Kaiser Aluminum & Chemical Corp.

Trademark Trial and Appeal Board

Oct 22, 1998

No. 75012139 (T.T.A.B. Oct. 22, 1998)

Paper No. 15
JQ
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kaiser Aluminum & Chemical Corporation
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Serial Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
_______
Francie R. Gorowitz of Ladas & Parry for applicant.
Cindy B. Greenbaum, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Kaiser Aluminum & Chemical Corporation filed
applications to register the following marks: MICROMILL
for “metal products, namely strip cast aluminum sheet”
(Int. Cl. 6);1 “an integrated facility for manufacturing
strip cast metal, composed of strip casting machines, twin
belt strip casters, casting belts, furnaces, rolling mills,
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
2
hot rolling mills, cold rolling mills, pinch rolls, rolling
stands, heaters, annealers, heat treaters, solution heat
treaters, quench stations, accumulators, shearers, coilers”
(Int. Cl. 7);2 “operating and management services, namely
operating an aluminum products production facility for
others, and providing management assistance for same” (Int.
Cl. 35);3 “custom construction of small scale integrated
continuous casting and rolling plants” (Int. Cl. 37);4
“training, namely hands on skills development in the
operation of continuous metal casting and rolling
processes” (Int. Cl. 41);5 and “industrial designing,
engineering, consultation in the establishment and/or
operation of continuous casting and rolling plants, and
licensing of intellectual property” (Int. Cl. 42);6 and
KAISER MICROMILL for “metal products, namely strip cast
aluminum sheet” (Int. Cl. 6).7

1 Application Serial No. 74/706,072, filed July 26, 1995,
alleging a bona fide intention to use the mark in commerce.
2 Application Serial No. 75/056,433, filed February 12, 1996,
alleging a bona fide intention to use the mark in commerce.
3 Application Serial No. 75/012,139, filed October 30, 1995,
alleging dates of first use of March 14, 1995.
4 Application Serial No. 75/012,141, filed October 30, 1995,
alleging dates of first use of March 14, 1995.
5 Application Serial No. 75/012,142, filed October 30, 1995,
alleging dates of first use of March 14, 1995.
6 Application Serial No. 75/012,140, filed October 30, 1995,
alleging dates of first use of March 14, 1995.
7 Application Serial No. 74/706,073, filed July 26, 1995,
alleging a bona fide intention to use the mark in commerce.
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
3
The Trademark Examining Attorney has refused
registration of MICROMILL under Section 2(e)(1) of the
Trademark Act on the ground that the mark, when applied to
applicant’s goods and services, is merely descriptive
thereof. With regard to the application for registration
of KAISER MICROMILL, the Examining Attorney has required a
disclaimer of the term “MICROMILL” apart from the mark.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.8
Applicant contends that the mark is only suggestive,
and that any doubts on the issue of mere descriptiveness
must be resolved in its favor. In support of its position,
applicant submitted, in pertinent part, dictionary
definitions of the words “micro” and “mill,” a copy of
applicant’s patent covering “Method Of Manufacturing
Aluminum Alloy Sheet” and third-party registrations of the
mark MICROMILL or slight variations thereof.
The Examining Attorney maintains that a “micromill” is
a small mill which produces specialty steel, can sheet and
aluminum alloys. Thus, according to the Examining
Attorney, the term sought to be registered describes the
type of facility in which applicant’s goods will be

