CTI Electronics Corp.

Trademark Trial and Appeal Board

Nov 3, 2015

No. 85150436 (T.T.A.B. Nov. 3, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: Mailed:
September 23, 2014 November 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board
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In re CTI Electronics Corp.
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Serial No. 85150436
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Pal Asija of Our Pal LLC,
for CTI Electronics Corp.
Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Mermelstein, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
CTI Electronics Corp. (“Applicant”) seeks registration on the Supplemental
Register of the mark INDUSTRIAL MOUSE (in standard characters) for “inductive
Serial No. 85150436
2
joystick cursor controller, namely heavy-duty computer pointer,” in International
Class 9.1 The application as filed includes a voluntary disclaimer of “Mouse.”
The Trademark Examining Attorney refused registration of Applicant’s mark
under § 23(c), 15 U.S.C. § 1091(c), having determined that the applied-for mark is
generic for the goods.2
After the Examining Attorney made the refusal final, Applicant filed a Notice of
Appeal. We affirm the refusal to register.
Evidentiary Issue
Before turning to the substantive refusal, we first address the Examining
Attorney’s objection to evidence attached to Applicant’s brief. The evidence was
attached as Exhibits I-VIII, and comprises the March 31, 2013 declaration of Peter
John Mikan, Applicant’s President, a news article and Internet materials, written
correspondence, and a copy of a drawing page from a patent. None of the materials

1 Application Serial No. 85150436 was filed on October 12, 2010, based on an allegation of
first use and first use in commerce on June 15, 1989.
2 In her first Office action, the Examining Attorney stated the grounds for refusal as both
Trademark Act § 2(e)(1) (barring registration of merely descriptive marks), and § 23(c). The
§ 2(e)(1) refusal does not appear to have been repeated, although the issues of
descriptiveness and acquired distinctiveness were mentioned throughout prosecution of the
application. So as to be entirely clear, neither descriptiveness under Trademark Act
§ 2(e)(1) nor acquired distinctiveness under Trademark Act § 2(f) are relevant to an
application for registration on the Supplemental Register. Trademark Act § 26
(“[A]pplications for and registrations on the supplemental register shall not be subject to or
receive the advantages of sections … 1052(e), 1052(f)… .”). An application for registration
on the Supplemental Register is a concession that the mark was merely descriptive of the
identified goods or services “at least at the time of the registrant’s first use of the term.”
Perma Ceram Enters. Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134 n.11 (TTAB 1992). The
record herein leaves no doubt that registration was finally (and correctly) refused solely
under Section 23(c) (a “mark [on the Supplemental Register] must be capable of
distinguishing the applicant’s goods or services”).
Serial No. 85150436
3
were previously made of record.3 Trademark Rule 2.142(d) provides that the record
in an application should be complete prior to the filing of an appeal and the Board
will ordinarily not consider additional evidence submitted after the appeal is filed.
Accordingly, the objection is sustained and we have not considered the evidence
attached for the first time to Applicant’s brief. See In re Quantum Foods Inc., 94
USPQ2d 1375, 1377 n.2 (TTAB 2010); TBMP § 1203.02(e) (2015) (untimely evidence
attached to brief will generally not be considered).
If Applicant had wished to file additional evidence following appeal, it should
have filed a request for remand together with the additional evidence sought to be
introduced and a showing of “good cause” (i.e., a satisfactory explanation as to why
the evidence was not made of record prior to appeal). See, e.g., In re Future Ads
LLC, 103 USPQ2d 1571, 1573 (TTAB 2012) (“Thus, if applicant had wished to
assert a claim of acquired distinctiveness, it should have filed a request for remand,
since any claim of acquired distinctiveness would have to be considered by the
examining attorney, not the Board.”). See also In re Luxuria s.r.o., 100 USPQ2d
1146, 1147 (TTAB 2011) (applicant’s request for remand denied for failure to show
good cause); Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
§ 1209.04 (2015).

