Inter-continental Chemical Corp.

Trademark Trial and Appeal Board

Aug 7, 2000

No. 75168541 (T.T.A.B. Aug. 7, 2000)

Paper No. 15
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/7/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Intercontinental Chemical Corporation
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Serial No. 75/168,541
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David J. Josephic of Wood, Herron & Evans for applicant.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Quinn, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed to register the term
OSCILLATOR for “print screen cleaning machines.”1 The
application originally was filed seeking registration on
the Principal Register, but later was amended to the
Supplemental Register.
The Trademark Examining Attorney has refused
registration under Section 23 of the Trademark Act on the
Ser No. 75/168,541
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ground that the term sought to be registered is generic
and, thus, is incapable of identifying applicant’s goods
and distinguishing them from those of others.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.2 An
oral hearing was not requested.
Applicant argues that while the term sought to be
registered “may be somewhat descriptive,” the term is not
generic as it is subject to different meanings.3 Applicant
asserts that its clients have come to distinguish
applicant’s goods from those of its competitors through
recognition of the mark OSCILLATOR on applicant’s goods.

1 Application Serial No. 75/168,541, filed September 19, 1996,
alleging dates of first use of November 1, 1995.
2 With its brief applicant submitted for the first time a
declaration of its president, Cameron W. Cord, and a copy of a
computerized search report retrieved from the Office’s database.
The Examining Attorney properly objected to the submission of
this evidence as untimely. Trademark Rule 2.142(d); and TBMP
§1207.01. Accordingly, the evidence has not been considered in
deciding this appeal. Further, as the Examining Attorney pointed
out earlier during prosecution, the mere listing of third-party
registrations was insufficient to make them of record in this
appeal. In re Classic Beverage Inc., 6 USPQ2d 1383 (TTAB 1988),
and In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). We
hasten to add, however, that even if the evidence were
considered, it would not be persuasive of a different result in
this appeal. As often noted by the Board, each case must be
decided on its own set of facts, and the Board is not bound by
prior determinations made by Examining Attorneys. While uniform
treatment under the Trademark Act is highly desirable, our task
here is to determine, based on the record before us, whether
applicant’s mark is capable of registration.
3 At another point in its appeal brief, applicant asserts that
“applicant’s mark is a suggestive mark which lacks specific
meaning or definite informational quality.”
Ser No. 75/168,541
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Further, applicant contends that the dictionary meanings
fall short in demonstrating that the relevant purchasing
public (i.e., “those in the printing industry”) views the
term as the common name for print screen cleaning machines
or for applicant’s specific type of oscillating screen
cleaning machines. In support of its position, applicant
submitted excerpts retrieved from the NEXIS database which,
according to applicant, show widespread use of the term
“oscillator” in a variety of different industries. Thus,
applicant argues, the term has a “multi-layered meaning”
which indicates that the term is capable of registration on
the Supplemental Register.
The Examining Attorney maintains that the term sought
to be registered is generic for printing screen cleaning
machines which clean by oscillation. In support of the
refusal, the Examining Attorney submitted a dictionary
listing for the term “oscillator,” and two patents owned by
applicant pertaining to the goods identified in the present
application.
In order for a term to be registered on the
Supplemental Register, it must be capable of serving as an
indicator of source. Capability is determined by
considering the meaning of the term as applied to the
goods, the context in which the term is used on the
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specimens filed with the application, and the likely
reaction thereto by average purchasers upon encountering
the term in the marketplace. In re Sambado & Son Inc., 45
USPQ2d 1312 (TTAB 1997).
A mark is a generic name if it refers to the class or
category of goods on which it is used. H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. Section 14(3) of the
Act; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra. The
Patent and Trademark Office has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. In re Merrill Lynch, Pierce, Fenner and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
Evidence of the relevant public’s understanding of a term
may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals,
newspapers, and other publications. In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985).
Ser No. 75/168,541
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The term “oscillator” is defined as “a device or
machine producing oscillations.” Random House Unabridged
Dictionary (2d ed. 1993).
Also of record are two patents owned by applicant and
which cover the machine which is the subject of the
involved application. Registration No. 5,566,697 is titled
“Oscillator screen cleaning apparatus” and Registration No.
5,769,956 is titled “Method for cleaning a screen by
spraying and moving in a repeated continuous oscillating
motion.” The abstract of the first patent reads, in
pertinent part, as follows:
An oscillating screen cleaning
apparatus includes an enclosed housing
which forms a cleaning chamber having a
plurality of spray nozzles positioned
therein to spray a printing screen with
cleaning solvent. An oscillating
mechanism is mounted within the
cleaning chamber to move the screen in
an oscillating motion in front of the
spray nozzles to provide an efficient
and effective cleaning of the printing
screen. The spray nozzles are arranged
in two opposing grid patterns and the
screen is oscillated between the grid
patterns to provide complete coverage
of the screen with spray cleaning
solvent.
Throughout the patent, the product is referred to as
“oscillator screen cleaning apparatus.” In addition,
repeated references are made to the “oscillating
Ser No. 75/168,541
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mechanism.” The second patent includes much of the same
discussion.
We find that the term “oscillator” is generic for the
type of print screen cleaning machines produced by
applicant. The most telling pieces of evidence are
applicant’s patents wherein applicant itself identifies the
product as “oscillator screen cleaning apparatus.” This
evidence, coupled with the specific meaning of the term
“oscillator” when applied to applicant’s goods, convinces
us that the term is unregistrable. See: In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999);
In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998);
and In re Half Price Books, Records, Magazines, Inc., 225
USPQ 219 (TTAB 1984). See also: J. T. McCarthy, 2
McCarthy on Trademarks and Unfair Competition, § 12:25 (4th
ed. 2000). Applicant claims that its machine with an
oscillating mechanism is the only one of its kind, and
indeed, applicant owns a patent for its machine. This may
very well explain the absence of use of “oscillator” by
others in the field. Having said this, our view is that
the term “oscillator” should be freely available for use by
others in the industry.
We conclude that the term OSCILLATOR is understood by
the relevant public as a generic name for applicant’s type
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of print screen cleaning machines and, accordingly, is
incapable of functioning as a mark indicating applicant as
the source of goods of this type.
Decision: The refusal to register is affirmed.
T. J. Quinn
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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