Manhattan Scientifics, Inc.

Trademark Trial and Appeal Board

Mar 9, 2006

No. 75809667 (T.T.A.B. Mar. 9, 2006)

Mailed:
9 March 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Manhattan Scientifics, Inc.
________

Serial No. 75809667
_______

James C. Wray, Esq. for Manhattan Scientifics, Inc.

Wendy B. Goodman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Walters, Rogers, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 24, 1999, applicant Manhattan
Scientifics, Inc. applied to register the mark MICROFUEL,
in typed or standard character form, on the Principal
Register for goods ultimately identified as “fuel cells and
fuel cell tanks for producing electrical energy; chemical
fuel for fuel cells provided as a unit with the foregoing”
in Class 9. The application (Serial No. 75809667) is based
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75809667
2
on an allegation of applicant’s bona fide intention to use
the mark in commerce.
The examining attorney1 refused registration on the
ground that the mark was merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because:
MICRO refers to something that is “very small.” FUEL
is “a material used to produce heat or power by
burning” (The Merriam-Webster’s® Collegiate
Dictionary, Tenth Edition, copyright © 1993). As the
evidence attached to the First Office Action supports,
“micro-fuel” is the source fuel for an electrochemical
process involving hydrogen and oxygen. The process
takes place in a “fuel cell” which operates similar to
a battery. A “fuel cell” is “an electrochemical cell
in which the energy of a reaction between a fuel, such
as liquid hydrogen, and an oxidant, such as liquid
oxygen, is converted directly and continuously into
electrical energy.” (The American Heritage®
Dictionary of the English Language, Fourth Edition
copyright © 2000).

Examining Attorney’s Brief at 3.2

Applicant argues that nowhere “in the applicant’s mark
do the words ‘fuel’ and ‘cell’ appear together. In fact,
the word ‘cell’ does not appear at all. According to the
Examining Attorney’s submitted definitions, at most the
Applicant’s mark would mean a ‘very small material used to

1 The current examining attorney was not the original examining
attorney in this case.
2 We grant the examining attorney’s request that we take judicial
notice of the referenced dictionary definitions. 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).
Ser. No. 75809667
3
produce heat or power by burning.’ The Applicant’s goods
are fuel cells and related fuel.” Reply Brief at 1.
Applicant also maintains that “MICROFUEL does not define
the goods or services and is not a key element.” Brief at
4.
When the examining attorney made the refusal final,
applicant appealed to this board.
In cases involving the issue of descriptiveness, we
look to see whether the mark immediately conveys knowledge
of the ingredients, qualities, or characteristics of the
goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1009 (Fed. Cir. 1987); In re Quik-Print Copy Shops,
Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980); In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) (A “mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
or characteristic of the product or service”).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
While we consider the mark in its entirety, it “is
perfectly acceptable to separate a compound mark and
discuss the implications of each part thereof … provided
Ser. No. 75809667
4
that the ultimate determination is made on the basis of the
mark in its entirety.” In re Hester Industries, Inc., 230
USPQ 797, 798 n.5 (TTAB 1986).
We begin our discussion by reviewing the evidence that
has been submitted on the issue of descriptiveness. The
evidence consists of numerous NEXIS and Internet articles.
A sample of the articles (emphasis added) follows.
But while solar cells may extend battery life for
today’s gadgets, tomorrow’s power guzzlers will need
more energy than batteries can provide. That’s where
micro fuel cells hold promise, Bradford said.
Fuel cells work by attracting a fuel in this
case, methanol to an electrically charged membrane
where it reacts with a catalyst to release power in
the form of electrons.
Fuel cells will provide many times more power
than batteries of equivalent volume and can completely
eliminate the need to plug in, said Chris Dyer, an
entrepreneur who is also editor of the Journal of
Power Sources, a scholarly publication.
“When you run out of energy, you should be able
to just pop in a new fuel cartridge and be off again,”
Dyer said. But that’s proven easier said than done.
Micro-fuel cell designers have favored methanol
as a fuel because it’s readily available and, being
liquid, easier to store than hydrogen gas. But
methanol has to be mixed with water for cells to work.
And managing this mixture requires pipes, pumps,
insulation and venting so that excess water evaporates
but the device being fueled doesn’t get too hot.
“You are making what is essentially a chemical
engineering plant into something the size of a deck of
cards,” Dyer said…
Its Mobion micro fuel cell uses a special
membrane that recycles waste water, allowing the
manufacturer to pack pure methanol, and thus more
power, into its fuel cartridges.
Seattle Times, 19 July 2004.