3 The sole exception is the depiction of the DuraPoint peripheral device included with the
materials filed with Applicant’s brief, which was previously made of record.
Serial No. 85150436
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Applicable Law
A generic term “is the common descriptive name of a class of goods or services.”
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d
1827, 1830 (Fed. Cir. 2015) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). Because generic terms “are
by definition incapable of indicating a particular source of the goods or services,”
they cannot be registered as trademarks on either register. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001). “The
critical issue in genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.” Marvin Ginn, 228 USPQ at 530. There is a two-part
test used to determine whether a designation is generic: (1) what is the genus (class
or category) of goods or services at issue? and (2) does the relevant public
understand the designation primarily to refer to that genus of goods or services?
Princeton Vanguard, 114 USPQ2d at 1830 (citing Marvin Ginn, 228 USPQ at 530).
See also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ 2d 1458,
1462 (TTAB 2014).
The Office has the burden of proving genericness by “clear evidence.” In re
Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009) (“The Patent
and Trademark Office ... bears the burden of establishing that a proposed mark is
generic, … and must demonstrate generic status by clear evidence … .)” (citing Am–
Pro Protective Agency, Inc. v. United States, 281 F.3d 1234, 1239-40 (Fed. Cir. 2002)
(explaining that “clear evidence” is equivalent to “clear and convincing evidence,”
Serial No. 85150436
5
which is a heavier burden than preponderance of the evidence)). Evidence of the
public’s understanding of the mark may be obtained from “any competent source,
such as consumer surveys, dictionaries, newspapers and other publications.”
Princeton Vanguard, 114 USPQ2d at 1830 (citing In re Northland Aluminum
Prods., Inc., 227 USPQ at 963 (Fed. Cir. 1985)). See also Loglan Inst. Inc. v. Logical
Language Grp. Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992); Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA
1979).
What is the Genus of Goods at Issue?
Our first task is to determine the proper genus of the goods at issue. Applicant
has identified its product as an “inductive joystick cursor controller, namely heavy-
duty computer pointer.”4 In defining the genus, we commonly look to the
identification of goods in the application. See Magic Wand, Inc. v. RDB, Inc., 940
F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry
focuses on the description of [goods or] services set forth in the [application or]
certificate of registration.”).
In its Request for Reconsideration, Applicant agreed with the Examining
Attorney that the “genus of the goods is adequately defined by Applicant’s

4 We take judicial notice of the definition of “inductive” as meaning “of or relating to
inductance or electrical induction.” Inductance is further defined as “a property of an
electric circuit by which an electromotive force is induced in it by a variation of current
either in the circuit itself or in a neighboring circuit.” At www.merriam-webster.com. The
Board may take judicial notice of online dictionary evidence available in print format.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 85150436
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identification of goods,”5 but Applicant argues in its brief that only “inductive
joystick cursor controller” is the correct genus “because it covers the entire species
of goods for the mark.”6 Applicant’s argument that “inductive joystick cursor
controller” is the correct genus ignores the fact that it has narrowed the purported
genus of “inductive joystick cursor controller” by using a “namely” clause. A
“namely” clause is often used in an identification of goods to clarify terminology or
to specifically narrow the scope of the identification to those particular items
described by the language following the word “namely.” Trademark Manual of
Examining Procedure (“TMEP”) § 1402.03(a) (October 2015). Here, the namely
clause narrows Applicant’s goods by adding the descriptor “heavy-duty” to the
statement. Thus, the “namely” clause assists in identifying Applicant’s inductive
joystick cursor controllers as heavy-duty computer pointers.
However, the identification of goods does not go far enough in defining the
genus. Construed literally, Applicant’s goods would belong in virtually their own
genus, despite the existence of other, functionally equivalent devices such as
trackballs, touch and track pads, digital pens, computer mice and joysticks, all of
which are members of a larger genus of industrial computer pointing devices. In the
context of computers, a “pointing device” is “an input device, as a mouse, stylus, or

