to technology either similar or identical to that at
issue in this application.”9 Much of the evidence relied on consists of foreign patent
documents available in English through the Google Patent database.10 Two

5 June 21, 2013 Office Action at pages 6-7, 14-15 (MacMillan Dictionary definitions of
“tube” and “cell”; March 12, 2015 Office Action at 2-6, 12-14 (Oxford Dictionary definitions
of “tube” and “cell”).
6 Applicant’s March 4, 2003 Specimen at 1, 2, 4.
7 Id. at 2.
8 Id.
9 7 TTABVUE 10-12.
10 See In re IBM, 81 USPQ2d 1677, 1682 n.7 (TTAB 2006) (“This web page is from a foreign
source. The Board has held that it ‘is reasonable to assume that professionals in medicine,
engineering, computers, telecommunications and many other fields are likely to utilize all
Serial No. 85865775
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European patents and one European patent application use the term “tube cell” in
the context of electroplating, and include explanations that this is a type of
electrodeposition,11 just as electrocoating is.12 We accord this evidence some
probative value to demonstrate use of the term “tube cell” in a related industry to
refer to goods analogous to Applicant’s. The evidence also suggests that the
combination of the two words in Applicant’s mark does not create a unique or
unusual commercial impression.
We find the U.S. patents relied on by the Examining Attorney for the same
proposition less compelling.13 Nothing on the face of the patents or elsewhere in the
record demonstrates that the technologies discussed therein are so “similar or
identical” to electrocoating that Applicant’s consumers necessarily would be exposed
to them. The articles on nanowelding,14 electrolysis,15 and anolyte cells16 present the
same concern. Thus, we do not find this evidence persuasive as to use of the term in

available resources, regardless of country of origin or medium. Further, the Internet is a
resource that is widely available to these same professionals and to the general public in
the United States.’ In re Remacle, 66 USPQ 1222, 1224 n.5 (TTAB 2002). In this case
involving computer technology, it is reasonable to consider a relevant article regarding
computer hardware from an Internet web site, in English in another country.”).
11 March 12, 2015 Office Action pp. 57-67 (e.g., pp. 58, 59), 68-87 (e.g., pp. 69, 80), and 88-
104 (e.g., p. 94); see also id. at 57 (“an arrangement for electrodepositing metals”), 68
(“equipment for the electrodeposition of aluminum”), and 93 (“electrolytic deposition of a
metal coating”).
12 A patent provided by Applicant covering “[t]he technology used in the goods that this
trademark concerns” describes an electrocoating system as performing a type of electrolytic
deposition. February 17, 2015 Response to Office Action p. 5.
13 March 12, 2015 Office Action pp.31-41, 42-56, 106-113.
14 Id. at pp. 130-137.
15 Id. at pp. 138-141.
16 Id. at pp. 142-144.
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the electrocoating context. Nonetheless, the overall evidentiary showing by the
Examining Attorney establishes the mere descriptiveness of not only the individual
words in the mark, but also the mark as a whole.
Applicant lodges three arguments against the descriptiveness refusal. First,
Applicant contends that the combination of TUBE and CELL is incongruous
because of the “suggestive and imaginative” modification of the “proper phrase
‘Tubular Cell’” to a mark that combines two nouns.17 We find that here, where the
evidence shows that Applicant’s cells come in the shape of a tube and contain tubes,
the use of TUBE with CELL fails to constitute an inventive or unique commercial
impression. The mere combination of nouns, by itself, does not necessarily avoid
descriptiveness. See, e.g., In re Petroglyph Games, Inc., 91 USPQ2d at 1341 (holding
BATTLECAM merely descriptive of computer game software with a feature
involving battles and providing the player with the option to utilize various views of
the battlefield); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) (holding
SCREEN FAX PHONE merely descriptive of “facsimile terminals employing
electrophoretic displays”); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979)
(COASTER-CARDS merely descriptive of coasters suitable for direct mailing). As
noted by the Examining Attorney, “for the combined phrase to escape from mere
descriptiveness, it must become something more, with a distinct meaning in
relation to the goods that overshadows the descriptiveness of the terms. For
example, the combination must be a play on words with a well-known secondary