8 The appeals are consolidated, and the merits will be considered
in this single opinion.
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
4
manufactured, or applicant’s services will be rendered.
The Examining Attorney has relied upon dictionary
definitions and excerpts retrieved from the NEXIS database.
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a term describe all of the properties
or functions of the goods and/or services in order for it
to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant
attribute or idea about them. Moreover, whether a term is
merely descriptive is determined not in the abstract but in
relation to the goods and/or services for which
registration is sought. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979).
The dictionary listings show that the term “micro” is
defined as “a combining form with the meanings ‘small,’
very small in comparison with others of its kind”, and
“mill” is defined as “a factory for certain kinds of
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
5
manufacture, as paper, steel, or textiles; any of various
machines that modify the shape or size of a workpiece by
rotating tools or the work; any of various other
apparatuses for shaping materials or performing other
mechanical operations.”
The Nexis evidence includes numerous references to the
term “micromill(s)”:
The advent of the micro-mill in the
steel industry is a good example of how
improved production equipment
eliminates historic economy-of-scale
advantages.
Machine Design, October 8, 1987
The result was a new process called a
“micromill,” which is a fraction of the
size of a conventional mill.
The Houston Chronicle, December 24,
1995
....steel that don’t need plants even
as large as what we have here. They
have some local scrap and some local
building needs, and what they need is a
micromill--a very small and efficient
operation.
Harvard Business Review, May/June 1986
Those smaller mills will be “micro-
mills”. . . .
American Metal Market, July 2, 1986
In any few weeks of perusing business
journals, you will come across phrases
such as: “micro-brewers” (beer),
“micro-mills” (steel). . . .
Chicago Tribune, November 9, 1987 (in
an article captioned “Tomorrow Belongs
To Those Who Think Small”)
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
6
The addition of the Korf Group furnace
is part of a three-stage plan to
transform the company into a “micro-
mill.”
American Metal Market, November 2, 1987
“While we have chosen Nevada for our
first micro-mill and will expect to
ship this facility’s production to both
domestic and offshore customers, we
believe that, over time, the economies
of scale make this process ideally
suited to be built in emerging market
countries around the world,” Richard B.
Evans, president of Kaiser Aluminum’s
micro-mills business, said in a
statement.
American Metal Market, November 17,
1995
The steel industry might have something
to learn from a successful micro-mill,
just as it learned from the mini-mill
explosion. . . .
American Metal Market, February 1, 1994
The Terre Haute plant “basically is a
micro-mill for the production of
primary ultra-high carbon and super-
plastics steels,” Russell said.
Industrial Energy Bulletin, October 26,
1990
Looking toward 2000, on the horizon is
the metals correlate to micro-breweries
as thin-strip casting technology drives
the development of the neighborhood
steel micromill.
Oregon Business, January 1996
Excerpts from the patent (No. 5,514,228), titled
“Method Of Manufacturing Alloy Sheet,” owned by applicant
show the following language:
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
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The concepts of the present invention
reside in the discovery that it is
possible to combine casting, hot
rolling, annealing and solution heat
treating, quenching and optional cold
rolling into one continuous in-line
operation for the production of
aluminum alloy sheet stock. . . .The
in-line arrangement of the processing
steps in a narrow width (for example,
12 inches) make it possible for the
invented process to be conveniently and
economically located in or adjacent to
sheet stock customer facilities. . .
.to facilitate ease of processing and
enable use of small decentralized strip
rolling plants. . . .By employing such
narrow cast strip, the investment can
be greatly reduced through the use of
small, two-high rolling mills and all
other in-line equipment. Such small
and economic micromills of the present
invention can be located near the
points of need, as, for example, can-
making facilities. That in turn has
the further advantage of minimizing
costs associated with packaging,
shipping of products and customer
scrap. Additionally, the volume and
metallurgical needs of a can plant can
be exactly matched to the output of an
adjacent micromill.
The term “micromill,” given the dictionary
definitions, would be perceived as meaning a small mill in
comparison to other mills. The additional evidence bears
this out. The NEXIS evidence shows that the term
“micromill” is a readily used and commonly understood term
in the metal industry. Indeed, applicant itself used the
term in a highly descriptive/generic manner in its patent.
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
8
In sum, the evidence of record shows that the mark
MICROMILL, as applied to applicant’s goods and/or services,
immediately conveys information about the goods and/or
services, namely that they are involved in, or integrally
related to the operation of a micromill. Whether as
applied to goods or services, the fact that applicant may
have intended to be the first entity to use the term in the
metal industry is not dispositive where, as here, the term
“micromill” unequivocally conveys a merely descriptive
connotation. In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973).
The third-party registrations are of little help in
determining the registrability of the mark at issue in this
case. As often noted by the Board, each case must be
decided on its own set of facts.
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
9
Decision: The refusals to register are affirmed.9
R. F. Cissel
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

9 With respect to application Serial No. 74/706,073 for the mark
KAISER MICROMILL, the refusal to register is affirmed in the
absence of a disclaimer of the descriptive word “micromill.”
Applicant is allowed until thirty days from the date of this
decision to submit the disclaimer. Trademark Rule 2.142(g); TBMP
§1218. If the disclaimer should be submitted, this decision,
only insofar as it relates to application Serial No. 74/706,073,
will be set aside.
Ser Nos. 74/706,072, 74/706,073, 75/012,139, 75/012,140,
75/012,141, 75/012,142 and 75/056,433
10