5 Request for Reconsideration dated June 10, 2012, 4 TTABVUE 30.
6 11 TTABVUE 11. Applicant’s use of the term “species” here is curious, because a “species”
is generally understood to identify a subset of a “genus.” Nonetheless, we understand the
crux of Applicant’s argument to be that “inductive joystick cursor controller” defines the
genus.
Serial No. 85150436
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joystick, used to control movement of a cursor or pointer.”7 We see no basis — at
least on this record — for placing any of the various heavy-duty pointing devices
(whether inductive or not; whether the cursor is manipulated on the computer
screen via a joystick or otherwise) in a different genus. As will be seen, the record
shows that all heavy-duty computer pointers perform the same functions and
appear to be largely interchangeable, their main distinction from one another being
largely a matter of preference. Applicant’s inductive joystick is but one of several
types of functionally equivalent computer pointers that Applicant has described as
“Human Machine Interface” products.8
In expanding on the identification of goods to define the proper genus for
Applicant’s goods, we have considered that the central focus of Applicant’s goods is
to move a cursor around on a computer screen; that cursor controllers come in
different configurations but are all directed to users of any type of general computer
pointer appropriate for industrial environments; that the goods naturally belong to
a category of functionally equivalent goods which may also be described as heavy-
duty computer pointers; and that Applicant uses terminology inherent to the
broader category when describing its specific product. In this regard, Applicant has
variously described its product as a “rugged keyboard/joystick assembl[y],”9 a

7 At http://dictionary.reference.com; Dictionary.com Unabridged, based on the Random
House Dictionary, Random House, Inc. 2014.
8 See Applicant’s website at http://www.ctielectronics.com, attached to September 9, 2011
Office Action. See also http://www.tiresias.org, attached to final Office Action: “While the
most common pointing device by far is the mouse, many more devices have been developed.”
9 Request for Reconsideration Exhibit D, 4 TTABVUE 54.
Serial No. 85150436
8
“rugged pointer,”10 and as an “industrial pointer.”11 Applicant also identifies its
product as a “mouse replacement” in print advertising12 and specifies in a
“Company Technology & Innovations” data sheet that the peripheral device has
attributes provided to other pointing devices in general and computer mice in
particular, such as “point & click push button” operation and “internal speed
control.”13 In this regard, Mr. Mikan states that Applicant uses the term
INDUSTRIAL MOUSE “as the brand name for its line of computer pointing
devices.”14
Thus, inasmuch as heavy-duty inductive joystick cursor controllers are
themselves a subset (“species”) of the larger genus comprising industrial, inductive
heavy-duty computer pointing devices, and form a constituent part of this larger
genus, the fact that the goods are not shaped like conventional computer mice and
are operated by a joystick does not require that they be classified into a “genus of
one.”15 With this in mind, we define the genus as “inductive joystick cursor
controller, namely heavy-duty computer pointer.”