Ser. No. 75809667
5
MTI MicroFuel Cells, a subsidiary of Mechanical
Technology Inc. has received the 2004 Frost & Sullivan
Technology Innovation Award for its new micro fuel
cell technology.
Times Union (Albany, New York), 20 October 2004.

His goal is to develop and produce analog integrated
circuits used with micro fuel cells – devices that
will provide long-lasting power for cell phones to
laptops.
East Valley Tribune (Mesa, Arizona), 04 September
2004.

By 2012, micro fuel-cell technology is expected to
power 13.5 percent of laptops.
Seattle Times, 20 August 2004.

In some fashion, fuel cells are simply chemically
advanced batteries, although instead of being
recharged or thrown away, they are simply refueled.
But hydrogen is a highly efficient means of storing
and transmitting energy and so “micro fuel cells” are
looked at as a likely replacement for batteries in
consumer electronics. Already these micro-fuel cells
are capable of powering laptops for more than 10 hours
of continuous use – technology development is under
way to make such fuel cells hot swappable.
Boulder County Business Report, 15 April 2004.

As for Solicore, it’s just starting to mass produce
products. And it faces competition in the developing
market for new batteries, possibly including micro-
fuel cell technologies.
Morning Call (Allentown, Pennsylvania), 09 November
2003.

Micro-fuel cells would be a fantastic replacement for
the myriad disposable and rechargeable batteries that
inhabit our cellphones, digital organizers, laptops,
tablet PCs and digital cameras.
Hartford Courant, 09 October 2003.

Unlike conventional batteries that store electricity,
micro fuel cells generate electricity through a
chemical reaction between oxygen and a fuel such as
hydrogen or methanol. The cells continue to produce
electricity as long [as] there is fuel.
Ser. No. 75809667
6
San Francisco Chronicle, 01 September 2003.

Currently, Manhattan Scientifics is working on
developing micro-fuel cell technology and holographic
media.
Albuquerque Tribune, 12 August 1999.

Manhattan Scientifics said that it has come up with a
“pre-prototype” micro fuel cell that could be used to
power a cell phone.
New York Daily News, 31 December 1998.

The examining attorney also submitted several Internet
stories concerning “micro fuel cells,” including some from
applicant’s website. One example is applicant’s press
release dated 21 January 1998, that is entitled: “Los
Alamos Physicist Creates New Energy Source for Cellular
Phones, Other Portable Electronics.” The body of the press
release refers to “Today’s Los Alamos ceremony marks the
formal acceptance of the first of Manhattan Scientifics’
delivery of the first $500,000 to Energy Related Devices,
as well as a substantial equity interest of Manhattan
Scientifics’ equity to Hockaday, in exchange for the
intellectual property relating to micro fuel cell
technology.”
Another press release from applicant is entitled
“Manhattan Scientifics Completes Fuel Cell Powered Phone
Call. Device Converts Alcohol to Electricity.” The press
release reports that “Hockaday has successfully made a
cellular telephone call using a phone powered by an alcohol
Ser. No. 75809667
7
fueled pre-prototype micro fuel cell.”3 The press release
also refers to: “The successful demonstration of the pre-
prototype marks another significant milestone in the
development of the micro-fuel cell… For commercial use, the
tiny energy source will be engineered to be smaller and
lighter than a conventional rechargeable battery.”
An article from www.designtechnica.com is entitled
“Micro Fuel Cells to Gain in Popularity.” The article goes
on to report that: “The hype surrounding micro fuel cells
is understandable. Their ability to deliver more energy
per volume weight compared to existing lithium-ion
rechargeable battery technologies is a much-awaited
benefit… Micro fuel cells score over traditional batteries
in many other facets. In addition to being several times
lighter, micro fuel cells are simpler and quicker to
recharge.” We note that the description of “micro fuel
cells” is consistent with the definition of “micro” that
the examining attorney included with the first Office

