Honeywell International Inc.Download PDFTrademark Trial and Appeal BoardApr 20, 2009No. 76501920 (T.T.A.B. Apr. 20, 2009) Copy Citation Mailed: 20 April 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Honeywell International Inc. ________ Serial No. 76501920 _______ Charles T.J. Weigell of Fross Zelnick Lehrman & Zissu PC for Honeywell International Inc. Amy E. Hella, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _______ Before Drost, Wellington, and Ritchie, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On March 27, 2003, applicant, Honeywell International Inc., applied to register the term MICRO SWITCH (in typed or standard character form) on the Principal Register for the following goods in Class 9: Limit switches, heavy duty limit switches, general purpose limit switches, oiltight limit switches, enclosed basic limit switches, general purpose limit switches, heavy duty snap-action limit switches, standard duty limit switches, medium duty limit switches, compact limit switches, stainless steel THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 76501920 2 limit switches, factory sealed prewired limit switches, enclosed limit switches, global limit switches, explosion proof limit switches, weather sealed explosion proof limit switches, hazardous location limit switches, NEMA limit switches, fully potted limit switches, harsh duty limit switches, miniature limit switches, gravity return limit switches, low torque limit switches, sealed contact limit switches, heavy duty factory sealed 6P limit switches, precision limit switches, plug-in limit switches, full size DIN EN50041 limit switches, miniature size DIN EN 50047 limit switches, international limit switches.1 The application identifies the date of first use anywhere and in commerce as December 31, 1941. During the prosecution of the application, applicant amended the application to seek registration under the provision of Section 2(f) of the Trademark Act. 15 U.S.C. § 1052(f). Response dated March 24, 2005. Subsequently, in its response dated October 30, 2007, applicant amended its application to alternatively seek registration on the Supplemental Register and it disclaimed the term “Switch.” The examining attorney2 has now refused to register applicant’s mark on the ground that “applicant’s proposed 1 Applicant has explained that 6P “generally refers to a product for indoor/outdoor use that resists water penetration and is undamaged by ice formation. DIN EN 50041 and 50047 are specifications published by Deutsch Industrie Norme (‘DIN’) and Europaische Norm (‘EN’), which describe certain dimensions and operating characteristics for industrial switchgear and control gear. (The 50041 specification are similar to, but slightly larger than, the 50047 specification).” Response to First Office Action at 2. 2 The current examining attorney was not the original examining attorney in this case. Ser. No. 76501920 3 mark is generic in connection with the goods.” Trademark Act Section 23, 15 U.S.C. § 1091. Brief at unnumbered p. 2. The examining attorney argues that the “sole issue on appeal is whether or not applicant’s mark, MICRO SWITCH, is generic for the goods.” Examining Attorney’s Brief at unnumbered p. 4. However, in its Supplemental Brief (p. 1), applicant maintained that: The instant brief is directed solely to the issue of genericness and ineligibility for registration on the Supplemental Register. Assuming the finding of genericness is withdrawn or reversed, Applicant requests further consideration of its Section 2(f) acquired distinctiveness showing. This issue has been previously briefed by Applicant and the Examining Attorney (before the rejection on generic grounds was issued). In its reply brief, applicant has not responded to the examining attorney’s assertion that there is only a single issue on appeal. However, in the event that applicant’s mark is not generic, we must also consider whether it is registrable on the Principal Register under Section 2(f). Descriptiveness/Genericness We now address the issue of whether the term MICRO SWITCH is generic. Because applicant is seeking registration under Section 2(f), there is no question that its mark is merely descriptive. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks a Ser. No. 76501920 4 registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent distinctiveness as an established fact”) (emphasis in original). We now set out and discuss some of the evidence of record in this application. Applicant’s goods are incorporated into “[t]hermostatic controls, pressure switches, microwave ovens, elevators, airplanes, home and commercial appliances, cars, trucks, airplane landing gear, aircraft doors, aircraft jetways, hydraulic lifts, pumps, and HVAC systems, and process control instruments.” Applicant’s Vice President and General Manager, Bradley Kautzer dec. at 1. The examining attorney previously submitted several dictionary definitions3 of the term “microswitch”: Microswitch – small sensitive switch: A very small sensitive switch that acts by the movement of a small lever and is used where rapid precise movements are required, especially in keyboards and automatic control devices. 