10 Id., Exhibit I, 4 TTABVUE 66.
11 Id., 4 TTABVUE.
12 Id., Exhibits F and G, 4 TTABVUE 57-59 and 60-61.
13 Id., Exhibit I, 4 TTABVUE 66-68.
14 Id., Exhibit A, 4 TTABVUE 44-46.
15 The fact that Applicant has not pluralized the word “pointer” does not affect the scope of
the genus, which includes all such pointers within the category.
Serial No. 85150436
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Does the Public Perceive INDUSTRIAL MOUSE as Referring to the Genus?
Having determined the proper genus, we must next determine whether the
relevant purchasing public would perceive the term INDUSTRIAL MOUSE as
referring to the genus of Applicant’s goods. Marvin Ginn, 228 USPQ at 531. In this
case, the evidence includes dictionary definitions, copies of advertising from
Applicant’s competitors, Applicant’s advertising, a copy of Applicant’s design patent
for an “Industrial mouse keypad,” and two pages from the Thomas Register’s
American Trademark Index.
Our starting point is with the dictionary definitions of “industrial” and “mouse,”
keeping in mind that what is relevant is how the mark as a whole would be
perceived by the purchasing public, not the individual words per se, “for the whole
may be greater than the sum of its parts.” Princeton Vanguard, 114 USPQ2d at
1831 (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed.
Cir. 1999)). While there is no dictionary entry for “industrial mouse” in the record,
this fact is not determinative. Activevideo Networks, 111 USPQ2d 1581, 1603 (TTAB
2014) (“[T]he presence or absence of a term in dictionaries is not controlling on the
question of whether a term is generic.”). Thus, while the inquiry into the public’s
understanding of a mark requires consideration of the mark as a whole,
determination of whether the public understands the individual terms to be generic
“merely provides additional assistance in assessing the genericness of compound
terms where it can be shown that ‘the public understands the individual terms to be
generic,’ and the joining of those terms into one compound word provides no
Serial No. 85150436
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additional meaning.” Princeton Vanguard, 114 USPQ2d at 1832 (citing Am.
Fertility, 51 USPQ2d at 1837).
A computer “mouse” is defined as “a small mobile manual device that controls
movement of the cursor and selection of functions on a computer display.”16 The
term “industrial” is defined as referring to something “used in or developed for use
in industry ; also: HEAVY-DUTY .”17
As an input device, Applicant’s cursor controller fits the definition of a mouse. As a
heavy-duty computer pointer, it is “industrial” in the sense that it is designed to
function in rugged, harsh environments such as factories or construction sites,
where heavy use or the presence of substances like grease, water, and dust are
likely to damage less-rugged devices. The public will understand the individual
terms “industrial” and “mouse” to be generic. We next consider the additional
evidence to determine whether the joining of those terms into one compound word
provides no additional meaning, and our starting point is with Applicant’s
competitors’ use of the term “industrial mouse.” As can be seen, Applicant’s
competitors use the term generically to describe heavy-duty computer pointers:
1. Talon Technical Sales offers a “Rugged Industrial Mouse” that is hermetically
sealed, light-weight, and provided with “force proportional or user feed-back

16 “Merriam Dictionary,” Applicant’s Request for Reconsideration, Exhibit L (There are two
Exhibits L, this is the one on page 103).
17 From http://www.merriam-webster.com, attached to final Office Action. Applicant also
provided a definition for “industrial” that includes “designed or suitable for use in industry
– industrial heating oil.” From http://www.google.com, attached to Request for
Reconsideration.
Serial No. 85150436
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position proportional input buttons.”18 The advertising headline reads: “Bokam
Engineering Introduces New Ruggedized Industrial Mouse.” The device can be
equipped with “cursor control, game control or digital outputs.” No picture of the
device is provided.
2. Among the “industrial pointing devices” offered by
Stealth.Com Inc. is its “Rugged Industrial Mouse” depicted
herein, and described as a “two-button Sealed Rubber Mouse”
having no moving parts and sealed for protection.19
3. Under the heading “Pointing Devices – Industrial Mice,”
Littlepc.com displays several types of environmentally sealed
“Industrial Mice, Trackballs & Pointing Devices,” as shown.
“Rugged industrial pointing devices, trackballs and mice offer the
functionality of a mouse and the flexibility of a joystick in a
convenient, small-footprint package. These industrial mice are a
[sic] completely sealed design meeting NEMA 4/4X standards.”20
Pointing Devices -
Industrial Mice
4. Electronic Keyboards, Inc. advertises “Touchpad, Industrial Mouse and Mice
from EKI.” The “IM 1013-SA-N4-B (standalone industrial mouse)” is a “standalone

