Efficient Energy GmbH

Trademark Trial and Appeal Board

Sep 26, 2014

No. 79116114 (T.T.A.B. Sep. 26, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Efficient Energy GmbH
_____

Serial No. 79116114
_____

Michael A. Glenn of Perkins Coie LLP
for Efficient Energy GmbH.
Margaret Power, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Zervas, Lykos and Masiello,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Pursuant to Section 66(a) of the Act, 15 U.S.C. § 1141f(a), Efficient Energy
GmbH (“Applicant”) filed a Request for Extension of Protection of an international
registration for the mark ECHILLER (in standard character format) on the
Principal Register for, as amended, the following goods and services:
compressors for heat pumps; rotating systems having magnetic bearings for
rotation generation, electric energy generation, current generation, alternating
current generation and wind-powered electricity generation comprised of engines
not for land vehicles having magnetic bearings, electric generators having
magnetic bearings, current generators having magnetic bearings, alternating
current generators having magnetic bearings and wind-powered electricity
generators having magnetic bearings in International Class 7;
Serial No. 79116114
- 2 -

electric or electronic control or regulating apparatus and instruments, namely,
controls for regulating or controlling electric current in heat pumps; power
electronic devices, apparatuses and instruments for switching, converting,
regulating and controlling electricity in International Class 9;

installations for use of energy, storage of energy and conversion of energy,
namely heating devices in the nature of heat pumps, vapor generating devices
with heat pumps, cooling devices with heat pumps, drying and ventilating
devices with heat pumps, heat pumps, evaporators for heat pumps, liquefiers for
heat pumps in International Class 11;

maintenance of technical installations for use of energy in the nature of
installations for the purpose of heating, vapor generation, cooling, drying,
ventilation, storage of energy and conversion of energy, namely heat pumps,
vapor generators, coolers, dryers, ventilators, energy storages and energy
converters in International Class 37; and

development of technical installations for use of energy, in the nature of
installations for the purpose of heating, vapor generation, cooling, drying,
ventilation, storage of energy and conversion of energy, namely heat pumps,
vapor generators, coolers, dryers, ventilators, energy storages and energy
converters in International Class 42.1

The Trademark Examining Attorney has refused registration of the mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
mark is merely descriptive of Applicant’s identified goods and services.2 For the
reasons set forth below, we affirm the refusal to register.
I. Evidentiary Objection
Before addressing the substance of this appeal, we will consider first the
Examining Attorney’s objection to Applicant’s submission of third-party

1 Application Serial No. 79116114, filed pursuant to Section 66(a) of the Trademark Act, 15
U.S.C. § 1141f(a). See generally The Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks (“Madrid Protocol”) and Madrid Protocol
Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”).
2 For U.S. applications filed pursuant to Section 66(a) of the Trademark Act, a refusal to
register is sometimes referred to as a “refusal of the request for extension of protection of
the mark.” See e.g., September 10, 2012 Office Action.
Serial No. 79116114
- 3 -

registrations with its appeal brief as untimely. Trademark Rule 2.142(d) provides in
relevant part that “[t]he record in the application should be complete prior to the
filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not
consider additional evidence filed with the Board by the appellant or by the
examiner after the appeal is filed.” Insofar as the Examining Attorney has timely
interposed an objection to Applicant’s late-filed evidence with her brief, the
objection is sustained, and the evidence submitted concurrently with Applicant’s
appeal brief has been given no consideration. See e.g., In re Fiat Group Marketing &
Corporate Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014)
(examining attorney’s objection to applicant’s submission of registrations with
appeal brief sustained).3
II. Whether the Mark is Merely Descriptive?
We now turn to the substantive refusal before us. Section 2(e)(1) of the Lanham
Act precludes registration of a mark that, when applied to the goods or services of
the applicant, is merely descriptive of them. 15 U.S.C. § 1052(e)(1) (2006). “A term
is merely descriptive 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)). The determination of whether a mark is merely descriptive

3 The Board’s practice is not to take judicial notice of third-party registrations. See
Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1208.02 (2014) and
authorities cited therein.
Serial No. 79116114
- 4 -

must be made in relation to the goods or services for which registration is sought,
not in the abstract. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer,
82 USPQ2d at 1831. This requires consideration of the context in which the mark is
used or intended to be used in connection with those goods/services, and the possible
significance that the mark would have to the average purchaser of the goods or
services in the marketplace. In re Chamber of Commerce, 102 USPQ2d at 1219; In
re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987). Evidence that a term is merely descriptive to the relevant
purchasing public “may be obtained from any competent source, such as
dictionaries, newspapers, or surveys.” In re Bayer, 82 USPQ2d at 1831 (quoting In
re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986)).
Applicant argues that the mark is not descriptive because the letter “e” signifies
Applicant’s name “Efficient Energy.” Applicant also contends that the more common
usage of the letter “e” refers to products or services associated with the Internet,
and that the goods in Classes 7, 9 and 11 have no connection with the Internet at
all. Applicant further submits that because the prefix “e” and the term “chiller,”
when considered individually, do not convey any information or guidance regarding
the nature of Applicant’s goods and services, the combination of the two terms does
not result in a merely descriptive mark.
Descriptiveness is considered in relation to the relevant goods and/or services.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in
Serial No. 79116114
- 5 -

different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104
USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979)). When a mark consists of the letter “e” as a prefix combined with
a descriptive word or term for electronic goods and/or services, then the entire mark
may be considered merely descriptive under Trademark Act Section 2(e)(1). See In
re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (holding E-AUTODIAGNOSTICS
merely descriptive of an electronic engine analysis system comprised of a hand-held
computer and related computer software); In re Styleclick.com Inc., 57 USPQ2d
1445 (TTAB 2000) (holding E FASHION merely descriptive of software for
consumer use in shopping via a global computer network and of electronic retailing
services).
In support of the refusal to register, the Examining Attorney has submitted the
following evidence:
● An entry for the letter “e” from Acronymfinder as an abbreviation for
“electronic.”4

● An entry for the letter “e” from Netlingo explaining that “[a]n ‘e’ placed before
a word or phrase stands for ‘electronic.’’5

● A dictionary definition of the word “chiller” from Random House Unabridged
Dictionary (1997)6 with the following relevant entry:

3. a device for cooling or refrigerating.

● An entry for the word “chiller” from Wikipedia as “a machine that removes
heat from a liquid via a vapor-compression or absorption refrigeration cycle. This

4 acronymfinder.com (September 10, 2012 Office Action).
5 www.netlingo.com (July 2, 2013 Final Office Action).
6 See results from www.infoplease.com (September 10, 2012 Office Action).
Serial No. 79116114
- 6 -

liquid can then be circulated through a heat exchanger to cool air or equipment
as required.”7

● Evidence that the term “chiller” is commonly used in the heating and cooling
industry as a name for cooling devices. See for example the following: excerpt
from Trane advertising energy efficient chillers and electric heat pump cooling
devices; excerpt from EffTec Efficient Technologies web site defining chillers as
air conditioning systems and explaining that chiller efficiency is the amount of
electricity it takes to produce a ton of cooling; and excerpt from ClimaCool web
page advertising a simultaneous heating and cooling heat pump and a modular
chiller that can be used in commercial and industrial cooling.8

● Various use-based third-party registrations of marks with the letter “e” used
as a prefix for goods electronic in nature that are registered under Trademark
Act Section 2(f) based on acquired distinctiveness, or registered on the
Supplemental Register. Note for example Registration No. 3999995 for the mark
EKADDIE; Registration No. 4209678 for the mark EVAULT; and Registration
No. 4332084 for ECELL.9

● Examples from other industries of designations composed of the prefix “e”
with a descriptive and/or generic word to communicate to the consumer the
electronic nature of the product, including: “ebook” for “electronic book and “e-
cigarette” for “electronic cigarette.”10

The Examining Attorney’s evidence of record supports a determination that
Applicant's mark, ECHILLER, when considered in relation to the aforementioned
goods and services, immediately informs prospective purchasers as to a “quality,
feature…or characteristic” of Applicant’s goods and services. As aptly put by the
Examining Attorney, Applicant’s mark immediately conveys that Applicant’s
products and services “feature technology in the nature of electronic chillers,

7 Wikipedia (July 2, 2013 Final Office Action).
8 www.trane.com; www.efftec.com; www.climacoolcorp.com (July 2, 2013 Final Office
Action).
9 July 2, 2013 Final Office Action.
10 Entry for “e-book” from Wikipedia (September 10, 2012 Office Action) and excerpts from
the “e-Cigarette Forum” web site at www.e-cigarette-forum.com (July 2, 2013 Final Office
Action).
Serial No. 79116114
- 7 -

electronic parts and components for electronic chillers, and maintenance and
development services for electronic chillers.” Examining Attorney’s Brief,
unnumbered p. 9. Here, the prefix “e” meaning “electronic” is combined with the
noun “chiller” (a descriptive, if not generic term for applicant’s goods and services)
to create a merely descriptive mark as applied to the involved goods and services.
Where a combination of descriptive terms creates a unitary mark with a unique,
incongruous, or otherwise nondescriptive meaning in relation to the goods and/or
services, the combined mark may be registrable. See In re Colonial Stores, Inc., 394
F.2d 549, 551, 157 USPQ 382, 384 (CCPA 1968); In re Positec Grp. Ltd., 108
USPQ2d 1161, 1162-63 (TTAB 2013). Such is not the case here. Rather, the
combination of the terms “e” and “chiller,” when considered in relation to the
identified goods and services, immediately conveys to consumers a feature or
characteristic. See, e.g., In re SPX Corp., 63 USPQ2d at 1596 (“it would be readily
apparent to the purchasers of the identified goods that the mark E-
AUTODIAGNOSTICS consists of the prefix “E-” followed by the two ordinary words
AUTO DIAGNOSTICS which have been telescoped together into
AUTODIAGNOSTICS, particularly in view of the recognized meaning of “auto
diagnostics” for such goods.”).
In sum, we find that the Office has met its burden of demonstrating that
Applicant’s proposed mark ECHILLER when used in connection with the identified
goods and services is merely descriptive.
Serial No. 79116114
- 8 -

Decision: The descriptiveness refusal to register Applicant’s mark under
Section 2(e)(1) of the Trademark Act is affirmed for the goods and services identified
in each International Class of the application.