3 While, of course, dictionaries are not conclusive evidence on the issue of genericness, they are very relevant evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1832 (Fed. Cir. 2007) (“The evidence of record includes translation results from four online Spanish/English translation websites that demonstrate that ASPIRINA is the Spanish-language equivalent of aspirin”) and The Loglan Institute Inc. v. The Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (“Evidence of what the relevant public understands the term to mean may come from … dictionary listings, newspapers, and other publications”). Ser. No. 76501920 5 Encarta® World English Dictionary [North American Ed.] 2007. Microswitch – a very small switch that is sensitive to minute motions and is used especially in automatic devices. www.m-w.com (Merriam-Webster online Dictionary) Microswitch – a highly sensitive switch used in automatic-control devices. www.dictionary.com (Based on the Random House Unabridged Dictionary (2006)). To this list of dictionary definitions of record, we add the following definitions of which we take judicial notice.4 1. The 1987 edition of The Random House Dictionary of the English Language (unabridged) (2d ed.) contains the same definition of the term “microswitch” as the 2006 version set out above. 2. Webster’s Third International Dictionary (unabridged) (1993) defines “microswitch” as “a small and highly sensitive switch in which minute motion establishes contact and which is used esp. in automatic control devices.” 3. Science & Technology Encyclopedia, University of Chicago Press (1999) (“Microswitch – Electrical switch that 4 See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) and In re 3Com Corp., 56 USPQ2d 1060, 1061 n.3 (TTAB 2000) (“The Board may properly take judicial notice of dictionary definitions, including definitions in technical reference works”). Ser. No. 76501920 6 requires only a small effort and movement to open or close it. The prefix ‘micro’ refers to the smallness of the movement, rather than the switch. It is used for automatic or semi-automatic applications in electromechanical machines in which a moving actuator opens or closes the switch to stop or start an operation”). 4. Dictionary of Aeronautical English, (David Crocker ed. 1999) (Micro-switch – “miniature switch used to govern systems automatically: Operation of an aircraft may also be seriously affected by the freezing of moisture in controls, hinges and micro-switches (NOTE: the plural is micro-switches)”). Finally, we note that Neil Sclater & John Markus, McGraw-Hill Electronics Dictionary (6th ed. 1997)5 has two relevant entries: Microswitch - Snap-action switch. Micro Switch - Trademark of Micro Switch Division of Honeywell for its line of switches. The examining attorney also included a definition of micro switch as “a generic term used to refer to an electric switch that is designed to be actuated by the physical motion of mechanical devices and is generally 5 Applicant has submitted evidence that shows that the McGraw Hill Engineering Online Digital Engineering Library did not have entries for “microswitch” or “micro switch.” Response dated October 30, 2007. Ser. No. 76501920 7 packed in a small form factor to allow placement in small spaces.” www.wikipedia.org.6 In addition to the dictionary definitions, the examining attorney submitted the following excerpts from various sources (emphasis added) as further evidence in support of her argument that the term “micro switch” or “microswitch” is generic.7 Another type of limit switch often used in different types of control circuits is the micro limit switch or micro switch. Micro switches are much smaller in size than the limit switch… Stephen L. Herman, Industrial Motor Control, www.google.com/books8 Electric Perpetual Calendar The micro-switch is the master switch… Each of these two screws is so adjusted that its head bears on the actuating button of a pre-set type of micro-switch… Patent application No. GB196110039208 1961 11 029 6 In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007) (“In view of the foregoing, the Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information”). Applicant has pointed out that other Wikipedia entries identified registered trademarks as generic terms. 7 To the extent that the examining attorney has submitted truncated search results, we give them little weight. See Bayer, 82 USPQ2d at 1833 (“Search engine results — which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link — may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations”). 8 Applicant believes that the illustrations are its MICRO SWITCH brand products. Supp. Br. at 20. 