18 At http://talontechsales.com, attached to final Office Action.
19 At http://www.stealth.com/peripherals_industpoint.htm, attached to first Office Action.
20 At http://www.littlepc.com, attached to denial of Request for Reconsideration. “NEMA 4,”
a certification standard applicable to several of these devices, is used by the National
Electrical Manufacturers Association (NEMA) to certify those products that are designed
for “either indoor or outdoor use, and provide protection against falling dirt, rain, sleet,
snow, windblown dust, splashing water, and hose-directed water,” as well as “ice on the
enclosure.” Exhibit K (there are two Exhibits K, this is the one on page 90), Request for
Reconsideration.
Serial No. 85150436
12
industrial mouse [that] just sits on a table or piece of equipment and is sealed to
NEMA 4.” The “IM 1013-SAMS standalone industrial mouse” and the “IM 1018-
SAMS-N4 NEMA 4 standalone industrial mouse” include stainless steel housing. It
is noted in the advertisement that the devices can be
customized with “your number of keys, shapes of keys, colors,
logo’s [sic], and hot keys.” The IM 1013-SAMS “two button
Industrial Mouse 1013” product is shown at right.21

IM 1013-SAMS
5. Armagard offers an “industrial grade mouse” that is
“completely waterproof making it ideal for use in any
environment where dust, moisture or liquid is present.” As
shown herein, it resembles a conventional mouse. “Perfect in

NEMA 4 Dust & Dirt Proof
Optical Mouse
medical, industrial and marine settings our optical desktop industrial mouse is
NEMA 4X compliant. The Industrial mouse has a 6 foot USB cable and is PS/2
compatible… .”22
6. Dan-Mar Company Inc. advertises “industrial flat-panel computers” for sale.23
Its computers can be customized to include a “variety of operator input options.”
Product options, as listed on the website, include “custom keypad, touchscreen, bar

21 At http://electronickeyboards.com, attached to first Office Action.
22 At http://www.armagard.com, attached to first Office Action.
23 At http://www.danmarco.com, attached to first Office Action.
Serial No. 85150436
13
code and magnetic stripe card readers, and industrial mouse operator interfaces.”
The unit can be sealed. No photo of the device is provided.24
7. Interlink Electronics’ advertising shows an image of the
“DuraPoint Industrial Mouse” with no moving parts,
environmentally sealed and available in both stand-alone and
console mountable versions. It is advertised as “the toughest
mouse in the world!”25
DuraPoint
Industrial Mouse --
THE TOUGHEST MOUSE
IN THE WORLD
8. MGR Industries, Inc. offers a heavy-duty pointing device identified as the “PC-
IM Industrial Mouse,” which it describes as an “inductive joystick, with no moving
electrical contacts, that emulates a mouse.” As depicted
herein, it appears to be similar to Applicant’s computer
pointers and is “constructed from steel, which is zinc
plated and power coated for protection.” 26
Workmate PC-IM Industrial Mouse
9. Man & Machine offers “Industrial Keyboards and Mice [to] take on the most
challenging environments where water, fluids, dust and dirt can damage important

24 As advertised, it is unclear whether the term “industrial mouse” refers to a type of
interface rather than a standalone unit, which lessens somewhat the probative value of this
particular reference.
25 At http://www.interlinkelec.com attached to final Office Action.
26 At http://www.mgrinc.com, attached to first Office Action. We acknowledge Applicant’s
counsel’s argument that the MGR website no longer lists the PC-IM Industrial Mouse for
sale. A copy of the webpage purportedly showing that the item has been removed from the
website was attached to Applicant’s Request for Reconsideration. While this evidence raises
some doubt as to whether MGR currently offers this product, the evidence shows that, at
least at one time, MGR used “Industrial Mouse” to refer to an “inductive joystick” that is
highly similar if not identical to Applicant’s identified goods (“inductive joystick cursor
controller, namely heavy-duty computer pointer”) and that potential customers for such
goods were exposed to MGR’s use.
Serial No. 85150436
14
computer and industrial systems.”27 The mice depicted
on the website appear to be similar to conventional
mice, as shown herein. Industrial Mice:
Mighty Mouse 5 and Petite Mouse
The third-party usage of the term “industrial mouse” in a generic fashion by
Applicant’s competitors to promote their heavy-duty computer pointers, both in
joystick and conventional mouse configurations, indicates that consumers would
understand the term “industrial mouse” as the generic name for a type of computer
pointer intended for industrial environments. “[P]urchasers exposed to generic use
by competitors may themselves come to regard the designation as generic.”
Nobelle.Com, LLC v. Qwest Commc’ns Int’l, Inc., 66 USPQ2d 1300, 1306 (TTAB
2003). See also BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d
1554, 1558 (Fed. Cir. 1995) (“The cases have recognized that competitor use is
evidence of genericness.”) (citing Remington Prods., Inc. v. N. Am. Philips Corp., 892
F.2d 1576, 13 USPQ2d 1444, 1446 (Fed. Cir. 1990) (testimony of competitor’s
president of generic use by competitor)); In re Consol. Cigar Corp., 13 USPQ2d 1481
(TTAB 1989) (probative value given to uses of the term “whiffs” in a generic manner
by competitors); Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 43 (TTAB
1985) (“The reason for the prohibition against the registration of common
descriptive, or generic, names is that competitors may not be deprived of their right
to use such terms in their ordinary meanings, i.e., to call an article by its name.”).

