Coherix Corporation

Trademark Trial and Appeal Board

Aug 22, 2006

No. 78146593 (T.T.A.B. Aug. 22, 2006)

Mailing: 8/22/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Coherix Corporation
________

Serial No. 78146593
_______

Susan M. Kornfield, Alan N. Harris and Angela Alvarez Sujek
of Bodman LLP1 for Coherix Corporation.

Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Coherix Corporation to
register the mark TEMPORAL HOLOGRAM for “digital imaging of
an object at different times.”2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 These attorneys were not appointed as counsel for applicant
until after the appeal brief was filed. Applicant’s somewhat
inconsistent arguments and statements during prosecution may be
attributed, at least in part, to the fact that no fewer than four
different law firms have represented applicant.
2 Application Serial No. 78146593, filed July 23, 2002, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78146593
2
§1052(e)(1), on the ground that applicant’s mark, if used
in connection with applicant’s services, would be merely
descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant concedes that the individual words
comprising its mark are descriptive, but contends that the
combination of the words results in a “unitary mark with a
unique meaning” that is just suggestive. (Request for
Reconsideration, p. 3). Applicant also states that
“TEMPORAL HOLOGRAM, at most, may describe a good that is a
hologram that relates to time,” but that the mark does not
describe the service of producing and comparing digital
images.” (Response, 7/4/03). Applicant asserts that “time
will always be a necessary factor in the creation of any
hologram.” Applicant, relying on a dictionary definition
of “frequency,” states that “all holograms are going to
have some relation to frequency and time because, by its
very definition, it is the timing, or frequency, of the
light wave that helps to create the hologram.” (Response,
11/5/04). In its appeal brief, applicant indicated that it
is “required to keep the exact nature of the TEMPORAL
HOLOGRAM service concept confidential at the public level,
because of its patent-pending status.” (Appeal Brief, p.
Ser No. 78146593
3
2). Nevertheless, applicant earlier offered a glimpse at
the nature of applicant’s services. Applicant states that
it intends to provide:
a service creating a comparison of
images, or holograms, of a product
generated at different times over the
useful life of the product. For
example, an image of the product could
be taken when the product is
manufactured and additional image(s) of
the product could be taken after the
product is placed in service. The
images can be compared to providing
information regarding differences
between the product at different times,
to provide information regarding
changes or wear that may occur over the
product’s life. (Response, 7/24/03).

In response to the examining attorney’s inquiries,
applicant admitted that applicant’s services can involve
holograms. Applicant further stated that the “temporal”
aspect of applicant’s digital images originates in the
concept that images of a product are taken at different
times in order to provide information regarding changes or
wear that may occur over the product’s life. According to
applicant, the mark requires the customer to use
imagination to connect the mark with images used to compare
and evaluate a product at different points in time. In
support of its arguments, applicant submitted a printout of
a listing of “hits” when the term “temporal hologram” was
searched using GOOGLE’s search engine. According to
Ser No. 78146593
4
applicant, the word “temporal” in “temporal hologram” “has
been used in many contexts to describe scientific and
mathematical relationships, including the timing of pulsing
light used to create a hologram, the timing of the
frequency of the light wave, the time-space relationship
that is utilized in order to assist in reading a hologram,
and the holographic image of a time spectrum.” At no time,
applicant contends, “is the word ‘temporal’ used by any of
these websites to describe Applicant’s services of
collecting holographic images over the lifetime of a
product.” (Response, 11/5/04). Applicant also submitted
an Internet article and a dictionary definition of the term
“frequency.”
The examining attorney maintains that applicant’s
services involve holograms that display an object at
different times. Thus, the examining attorney contends,
the descriptiveness of the individual words “TEMPORAL” and
“HOLOGRAM” is evident because “the holograms are temporal
to the extent that they are time-based.” (Appeal Brief, p.
3). According to the examining attorney, the combination
of the two merely descriptive terms results in a composite
that itself is merely descriptive. In support of the
refusal, the examining attorney submitted dictionary
Ser No. 78146593
5
definitions of the terms “temporal” and “hologram;” and an
article retrieved from the Internet.3
A term is merely descriptive of goods or services,
within the meaning of Trademark Act 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. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance

3 This article concerns a specialized medical process that
appears to have no relationship to the type of services rendered
by applicant. In this connection, we note that the examining
attorney does not refer to this evidence in his brief.
Ser No. 78146593
6
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999); and In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of 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 or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In
Ser No. 78146593
7
re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) [SMARTTOWER
merely descriptive of commercial and industrial cooling
towers]; In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
2001) [AGENTBEANS merely descriptive of computer programs
for use in development and deployment of application
programs]; In re Putnam Publishing Co., 39 USPQ2d 2021
(TTAB 1996) [FOOD & BEVERAGE ONLINE merely descriptive of
news information services for the food processing
industry]; and In re Copytele Inc., 31 USPQ2d 1540 (TTAB
1994) [SCREEN FAX PHONE merely descriptive of facsimile
terminals employing electrophoretic displays].
We find that the mark sought to be registered,
TEMPORAL HOLOGRAM, when used in connection with services
described as “digital imaging of an object at different
times,” is merely descriptive thereof.
The examining attorney introduced dictionary
definitions of the terms comprising applicant’s mark. The
term “temporal” is defined in pertinent part as “of,
relating to, or limited by time; lasting only for a time.”
The American Heritage Dictionary of the English Language
(3d ed. 1992). The term “hologram” means “a three-
dimensional image reproduced from a pattern of interference
produced by a split coherent beam of radiation (as a
laser).” Merriam-Webster Online Dictionary (www.m-w.com).
Ser No. 78146593
8
Applicant has confirmed, as noted above, that
applicant’s services can involve holograms, and that the
“temporal aspect of applicant’s digital images originates
in the concept [that] the images of the product are taken
at different times” in order to “provide information
regarding changes or wear that may occur over the product’s
life.” Applicant also confirmed, as noted above, its view
that the terms “temporal” and “hologram” are individually
descriptive as used in connection with applicant’s
services.
Based on the meanings of the individual terms and
applicant’s own statements regarding these terms and the
services for which the mark would be used, we conclude that
the combination TEMPORAL HOLOGRAM also is as merely
descriptive as the individual terms. When the proposed
mark is viewed in the context of applicant’s services, the
term immediately informs prospective customers that
applicant’s digital imaging involves the use of holograms
to provide a sequence of images of a product over some
interval of time. While this later connotation of
“temporal” (e.g., “relating to time”) in the context of a
new application in manufacturing, equipment maintenance or
quality control is different from the technical usage of
“temporal” in the creation of a holographic image, we find
Ser No. 78146593
9
that this second meaning is also merely descriptive of
applicant’s recited services. That is, applicant’s
proposed usage does not create a bizarre or incongruous
usage, or a non-descriptive double entendre. Cf. In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) [SUGAR & SPICE for bakery products]; In re Simmons
Co., 189 USPQ 352 (TTAB 1976) [THE HARD LINE for mattresses
and bed springs]; In re Delaware Punch Co., 186 USPQ 63
(TTAB 1975) [THE SOFT PUNCH for noncarbonated soft drink];
and In re National Tea Co., 144 USPQ 286 (TTAB 1965) [NO
BONES ABOUT IT for fresh pre-cooked ham].
The fact that applicant may be the first and only user
of the merely descriptive term TEMPORAL HOLOGRAM for this
type of service does not justify registration inasmuch as
the only significance conveyed by the term is merely
descriptive. In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018 (TTAB 1983).
Decision: The refusal to register is affirmed.