Gildemeister Aktiengesellschaft

Trademark Trial and Appeal Board

Sep 23, 2014

No. 79119089 (T.T.A.B. Sep. 23, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Gildemeister Aktiengesellschaft
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Serial No. 79119089
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Martin W. Schiffmiller of Kirschstein Israel Schiffmiller & Pieroni PC for
Gildemeister Aktiengesellschaft.

Zachary Bello, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Kuhlke, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Gildemeister Aktiengesellschaft (“Applicant”) seeks registration on the Principal
Register of the mark MILLTAP (in standard characters) for:
Housings of numerically controlled machine tools;
numerically controlled machine tools, in particular
numerically controlled machine tools with automatic tool
changers for automatically changing tools including
cutting tools, milling tools, drilling tools at numerically
controlled machine tools, numerically controlled milling
machines, numerically controlled grinding machines,
numerically controlled lathes, numerically controlled
universal milling and turning machines, and numerically
controlled machining centers; parts of and auxiliary
equipment of numerically controlled machine tools, in
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particular mechanical fastening devices, holding devices
for machine tools, drums for machine tools, tool carrying
spindles, spindle headstocks, spindle carrying carriage,
mechanical tools and tool changers, tool magazines in
particular for numerically controlled machine tools,
mechanical handling devices, work piece pallets,
manually and numerically controlled indexing devices,
consisting of rotary indexing devices, indexing plates,
indexing heads and rotary tables all for numerically
controlled machine tools; parts and auxiliary equipment
of numerically controlled machine tools, in particular
control devices being parts of machines; production
systems, in particular comprising of numerically
controlled machine tools, industrial robots with control
devices, mechanical conveying devices; assemblies being
parts of machines for machine tools, in particular for
milling machines and lathes; handling machines and
mechanical handling devices for work pieces or tools being
parts of machines; mechanical fastening devices for work
pieces and tools to be used in connection with numerically
controlled machine tools; machine parts or devices and
machines for automatically handling tools and work
pieces; parts of the aforementioned goods,” in
International Class 7.1
The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that MILLTAP is merely descriptive of Applicant’s goods under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,

1 Application Serial No. 79119089 was filed on January 20, 2012, based upon a request for
extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f).
Serial No. 79119089
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function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations
omitted). See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252
U.S. 538, 543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words
descriptive of the qualities, ingredients or characteristics of’ the goods or services
related to the mark.”) The determination of whether a mark is merely descriptive
must be made in relation to the goods or services for which registration is sought.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order
to find a mark merely descriptive, that the mark describe each feature of the goods
or services, only that it describe a single, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods or services. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1988). 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. Oppedahl & Larson LLP, 71
USPQ2d at 1372. However, a mark comprising a combination of merely descriptive
Serial No. 79119089
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components is registrable if the combination of terms creates a unitary mark with a
unique, nondescriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983).
The Examining Attorney asserts that Applicant’s proposed mark MILLTAP is
merely descriptive because “[t]he functions or purpose of the applicant’s goods are to
mill and tap. The applicant’s machines possess milling and tapping capabilities.”
Ex. Att. Br. p. 9.
In support of his position, the Examining Attorney submitted screen prints from
various third party websites showing milling and tapping machines and parts
therefor. A few examples are presented below:
2

2 www.ckpdrilling.com, attached to June 21, 2013 Office Action.
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3
In addition, the Examining Attorney points to excerpts from Applicant’s website
wherein Applicant discusses its “milling machines”4 and an excerpt from Wikipedia
noting that Applicant “is a leading manufacturer of machine tools and their
controls” and its “[p]roducts include lathes, milling machines, machining centers,
and mill-turns.”5
Finally, the Examining Attorney submitted screen prints from third-party
websites offering machines for sale, referring to them as drill mill tap machines,
and in one case as mill tap, as shown below:

3 www.precision-machining-parts.com, attached to June 21, 2013 Office Action. See also
August 26, 2013 Office Action and attachments thereto.
4 http://ag.gildemeister.com, attached to August 26, 2013 Office Action.
5 http://en.wikipedia.org, attached to August 26, 2013 Office Action.
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6
7
8
9

6 www.techspex.com, attached to February 25, 2014 Denial of Request for Reconsideration.
7 www.taiwantrade.com, attached to February 25, 2014 Denial of Request for
Reconsideration.
8 http://sinotek.en.alibaba.com, attached to February 25, 2014 Denial of Request for
Reconsideration.
9 www.tradecake.com, attached to February 25, 2014 Denial of Request for Reconsideration.
Serial No. 79119089
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In his Denial of the Request for Reconsideration, the Examining Attorney
included another example using the term MILL TAP in connection with milling and
tapping machines from the website www.machinetools.com as shown below.