27 At http://www.man-machine.com, attached to denial of Request for Reconsideration.
Serial No. 85150436
15
We acknowledge that several of the above Internet excerpts show the term
“industrial mouse” with initial capital letters, which is consistent with trademark
use. In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1831 (TTAB 2011) (“[I]n the
English language, initial capitalization of a term or phrase is generally used to
designate a brand name, as opposed to a generic term.”). However, capital letters
are also commonly used in headings. In these examples, the capitalization occurs in
the title or heading of the advertisement, the term is not followed by other generic
wording, and none of the references capitalize the term to the exclusion of the other
terms within the phrase in which the term appears. For example, the Talon
reference describes the product as a “Rugged Industrial Mouse,” but all three words
are capitalized. Littlepc.com heads its article by putting all the words in initial
capital letters (“Pointing Devices – Industrial Mice”), but in the body of the text
refers to “industrial mice” in lower-case letters. Electronic Keyboards uses initial
caps for the title of the article (“Touchpad, Industrial Mouse and Mice from EKI”),
and while it advertises the “two button Industrial Mouse 1013” keypad using
capitalization to set the term apart, EKI does not use capitalization in its
description of the “industrial mouse” product (“The IM 1013-SA-N4-B [is a]
standalone industrial mouse… .”). Finally, Interlink and MGR each use a
proprietary term (“DuraPoint” and “PC-IM” respectively) preceding “Industrial
Mouse” such that even though they capitalize “Industrial Mouse,” it is being used as
a generic term for the goods. The third-party use of the term supports a finding that
Serial No. 85150436
16
“Industrial Mouse” is a generic term for an “inductive joystick cursor controller,
namely heavy-duty computer pointer.”
We next consider Applicant’s own use of its mark, as illustrated below.
28

28 Request for Reconsideration, Exhibit F, “Electronic Engineering Masters, 1998 edition.”
Serial No. 85150436
17
29
As these examples show, Applicant sometimes uses its mark in the manner of a
trademark. However, Applicant’s use of initial capitalization or other stylization of
the term, or its use of the ™ or trademark symbol in its advertising does not
transform “industrial mouse” as the name of a category of heavy-duty computer
pointing devices into a trademark. See, e.g., Goodyear Tire & Rubber Co. v.
Continental General Tire Inc., 70 USPQ2d 1067, 1076 (TTAB 2003) (“the mere fact
that applicant often capitalizes the term [“Intelligent” for tires] cannot salvage a
term that the record shows otherwise to be a descriptive term”); In re Volvo Cars of
North America Inc., 46 USPQ2d 1455, 1461 (TTAB 1998) (“[U]se of the notice

29 At www.ctielectronics.com, attached to Final Office Action.
Serial No. 85150436
18
indicating that DRIVE SAFELY [for automobiles] is a trademark of applicant does
not transform this unregistrable phrase into a trademark indicating source or
origin.”).
Applicant also uses the mark in a generic manner, as shown below, where the
plural form, “industrial mice,” is used to name the goods, and where is stated “in the
harshest of environments these industrial mouse [sic] take a beating and keep on
performing without fault.”30