9 Applicant has included several U.S. patents in which the term MICRO SWITCH is used as a trademark. See Request for Reconsideration dated August 4, 2008, Ex. F. Ser. No. 76501920 8 Linear actuator provided with limit microswitches having a very simple adjustment. European Patent No. EPO798473 Throttle Sevcon Linear Accelerator Combines conventional tried and tested limit microswitches with an advanced position sensing circuit which utilizes solid-state technology. www.electricvehiclesusa.com The adjustable limit microswitches and capacitor are connected to the motor. www.aaaremotes.com Excel Cell micro switch lasts 1M mechanical cycles. www.ece.com.tw10 Furthermore, there is a micro switch on each axis so that by reading the status of the micro switch, the HARDWARE HOME position can be detected. www.eecs.utoledo.edu. A low-density float on a pivoted rod is mounted on the vessel wall and linked to a limit switch which can be a micro mercury switch, or even a pressure switch. www.drexelbrook.com As the lift raises, the white plastic limit nuts will move toward the “UP” micro switch. 10 Even information on foreign websites may be considered, especially in cases like this where professional buyers may be seeking information about switches on the internet. Bayer, 82 USPQ2d at 1835 (“Information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark”). See also In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (“[I]t is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. The Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin”). Ser. No. 76501920 9 www.gemremotes.com Micro Switch How it works: A micro switch is a mechanical switch, requiring physical contact for operation. When contact is made with the switch trigger, the switch contacts are activated. www.vacuumfeedthru.com11 There are a number of control options as well, including low-voltage switches that mount anywhere in the cabinet (about $14), and low-profile micro switches (around $10) that can be set to activate the lights whenever a specific cabinet door is opened. Sunday Oregonian, January 19, 1998. Schneider rides a half-mile-long irrigation pipe, moving slowly above his cotton field to check the micro-switches that control the motors. Houston Chronicle, June 14, 1998. The plant supplies assemblies for power seats, power windows, instrument panels, moon roof limit switches and other micro-switch assemblies. Automotive News, March 15, 1999. Micronas Introduces Solid-State Replacement for Micro Switches. PR Newswire, July 31, 2000.12 Sensors include several “touch” micro switches, rotation counters and light detectors. Oregonian, July 16, 2002. Another required a magnet to be placed on the steering column that would trigger a micro-switch – but only if the glove compartment was open and the interior lights were on. Star-Ledger (Newark), March 21, 2003. 11 Applicant argues that “[n]o limit switches, or other switches, are listed among the available products.” Response dated October 30, 2007 at 8. 12 We can give some weight to newswire stories. See In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003). Ser. No. 76501920 10 Pushing in on the micro switch opens the contacts, and you would not be able to measure any continuity across the terminals. But my guess is it’s the motor, with maybe the pump portion running a distant second. San Diego Union-Tribune, July 26, 2003. This invention relates to circuit breakers for protecting electric power circuits and, more particularly, to such circuit breakers including separable contacts, an operating mechanism, and a switch, such as a micro-switch, which follows the ON, tripped and OFF states of the operating mechanism. Pittsburgh Post-Gazette, May 6, 2004. The tram system runs on a continual loop, using micro- switches that allow the tram to stop at any point on the track. Springfield News-Leader, July 1, 2004. General Motors officials say the problem could have one of two causes. The pin that activates the micro switch in the ignition may have moved out of position, not recognizing the vehicle is in Park and that the key can be safely removed. Plain Dealer (Cleveland), April 2, 2006. The difference is how retractable hardtop roofs operated then and now… micro switches and other electrical-mechanical devices required more than 640 feet of electric wire! Chicago Daily Herald, April 24, 2006. The pilot then came on to say that there were problems now with the plane – a micro switch that runs the flaps on the wings was malfunctioning. Capitol Times (Madison, Wisconsin), April 4, 2007. Tateishi Electric of Tokyo, which makes micro switches, has agreed to start producing electrical control parts and equipment in China… New York Times, September 3, 1980. The landing gear flaw does prove to be the suspected micro-switch. Los Angeles Times, November 29, 1990. Ser. No. 76501920 11 The drawing shows two limit switches. Each switch requires one micro switch (SW), one relay (R), and one diode (D). www.ampflow.com.13 “Evidence of the public's understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications.” In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The website references are relevant to the issue of genericness. In re Reed Elsevier Properties Inc., 482 F.2d 1376, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007) (LAWYERS.COM held generic): Moreover, in determining what the relevant public would understand LAWYERS.COM to mean, the board considered eight websites containing “lawyer.com” or “lawyers.com” in the domain name, e.g., www.massachusetts-lawyers.com, www.truckerlawyers.com, and