3 We note that while applicant’s own literature uses the term
“micro fuel” descriptively, it does occasionally use the term
with a TM symbol as in the next sentence, i.e., “N.M. laboratory
where the new Micro-Fuel Cell™ is under development.” The
occasional use of the TM symbol does not establish that the term
is not descriptive. In re A La Vieille Russie Inc., 60 USPQ2d
1895, 1901 (TTAB 2001). In addition, in this example, applicant
does not use the TM symbol after the term for which it seeks
registration MICROFUEL but rather after the term “Micro-Fuel
Cell.”
Ser. No. 75809667
8
action that defined “micro” as “very small.” As the
article above notes, micro fuel cells are an improvement
over traditional batteries because they can produce more
power and they are several times lighter than traditional
batteries. Therefore, the definition of “micro” would
describe a “fuel cell” that is very small. Fuel cells that
are lighter and produce more power are described by the
term “micro fuel cells.”
When we consider the question of descriptiveness, we
look at the term in relation to applicant’s goods or
services. In this case, applicant’s goods are “fuel cells
and fuel cell tanks for producing electrical energy;
chemical fuel for fuel cells provided as a unit with the
foregoing.” These fuel cells, when they are used in
association with consumer electronics such as laptops and
digital organizers, are referred to as “micro fuel cells.”
In this case, however, there is even more evidence.
Applicant has described its technology as “micro fuel
technology.” Furthermore, press reports and NEXIS and
Internet articles similarly use the term to describe this
new technology. As a result, we conclude that the term
MICROFUEL when used in association with applicant’s goods
immediately describes a feature or characteristic of the
goods, i.e., that they are smaller, powerful fuel cells
Ser. No. 75809667
9
used to power electrical devices. The descriptiveness of
the term is evident regardless of whether the generic term
“cell” is present in the term. Applicant’s goods are
identified as fuel cells and fuel for these cells and the
term “micro fuel” is used to describe the fuel that powers
such fuel cells. The term is, therefore, merely
descriptive of applicant’s goods.
We now address several additional points. We note
that the fact that applicant spells its term without a
space between the words is not sufficient. Even spelled as
one word, the terms “Micro” and “Fuel” are clearly
discernable in the mark and the combined term is merely
descriptive. See Abcor, supra (GASBADGE at least merely
descriptive for “gas monitoring badges”); Cummins Engine
Co. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559
(CCPA 1966) (TURBODIESEL generic for a type of engine); In
re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED descriptive for jams and jellies that would be
a spread for bread); In re Perkin-Elmer Corp., 174 USPQ 57
(TTAB 1972) (LASERGAGE merely descriptive for
interferometers utilizing lasers). Also, even if applicant
were the first user of the term MICROFUEL for the
identified goods that fact would not justify the
registration of an otherwise merely descriptive term. In
Ser. No. 75809667
10
re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993); In re
Gould, 173 USPQ 243, 245 (TTAB 1972). Finally, while there
are a few ambiguous references in which the term “Micro
Fuel” may be used as a trademark, the vast majority of the
references clearly are using the term in its various
spellings to describe a type of fuel cell.
We conclude by finding that applicant’s mark MICROFUEL
is merely descriptive for the identified goods.
Decision: The refusal to register is affirmed.