To further illustrate the commercial impression of INDUSTRIAL MOUSE, we
refer to Applicant’s Design Patent 459359 for an “Industrial mouse keypad.”31 The
design patent has value in showing how Applicant has used the wording “industrial
mouse” to describe an inductive, heavy-duty computer pointer,32 and suggests that
the term is considered generic in the relevant trade. This device is configured in the

30 At http://industrialmouse.com, attached to Final Office Action.
31 Design Patent D 459359, attached to final Office Action.
32 It is advertised by Applicant under the trademark ARROWMOUSE. Request for
Reconsideration, Exhibit J, 4 TTABVUE 72.
Serial No. 85150436
19
nature of a keypad as shown: .33 Applicant titled its design patent
“Industrial mouse keypad” and uses that phrase in both the patent’s claim (“I claim
the ornamental design for an industrial mouse keypad, as shown and described.”)
and the description of the drawings (“FIG. 1 is a top plan view of the industrial
mouse keypad.”).
While a trademark can be used in a patent application, to be recognized as such
USPTO examination policy requires that “its meaning [must be] established by an
accompanying definition in the specification” or be “well-known to one skilled in the
relevant art and ... satisfactorily defined in the literature.” MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 608.01(v) (9th ed. 2014). Although “industrial
mouse keypad” appears in capital, bold type in the title of the design patent, that
term appears in lower case and as part of a sentence in the claim and in the
description of the drawing. Moreover, there was no attempt to define in other words
the device for which Applicant uses the term “industrial mouse” in the patent. Thus
the ’359 design patent shows Applicant’s own generic use of “industrial mouse” and
suggests that the patent examiner considered the term to be “well-known to one
skilled in the relevant art and ... satisfactorily defined in the literature,” further
indicating the generic meaning of “industrial mouse.”

33 Brochure from October, 2001, Exhibit J, Request for Reconsideration.
Serial No. 85150436
20
In support of registrability, Applicant argues that its mark has been registered
as a trademark by the State of Connecticut and was once federally registered on the
Principal Register with a claim of acquired distinctiveness under Trademark Act
Section 2(f) and with a disclaimer of “MOUSE.”34 A registration for a mark on a
state register is probative only upon a showing, which is missing from this record,
that the state examines each application for registration on its merits, using the
same criteria as those specified in the federal Trademark Act. Flowers Indus. Inc. v.
Interstate Brands Corp., 5 USPQ2d 1580, 1588, n.8 (TTAB 1987). A cancelled
federal registration is not probative evidence of anything except that it once issued.
See, e.g., In re Datapipe, Inc., 111 USPQ2d 1330, 1337 n.26 (TTAB 2014). As long as
Applicant maintained its registration, and it remained unchallenged under
Trademark Act Section 14, Applicant was able to claim the prima facie validity of
the registered term, and use the official trademark registration symbol. However,
Applicant may not rely on its now-cancelled registration because the presumption of
validity that attached to the registration ceased to have effect when the registration
was cancelled. In re Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the Section [7(b)] presumptions and makes the question of
registrability ‘a new ball game’ which must be predicated on current thought.”); In
re Noon Hour Food Products Inc., 88 USPQ2d 1172, 1181 (TTAB 2008) (finding

34 Reg. No. 2090452 for the mark INDUSTRIAL MOUSE (standard character format) for
“inductive joystick cursor controllers” issued August 26, 1997 on the Principal Register
under the provisions of Section 2(f), with MOUSE disclaimed; it was cancelled under
Section 8 on May 29, 2004.
Serial No. 85150436
21
“bond-ost” generic for cheese, despite Applicant’s claim of long prior use and
inadvertently cancelled prior registration).
Applicant further argues that it has used its proposed mark for over 20 years
with the ™ and ® symbols as appropriate;35 that it has actively policed its rights
against others;36 and that it has used the term INDUSTRIAL MOUSE as a
trademark:
“CTI Electronics designed and the [sic] manufactured the
original Industrial Mouse® in 1991 and has deployed it in
every type of application imaginable, across many
industries. The Industrial Mouse™ is widely known for
it’s [sic] versatility and is one of the best mouse pointers
in the world.37
Applicant also submitted a page from the 2002 edition of the American
Trademark Index (Thomas Register), which, while partially illegible, lists
“Industrial Mouse” as a trademark owned by Applicant.38
The fact that Applicant may have long claimed rights in the term, or its use
of the ™ and ® symbols in advertising copy, does not mean that such term is
currently capable of identifying source. “Even long and successful use of a term does
not automatically convert a generic term into a non-generic term.” In re Candy
Bouquet Int’l Inc., 73 USPQ2d 1883, 1888 (TTAB 2004) (citing In re Helena