www.medialawyer.com. It discussed the services provided by these websites in order to illuminate what services the relevant public would understand a website operating under Reed's mark to provide. These websites are competent sources under In re Merrill Lynch, 828 F.2d at 1570, and they provide substantial evidence to support the board’s finding. We add that applicant has criticized some of these excerpts and we have tried to indicate some of applicant’s 13 Applicant argues that the source is “apparently a small entity that also does not sell limit switches (they sell motor accessories).” Response dated October 30, 2007 at 13. Ser. No. 76501920 12 criticism. We agree with applicant that for some of these references it is not entirely clear whether they refer to applicant’s goods. However, we have considered the references as a whole and no individual excerpt is critical to the ultimate outcome here. In response, applicant has included photos of its goods and other switches and argues that its “limit switches which are covered in the application are exhibited above the ruler in the photo. The appearance, design and size of applicant’s limit switches are very different from those of the small and/or tiny size types of switches where the term ‘micro switch’ is used descriptively.” Response dated September 13, 2004 at 5. We note that, even in the photograph, applicant’s goods are not huge. Also, while applicant includes pictures of some of its goods, it does not identify Ser. No. 76501920 13 photographs comparing the size of its “miniature limit switches” and “miniature size DIN EN 50047 limit switches,” which may be its smallest switches, to the admitted “micro switches.”14 Furthermore, “Applicant recognizes that it does not have the right to prevent others from using ‘micro switch’ in a descriptive non-trademark, non-confusing manner in connection with very small switches.” Brief at 10. Applicant has criticized the examining attorney’s evidence for several reasons. (1) “[T]he NEXIS® search also reveals bias in tailoring search parameters to exclude evidence that could support Applicant’s contention. Both NEXIS® searches specifically directed the search to retrieve ‘micro switch’ or ‘micro switch’ [sic] with “NOCAPS or, in other words, the search sought only articles where these terms appeared with no capitalization whatsoever.” Supp. Br. at 22. (2) A similar search of ‘micro switch’ NO CAPS was also performed. This yielded 111 references, from a database of all U.S. media sources, a vast collection of stories. The articles, each printed in extremely truncated 14 “[I]f applicant’s mark … is generic as to part of the [goods or] services applicant offers under its mark, the mark is unregistrable.” In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 (TTAB 2002). Ser. No. 76501920 14 format, spanned the years 1996-2008, a period of approximately 12 years. The stories included 15 duplicates and at least 9 others that clearly refer to computer data switches or other digital devices that have no relevance to Applicant’s goods. At least two further sources… references [sic] Applicant’s own use of the MICRO SWITCH mark. At least one other was so lacking in content as to defy speculation as to what it referred to. When these articles are subtracted, this leaves 84 articles over a 12 year period, averaging 7 original articles per year.” Supp. Br. at 22. While we understand applicant’s criticism of these searches, we point out that applicant had numerous opportunities to submit additional stories to support its position, but it did not take much advantage of these opportunities. Consequently, we are left with a significant number of stories that support the examining attorney’s position. In addition, applicant has submitted the declaration of its Vice President, Bradley Kautzer, which contained the following statements: Snap-action switches, including MICRO SWITCH branded limit, basic, explosion-proof and safety switches, are typically purchased in bulk by manufacturers who include them in the internal mechanisms of the electro-mechanical products they produce. Ser. No. 76501920 15 Installation of precision snap-action switches often requires considerable electrical expertise to properly wire and interconnect them so that they operate correctly. As limit switches are often also safety devices that stop or prevent movement of a mechanical or electrical device where it otherwise would cause severe injury or critical mechanical failure, they should only be installed by properly trained technical personnel… The trademark MICRO SWITCH was first developed by a company called Micro Switch Corporation in 1940, and has been used in commerce ever since for basic and limit switches up to the present day. In 1950 Honeywell acquired this company… [T]he MICRO SWITCH mark has been used by Honeywell or its predecessor, on switches since at least 1941, with sales over 1 billion units. Honeywell’s U.S. external sales of MICRO SWITCH switching products during each fiscal [year] from 2000 through 2004 exceeded $175 million. Applicant also submitted two declarations from distributors of