17 4 TTABVUE 4-5 (Applicant’s Brief pp. 3-4).
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meaning, like the phrase “SUGAR & SPICE.” See In re Colonial Stores Inc., 157
USPQ at 385 [citation omitted] (finding SUGAR & SPICE a double entendre and
not descriptive for bakery products because it evokes the nursery rhyme “sugar and
spice and everything nice”).” In this case, nothing about the combination of TUBE
and CELL changes the commercial impression of these descriptive words, nor does
the use of the noun TUBE rather than “tubular” create a different, non-descriptive
meaning.
Second, Applicant asserts that because consumers do not consider the tube
shape of its anode cells significant, the TUBE reference in the mark does not
describe a significant feature.18 Applicant points to no evidence supporting its
assertion about the lack of significance of the tube shape. As noted above,
Applicant’s own promotional brochure prominently displays and refers to the tubes
contained in its cells as well as the tube shape of the cells themselves.19 Thus, the
brochure reflects the significance of the tube shape and the tubes contained in the
goods. Moreover, a U.S. patent for an electrocoating system Applicant submitted in
response to an information requirement, which patent Applicant characterized as
concerning “[t]he technology used in the goods that this trademark concerns,”
describes benefits of a tubular shape used in some embodiments.20 In addition, the
foreign patent evidence described above indicates third party use of this term to

18 4 TTABVUE 5-6 (Applicant’s Brief pp. 4-5).
19 Applicant’s March 4, 2003 Specimen at 2.
20 February 17, 2015 Response to Office Action at 2-8 (U.S. Patent 4,711,709 entitled
“Diaphragm-Electrode System for Electrocoating”).
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refer to similar components.21 Thus, we find no support for Applicant’s portrayal of
the feature as too insignificant for descriptiveness purposes.
Third, Applicant claims that its scientifically-trained consumers would recognize
the phrase “tube cell” from the botany field, where it refers to a type of plant cell
(e.g., wheat grain), and therefore would find the use in this context incongruous.22
However, Applicant offered no evidence to support the factual assertion that its
consumers of electrocoating structural components would be sufficiently educated in
the distinct field of botany to recognize Applicant’s mark as a reference to a type of
plant cell. “That a term may have other meanings in different contexts is not
controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB
2012). Moreover, where the terms have a clear descriptive meaning in the context of
Applicant’s goods, consumers likely will focus on that meaning when encountering
the mark on the goods. See, e.g., In re Positec Grp. Ltd., 108 USPQ2d 1161, 1173
(TTAB 2013) (rejecting the applicant’s contention that its SUPERJAWS mark called
to mind a superhero rather than simply giving the impression of the laudatory term
“super” modifying the generic term for applicant’s jaws tool). In this case, other
evidence in the record discussed above shows the term used descriptively in the
context of Applicant’s goods and in connection with electrodeposition more
generally. Accordingly, we reject Applicant’s argument that an unrelated meaning
of the term in another context overcomes its descriptiveness in relation to

21 March 12, 2015 Office Action pp. 57-67 (e.g., pp. 58, 59), 68-87 (e.g., pp. 69, 80), and 88-
104 (e.g., p. 94).
22 4 TTABVUE 6 (Applicant’s Brief p. 5).
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Applicant’s goods. See DuoProSS, 103 USPQ2d at 1757 (descriptiveness assessed as
to the relevant goods, and not in the abstract).
Although Applicant asks for doubt to be resolved in its favor, we lack doubt
about the descriptiveness of the proposed mark. Considering it as a whole, we find
the term TUBECELL and the words TUBE and CELL descriptive of significant
features of the goods, and we find that the combination of the two words does not
generate any new meaning or suggestiveness.
Decision: The refusal to register Applicant’s mark TUBECELL is affirmed.