35 Applicant submitted the June 6, 2012, declaration of its President, Peter John Mikan,
who states that Applicant first used the term INDUSTRIAL MOUSE in 1989 and has
continuously used it since then. Exhibit A, Request for Reconsideration.
36 Mikan Decl. ¶ 10. Applicant provided copies of four letters it sent (three in 2000, one in
2004) to third parties protesting their use of INDUSTRIAL MOUSE online and in product
catalogues. Exhibit C, Request for Reconsideration.
37 At http://www.ctielectronics.com, attached to final Office Action.
38 Exhibit E, Request for Reconsideration.
Serial No. 85150436
22
Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA 1969)); In re Volvo Cars,
46 USPQ2d at 1461 (despite impressive advertising expenditures, applicant did not
prove recognition by the public of the subject phrase as a trademark as no evidence
bearing on the purchasing public’s reaction to applicant’s promotional efforts was
provided). Cf. Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007)
(“The sales figures for 14 years, standing alone and without any context in the
trade, are not so impressive as to elevate applicant’s highly descriptive designation
to the status of a distinctive mark.”). The evidence of policing consists of three
letters sent by Applicant’s counsel to alleged infringers and one letter sent to
“Google Trademark Complaint Procedure”; none of the responses, if any, were
included. This showing is insufficient to demonstrate an active policing program
such that the examples of third-party use of the term in the record are rendered
inconsequential.39 As to Applicant’s listing in the 2002 Thomas Register, the
significance of the term in 2002 is largely irrelevant. In 2002, Applicant’s prior
registration was still alive, a fact no longer true. The Thomas Register listing may
have been no more than the recognition of Applicant’s now-cancelled registration or
Applicant’s claims to the term as a mark, neither of which is persuasive of a

39 We have not considered the untimely evidence attached to Applicant’s brief comprising
additional demand letters and some replies thereto. Even if Applicant were to have
demonstrated limited success in its efforts to convince others to stop using INDUSTRIAL
MOUSE, however, we would not consider this to be evidence of non-genericness. As already
noted, the rationale for prohibiting registration of descriptive and generic terms is to
maintain the availability of such words to others in the same trade or industry to describe
their own goods and services. The fact that some of those other users capitulated to a
demand to stop using the term does not necessarily legitimize the demand. It may reflect
nothing more than the desire to avoid costly litigation.
Serial No. 85150436
23
different result herein. Moreover, a term that was once a presumptively valid
trademark may become generic through usage and popular acceptance, and thus no
longer be eligible for registration. Familiar examples are aspirin, cellophane, and
thermos, all of which were once, but no longer are, trademarks of a single
manufacture. See Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921); DuPont
Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir.); King-Seeley Thermos Co. v.
Aladdin Indus., Inc., 321 F.2d 577, 138 USPQ 349 (2d Cir. 1963).
Upon careful review of the totality of the evidence, we find that the Office has
met its burden of showing that the term “industrial mouse” is generic for “inductive
joystick cursor controller, namely a heavy-duty computer pointer.”
Decision: The refusal to register Applicant’s proposed mark INDUSTRIAL
MOUSE on the Supplemental Register under Trademark Act § 23(c), on the ground
that the term is generic and therefore incapable of distinguishing Applicant’s goods,
is affirmed.