electronic switches, specifically, from Lee Davidson of Allied Electronics and William Carlton of Carlton-Bates Company, and which declare that: (1) They are aware that the “phrase ‘micro switch’ is used descriptively in the industry in connection with switches that are much smaller than Honeywell’s MICRO SWITCH brand limit switches”; (2) “MICRO SWITCH is a brand name that only refers to limit switches that are manufactured and sold by Honeywell, which are not small or tiny by industry standards”; and Ser. No. 76501920 16 (3) “I know that when I purchase MICRO SWITCH brand limit switches on behalf of my company, I will only receive the particular products marketed by Honeywell.” Applicant’s Initial Brief, attachments.15 Also, applicant submitted a definition of “limit switch” as “a switch designed to cut off power automatically at or near the limit of travel of a moving object controlled by electrical means” from the McGraw-Hill Engineering Online website.16 The website did not show any results for microswitch or micro switch. See also Answers.com (Snap-action switch17 definition includes a statement that “the trademark of one version is Micro Switch”). In addition, applicant included evidence that “the on-line source at Thomasnet.com, a searchable database of industrial and technical products provided by the Thomas Register, which is a well known and authoritative industry guide, shows MICRO SWITCH clearly referenced as a brand name and as a company name.” Response dated October 30, 2007 at 6 and Ex. B. Applicant also included websites that show the term “Microswitch” apparently used as a trademark. 15 The application was subsequently remanded to consider this additional evidence. 16 www.digitalengineeringlibrary.com. 17 A snap action switch is a “switch that responds to very small movements of its actuating button or lever and changes rapidly from one contact position to the other.” Answers.com. Ser. No. 76501920 17 See www.mouser.com (“Microswitch’s basic switch product line includes: standard size basics, miniature, subminiature, hermetically sealed and high temperature switches”) and www.relayspec.com (Micro Switch/Honeywell). We point out that one of the websites, www.rselectronics.com, notes that the “first ‘micro switch’ or snap-action switch was invented by Peter McGail in 1932 in Freeport, Il. In 1937, he founded the company MICRO SWITCH, whose name became synonymous with snap-action switches”). Applicant also cited the case of Micro Switch Corp. v. Julien P. Friez & Sons, Inc., 48 USPQ 430 (Comm'r Pat. 1941) in which the Commissioner sustained an opposition to the registration of “Microstat” based on “Micro Switch”).18 To this case, we add the case of First Industrial Corp. v. Micro Products Corp., 72 USPQ 175 (Comm'r Pat. 1947) in which the Commissioner held: Because it is “commonly employed in the electrical field,” and is allegedly descriptive, respondent argues that “petitioner has no valid claim to the exclusive use of ‘Micro’ either alone or in combination with other words for electrical apparatus generally.” Use of the word by others, however, in connection with goods that are different from those of petitioner, can have no bearing upon petitioner's rights in this proceeding. And though “micro-” is a combining form from the Greek, meaning “small,” it is 18 There was no discussion of the genericness or descriptiveness of the marks in that case. Ser. No. 76501920 18 not in that sense “an independent word of the English language,” but only “part of a word.” Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 32 CCPA 827, 146 F.2d 1019 [64 USPQ 394]. It is therefore suggestive rather than merely descriptive of the character of petitioner's switches. Id. at 176.19 However, as the Federal Circuit has pointed out: It is very easy for marks consisting of common, simple English words having connotations related to the products on which they are used, their properties, or uses to slip out of their origin-indicating role into the vernacular as descriptive terms and once that happens the possibility of registration as trademarks under the Lanham Act vanishes. For another example beside DeWalt [, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275 (CCPA 1961)], and another precedent in this court, see In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (CCPA 1969) (“cathedral hull” refused registration for boats because term had entered into general usage to designate a type of boat hull). Remington Products Inc. v. North American Philips Corp., 892 F.2d 1575, 13 USPQ2d 1444, 1449 (Fed. Cir. 1990). Applicant responded to other evidence of use of the term “Micro Switch” on websites that the examining attorney had submitted. In response to the examining attorney’s submission of evidence that the Meyle Siemens website uses terms such as “Siemens Micro Switch, Limit Switches,” applicant points out that the Siemens website directed to 19More modern definitions of “micro” include an adjective form as “Basic or small-scale” and a prefix form: “a. Small” and “b. Abnormally small.” See Office Action of May 11, 2004 (The American Heritage® Dictionary of the English Language (1992). Ser. No. 76501920 19 the United States does not use the term “Micro Switch.” In addition, the examining attorney has included websites from www.omron-id.com (“Reliable micro switches in wide variation with switching capacity of 10 to 20A and long life expectancy”) and the www.cherrycorp.com (“The plug is an insert moulding, for building in a watertight (IP67) micro switch of the DK series”) that showed the use of “Micro Switch” as the name of the goods. Applicant submitted evidence that these entities were no longer using the term “Micro Switch” as a generic term. Finally, applicant points out the difference between the number of hits in the examining attorney’s Google search results. “The first Google® search page submitted with the Office Action searched ‘micro switch’ ‘limit switch’ and excluded ‘Honeywell.’ It yielded just over 1000 hits… This almost identical search string, the prior search included ‘limit switches,’ save for the exclusion of Applicant’s name, yielded 25,000 hits.” Supp. Br. at 13. See also Office Action of November 16, 2005, Google attachment (“25,400 [results] for ‘micro switch’ ‘limit switch’”) and Office Action dated April 14, 2005, Google attachment (“1080 [results] for ‘micro switches’ ‘limit Ser. No. 76501920 20 switches’ –Honeywell”).20 As we indicated previously, we give truncated Google search results little weight. Also, without additional evidence, we can neither give the difference between the results of the searches here much weight nor can we extrapolate that these results show overwhelming references to applicant. The November 16, 2005 results show that there were 25,400 results. However, only ten results were attached. Even giving applicant the benefit of the doubt that five of the results may refer to its products,21 the other five results of record for the November 16, 2005 search appear to be generic uses22: Each shutter will be monitored by a micro switch at the home and … Hard limit switch (type). Card/interface. Pin. Direct Disable Signal … Linear or rotary movement (the limit switch or microswitch), or presence of a … centrifugal switch dip switch hall-effect switch micro switch … GlobalSpec offers a variety of limit micro switch for engineers and --- Braking Regenerative Brake Output Limit Switch Auxiliary I/O Monitoring Alarm … 20 Even in the ten results provided from this search, one shows trademark use inasmuch as it refers to “MICRO SWITCH Brand toggles, rockers and paddle switches”). 21 Some of these results are not at all clear references to applicant. See, e.g., “Limit Switches – ProCurve Switch gl 100/1000-T … Hubs Switches – Micro Switch – Key Switches” and “Limit Switch 48 R, DF, HIGH POTENTIAL TYPE P, DF – Pivoted insulator … Micro-switch temperature sensors feature two distinct series…” 22 Except for the initial capital letter in each excerpt, the spelling and punctuation are from the original. Ser. No. 76501920 21 Dual function micro-switch: activates vehicle height safety rod and limits cylin- … cable activated overhead safety limit switch … Consists of a limit switch assembly and a signal light panel … deflects and thus the gap between the. micro switch and anvil is closed … From this meager and barely comprehensible evidence, we certainly cannot conclude that the overwhelming majority or even most of the Google search results for the term MICRO SWITCH are references to applicant. Analysis Under H. Marvin Ginn Corp. v. Int’l Association of Fire Chiefs, Inc., “[t]he 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.” 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). The Federal Circuit went on to explain that: Determining whether a mark is generic therefore involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services? Id. Here, applicant has disclaimed the term “Switch” and its goods are identified as being switches. Therefore, that term is a generic term for the goods. While applicant Ser. No. 76501920 22 and the examining attorney disagree on the genus of the goods, we will assume that limit switches would be the genus for these goods. “Next, we must determine the relevant public for applicant’s goods.” In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1536 (TTAB 2007). Applicant argues that its “limit switches are technical goods sold to manufacturers who design and sell mechanical and electrical products.” Supp. Br. 11-12; Kautzer dec. at 2. We agree that this appears to be the case. See also First Industrial Corp. v. Sperry Gyroscope Co., 77 USPQ 230, 231 (Comm'r Pat. 1948) (“Opposer's goods are snap switches. Opposer argues, and has established, that they are of a precision nature, carefully engineered for use in various specialized applications as well as in general use. They are sold not only through wholesale distributors but for use by manufacturers in their equipment, such sales frequently being made by trained engineering personnel who must determine their capacity for use in the equipment of such customers”). Therefore, the purchasers of applicant’s goods would be professional purchasers and not members of the general public. The question now is whether these members of the