Applicant explains that Mori Seiki is Applicant’s “affiliated corporation and co-
venturer with respect to the products at issue” and the photograph of the goods in
this printout illustrates how Applicant’s “mark is clearly used as a source-
identifying trademark on the goods, not as any type of descriptive term.” We
observe, however, that while this may show Applicant’s intention to use MILLTAP
in the manner of a trademark, the question is consumer perception and the uses by
third parties of “drill mill tap” and “mill tap” for such goods weighs in favor of
finding MILLTAP to be merely descriptive.
Applicant argues that the Examining Attorney “applied considerably too
restrictive a standard for determining when a mark may be considered distinctive
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and registrable as opposed to descriptive [by stating ] that ‘Only where the
combination of descriptive terms creates a unitary mark with a unique,
incongruous, or otherwise nondescriptive meaning in relation to the goods and/or
services is the combined mark registrable’.” App. Br. p. 6 quoting Ex. Att. Br. p. 9.
We see no error in the Examining Attorney’s analysis. Applicant is correct that the
standard for determining descriptiveness is “[w]hether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or characteristics of the goods [or
services] … with which it is used,’ or whether ‘imagination, thought, or perception is
required to reach a conclusion on the nature of the goods [or services]’.” In re
Gyulay, 3 USPQ2d 1009. The Examining Attorney’s reference to the discussion in
Colonial Stores Inc., 157 USPQ at 384-5 (CCPA 1968) simply highlights when the
combination of merely descriptive terms may result in a mark that does not
“immediately convey” knowledge of the goods or services.
Applicant argues that the words “tap” or “tapping” are not in the identification of
goods and in any event “[t]he fact that some of the goods identified could possibly be
associated with machinery that might be used in a tapping process does not render
the component ‘tap’ in applicant’s mark descriptive.” App. Br. p. 9. Applicant’s
identification is written broadly and could include “tapping” machine tools. The
wording
numerically controlled machine tools, in particular
numerically controlled machine tools with automatic tool
changers for automatically changing tools including
cutting tools, milling tools, drilling tools at numerically
controlled machine tools, numerically controlled milling
machines, numerically controlled grinding machines,
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numerically controlled lathes, numerically controlled
universal milling and turning machines, and numerically
controlled machining centers
uses the word “including” rather than “namely” and as such does not exclude other
types of machine tools. Moreover, as Applicant appears to acknowledge, even if
tapping machinery is excluded from the identification, the identification includes
machinery that could be used in conjunction with tapping machine tools.
Applicant’s argument that there is no evidence that the compound word
MILLTAP has ever been used descriptively is not persuasive. As the Examining
Attorney explained “the fact that an applicant may be the first and only user of a
merely descriptive designation does not necessarily render a word or term
incongruous or distinctive.” Ex. Att. Br. p. 13 citing Phoseon Tech., Inc., 103
USPQ2d at 1826. Moreover, the record includes an example of descriptive use of the
term MILL TAP, which is effectively identical to MILLTAP. See, e.g., supra Jinan
Sinotech Training Co. Ltd. offering “drill mill tap machines” for sale, and Tong-Tai
Machine and Tool Co. Ltd. offering “mill-tap machines” for sale. In re Carlson, 91
USPQ2d 1198, 1200 (TTAB 2009) (“We find, first, that the compression of the words
URBAN HOUSING into a single term, URBANHOUZING, still conveys the
commercial impression of two words. In other words, consumers would recognize the
mark as consisting of the separate elements URBAN and HOUZING”); In re Cox
Enterprises, Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL is simply a
compressed version of the descriptive term THE ATL without a space between the
Serial No. 79119089
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two words. Without the space, THEATL is equivalent in sound, meaning and
impression to THE ATL and is equally descriptive of applicant’s goods”).
Applicant argues that MILLTAP has the form and feel of a noun and because
the word “tap” has numerous other meanings not related to the goods in this
application, the proposed mark is not descriptive but rather requires “imaginative
thinking on the part of an observer [to] suggest the possibility that the goods
possess certain properties or capabilities.” App. Br. p. 14. First, we make our
determination in the context of the identified goods and in this case the word
MILLTAP in the context of machine tools for milling will not bring up the other
“numerous meanings” of tap. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933
(TTAB 2012). It will point directly without cogitation to the meaning that
Applicant’s machines possess milling and tapping capabilities.
Applicant argues that we must resolve doubt in its favor; however, we have no
such doubt. As noted above, we must consider the context in which the mark is used
in connection with those goods and understand the significance that the mark
would have to the average purchaser of the goods or services in the marketplace.
See Chamber of Commerce of the U.S., 102 USPQ2d at 1219. In the context of
machine tools, purchased by consumers knowledgeable about such equipment, there
is no question that MILLTAP describes a significant characteristic and function of
the machine tools, namely, that they possess milling and tapping capabilities.
In addition, the mark MILLTAP does not create any double entendre or
incongruity in the context of the respective goods and services. We find this
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proposed mark very different from the mark PLYBOO in the case upon which
Applicant relies. Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB
1999). In that case, the Board found that the opposer had not satisfied its burden to
prove that the mark PLYBOO, a combination of the words plywood and bamboo, for
“bamboo laminate flooring and plywood made of bamboo” is merely descriptive.
Here, the record clearly supports the Examining Attorney’s position that the
wording MILL and TAP retain their mere descriptive significance in the
combination mark MILLTAP. The evidence here establishes and we accordingly
find that MILLTAP immediately describes without the exercise of imagination
significant functions of the identified machine tools.
Decision: The refusal to register Applicant’s mark MILLTAP is affirmed.