relevant public would understand the term MICRO SWITCH to Ser. No. 76501920 23 refer to that genus of the goods. Marvin Ginn, 228 USPQ at 530. Inasmuch as there is no purchaser testimony, we look to such evidence as listings in dictionaries, trade journals, newspapers, and other publications to determine what the understanding of the purchasers of these products is. Merrill Lynch, 4 USPQ2d at 1143. There is ample evidence that the term “micro switch” is a common term in dictionaries and it is also found in scientific references to describe applicant’s type of switches. Furthermore, the Nexis and internet references that the examining attorney has made of record demonstrate that the term “micro switch” is used by the public to refer to switches such as applicant’s. Therefore, if the general public were the purchasers of applicant’s goods, it is clear that the evidence supports the examining attorney’s conclusion that the term “Micro Switch” is generic for at least some of applicant’s goods. However, the interesting question here is whether the professional purchasers of applicant’s goods would recognize the term “Micro Switch” as a generic term for the goods. The Federal Circuit discussed the question of the relevant purchasers in genericness cases in Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). In that case, respondent obtained a registration for the Ser. No. 76501920 24 mark TOUCHLESS for “automobile washing services.” Petitioner “presented evidence that car wash manufacturers and dealers use the term generically in trade articles and advertisements.” Magic Wand, 19 USPQ2d at 1552. The Court affirmed the board’s finding that “the evidence demonstrates limited generic use of the term ‘touchless’ before members of the relevant purchasing public, namely, automobile owners and operators.” Id. at 1553. The fact that there was evidence to show that the term had generic significance for car wash manufacturers did not demonstrate that the term was generic for the general public who would be the users of car wash services. Unlike the Magic Wand case, the professional buyers here would be exposed to the same dictionaries, encyclopedias, and publications to which the general public is exposed. Indeed, several of the publications are scientific or technical reference works. There is little evidence that suggests that these purchasers recognize applicant’s term as a trademark.23 These reference works 23 The McGraw-Hill Electronics Dictionary specifically refers to the term “Microswitch” as a generic term for a “snap-action switch,” which are the goods at issue in this appeal. Kautzer dec. at 1 (“These products are snap-action switches”). It then indicates that the term “Micro Switch” is a “trademark of Micro Switch Division of Honeywell” for its line of switches, which are not further identified. Ser. No. 76501920 25 suggest that the term “Micro Switch” has a generic significance now. Furthermore, we must determine the question of genericness/descriptiveness when registration is sought. Remington Products, 13 USPQ2d at 1449 (Federal Circuit held that in the context of its genericness/descriptiveness discussion that “descriptiveness is determined in cases of this type ‘on the basis of the factual situation as of the time when registration is sought,’ meaning now”). Therefore, we are considering the term MICRO SWITCH now, and not when applicant or its predecessor was using the mark or filing oppositions in the World War II era. Applicant has made only two declarations of record besides that of its corporate officer’s. These virtually identical declarations are from “distributors of electronic switches including Honeywell’s.” Davidson dec. at 1; Carlton dec. at 1. These are not customer declarations. It is not very surprising that two of applicant’s distributors recognize applicant’s term as a trademark. In re Soccer Sport Supply Co., 507 F.2d 1400, 184 USPQ 345, 348 (CCPA 1975) (“The affidavit of the retailer, which states that he associates appellant's design only with appellant, should also be considered for what might be inferred about consumer reaction. However, we cannot agree Ser. No. 76501920 26 with appellant that the affiants are equivalent to a large class of purchasers. Giving due consideration to the four affidavits, they do not establish an association of appellant's design with a single source by other than a small number of purchasers”). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) (“Mere conclusory statements and denials do not take on dignity by placing them in affidavit form”). It is more surprising that these two declarants report that: the “phrase ‘micro switch’ is used descriptively in the industry in connection with switches that are much smaller than Honeywell’s MICRO SWITCH brand limit switches.” As we indicated above, applicant’s identification of goods is not limited to switches of any particular size and it specifically includes miniature limit switches and miniature size DIN EN 50047 limit switches. We find that the evidence shows that the examining attorney has made out a prima facie case that the term MICRO SWITCH is generic for the identified goods. See Merrill Lynch, 4 USPQ2d at 1143 (When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by “clear evidence”). Ser. No. 76501920 27 Applicant points out that its use of the “trademark MICRO SWITCH was first developed by a company called Micro Switch Corporation in 1940” and applicant’s use of the “mark on switch components sold in U.S. Commerce has continued uninterrupted to the present day” and that it has sold over 1 billion units of products. Kautzer dec. at 2- 3. However, “[e]ven long and successful use of a term does not automatically convert a generic term into a non-generic term.” In re Candy Bouquet International Inc., 73 USPQ2d 1883, 1888 (TTAB 2004). See also In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA 1969). In this case, we have little evidence that prospective purchasers will recognize the term MICRO SWITCH on applicant’s goods as a trademark for those goods. Indeed, the evidence shows that the terms “micro switch” or “microswitch”24 are commonly used on various switches including limit or snap action switches. Reference works define the term generically. Applicant’s declarants admit that there are other uses of the term MICRO SWITCH in the industry for smaller switches but they do not explain how 24 The absence of a space is not significant as the terms “micro switch” or “microswitch” would have the same meaning. In re DNI Holdings Ltd., 77 USPQ2d 1435, 1439 (TTAB 2005) (“We have no doubt but that joining the separate words ‘sports’ and ‘betting’ creates a term that, in context, would be generic for a service that permits one to wager on sporting events. In this case, the combined term is not greater than the sum of its parts”). Ser. No. 76501920 28 the industry distinguishes applicant’s asserted trademark for a wide variety of snap action switches from use of the same term generically or descriptively in association with other limit switches other than a vague reference to size. In addition, “the mere fact that a record includes evidence of both proper trademark use and generic use does not necessarily create a mixed record that would overcome an examining attorney’s evidence of genericness.” In re America Online Inc., 77 USPQ2d 1618, 1623 (TTAB 2006). It would be unusual in cases such as this where an applicant has been using an allegedly generic term for some period of time for there not to be some evidence showing good trademark use. Here, this evidence is very limited. On the other hand, the evidence strongly supports the examining attorney’s position that the term is generic and applicant has not rebutted that evidence. Therefore, we conclude that the examining attorney has shown that the term MICRO SWITCH is generic for small limit switches that are included with applicant’s identified goods. Acquired Distinctiveness It has long been held that if a term is generic, no amount of evidence of acquired distinctiveness can establish that the mark is registrable. In re Northland Ser. No. 76501920 29 Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985). The evidence that applicant and the examining attorney submitted in support of their arguments that applicant’s mark is not generic may be used to determine if its mark has acquired distinctiveness. Here, applicant has the burden of proving that its mark has acquired distinctiveness. In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant”). “[L]ogically that standard becomes more difficult as the mark’s descriptiveness increases.” Yamaha Int’l, 6 USPQ2d at 1008. Inasmuch as we have concluded that the mark in this case is generic, it is at the very least highly descriptive and applicant would have a heavier burden in demonstrating that its mark had acquired distinctiveness. Applicant’s witness reports that it has been using the mark since 1941, that it has sold more than 1 billion units and that its sales from 2000 to 2004 exceeded more than $175 million. The board has recently pointed out that: Applicant’s long use and revenues suggest that applicant has enjoyed a degree of business success. Nonetheless, this evidence demonstrates only the popularity of applicant’s services, not that the relevant customers of such services have come to view the designation LENS as applicant’s source-identifying service mark. See In re Bongrain International Corp., Ser. No. 76501920 30 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997). In re Lens.com Inc., 83 USPQ2d 1444, 1448 (TTAB 2007). While two of applicant’s distributors report that they recognize applicant’s mark as a trademark, we find that this minimal evidence is not sufficient to meet applicant’s burden in light of the significant evidence of non- trademark use. Therefore, we conclude that applicant’s evidence demonstrates that its mark has not acquired distinctiveness, even if the mark were ultimately determined to be merely descriptive for applicant’s goods. Conclusion Applicant’s term MICRO SWITCH is generic for the goods recited in the application and, in the event that the term is not generic, applicant has not demonstrated that its mark has acquired distinctiveness. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation