Melamine Chemicals, Inc.

Trademark Trial and Appeal Board

Apr 11, 2000

No. 74406483re (T.T.A.B. Apr. 11, 2000)

Hearing: Paper No. 36
October 13, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 11, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Melamine Chemicals, Inc.
________
Serial Nos. 74/406,483; 74/406,485; 74/546,552; and
74/546,554
_______
Request for Reconsideration
_______
Theodore A. Breiner of Breiner & Breiner for applicant.
Carolyn C. Gray, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed by Melamine Chemicals,
Inc. to register the mark MELAMINE CHEMICALS, INC. and the
mark shown below
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
2
for “chemicals, namely, melamine”1 and “providing technical
consultation services in the field of melamine.”2 In each
application, applicant claims that the mark sought to be
registered has acquired distinctiveness as provided by
Section 2(f) of the Trademark Act.
The Board, in a decision dated August 11, 1999,
affirmed the refusals to register, finding that the marks
sought to be registered were generic and, thus, incapable
of functioning as trademarks/service marks. The Board went
on to find that even if these marks were capable of
functioning as trademarks and service marks, the evidence
of acquired distinctiveness was insufficient to establish
that the involved marks had acquired distinctiveness when
used in connection with applicant’s goods and services.
Applicant filed a timely request for reconsideration.
The request was based, in main part, on a then-recent
decision of the United States Court of Appeals for the
Federal Circuit, the Board’s primary reviewing court, which
decision issued shortly after the Board’s decision in the

1 Respectively, application serial nos. 74/406,483, filed June
28, 1993, alleging dates of first use of 1968, and 74/546,552,
filed July 7, 1994, alleging dates of first use of 1988.
2 Respectively, application serial nos. 74/546,554, filed July 7,
1994, alleging dates of first use of 1968, and 74/406,485, filed
June 28, 1993, alleging dates of first use of 1988.
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
3
present case. See: In re The American Fertility Society,
188 F.3d 1341, 51 USPQ2d 1831 (Fed. Cir. 1999).
In view of the Federal Circuit’s decision, the Board,
on October 15, 1999, granted the request for
reconsideration to the extent that the Board’s decision of
August 11, 1999 was vacated.3 Before ruling on the merits
of the request for reconsideration, however, the Board
allowed the Examining Attorney an opportunity to submit a
brief in response to the request for reconsideration.
Accordingly, the application file was forwarded to the
Examining Attorney for further consideration of
registrability in light of the case of In re The American
Fertility Society, supra.
The Examining Attorney filed, on December 8, 1999, a
supplemental brief.4 The Examining Attorney maintained the
refusal to register, essentially reiterating her position
that the dictionary definitions of the terms “melamine” and
“chemicals” satisfy the Office’s burden in showing that the

3 Familiarity is presumed, nonetheless, with the Board’s earlier
decision. Thus, the Board sees no reason to recount in great
detail the respective arguments or applicant’s evidence.
4 Although the brief was due November 14, 1999, it was filed late
“due to illness and resultant absence on behalf of the Examining
Attorney.” In view of the circumstances, the late-filed brief is
accepted and will be considered.
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
4
mark as a whole is generic for applicant’s goods and
services.
We now turn to the merits of applicant’s request for
reconsideration. The Federal Circuit vacated the Board’s
decision in American Fertility , supra, upon finding that
the Board had applied an incorrect legal test in
determining genericness. The Federal Circuit held that the
Office failed to carry its burden to establish the relevant
purchasing public’s understanding of the phrase SOCIETY FOR
REPRODUCTIVE MEDICINE as it relates to the applicant’s
services. The Federal Circuit stated that “[t]he Board
cannot simply cite definitions and generic uses of the
constituent terms of a mark...in lieu of conducting an
inquiry into the meaning of the disputed phrase as a whole
to hold a mark...generic.” The Federal Circuit went on to
state that the prior case of In re Gould Paper Corp., 835
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) “is limited, on
its facts, language, and holding, to compound terms formed
by the union of words” and that it was legally erroneous to
apply language found in the Gould case “to phrases
consisting of multiple terms, which are not ‘joined’ in any
sense other than appearing as a phrase.” The Federal
Circuit went on to state that the “correct legal test...is
set forth in Marvin Ginn and is to be applied to a mark, or
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
5
disputed phrase thereof, as a whole, for the whole may be
greater than the sum of its parts.” The Federal Circuit
concluded as follows:
The correct legal test for genericness
of phrases, as set forth in Marvin
Ginn, requires evidence of “the genus
of goods or services at issue” and the
understanding by the general public
that the mark refers primarily to “that
genus of goods or services.” Gould
provides additional assistance in
determining the genericness of compound
words only, and holds that if the PTO
can prove (1) the public understands
the individual terms to be generic for
a genus of goods and species; and (2)
the public understands the joining of
the individual terms into one compound
word to lend no additional meaning to
the term, then the PTO has proven that
the general public would understand the
compound term to refer primarily to the
genus of goods or services described by
the individual terms. The PTO here
failed to provide any evidence that the
phrase as a whole, SOCIETY FOR
REPRODUCTIVE MEDICINE, has acquired no
additional meaning to the relevant
public than the terms “society” and
“reproductive medicine” have
individually. The Board must now apply
the Marvin Ginn test to the phrase as a
whole, and not focus only on the
individual terms.
The applied-for MELAMINE CHEMICALS, INC. mark does not
appear to be a single compound word, as was the case of
“screenwipe” in the Gould case. We thus focus our
attention on the test set forth in Marvin Ginn. H. Marvin
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
6
Ginn Corp. v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The genus of goods here clearly is melamine and
melamine-related services. We then consider whether
MELAMINE CHEMICALS, INC. is understood by the relevant
public primarily to refer to that genus of goods/services.
Dictionary listings are the only evidence relied upon
by the Examining Attorney. On the other side of the
ledger, applicant has submitted the declarations of its
chief executive officer and of seventeen individuals who
are employed by companies which purchase melamine from
applicant.
In light of the Federal Circuit’s decision in American
Fertility, we are constrained to find that the Examining
Attorney, relying on dictionary definitions alone, failed
to show, in the face of applicant’s evidence, that the mark
as a whole, MELAMINE CHEMICAL, INC., has acquired no
additional meaning to purchasers of melamine than the terms
“melamine,” “chemicals” and “inc.” have individually. To
the contrary, these purchasers have stated under oath that
they perceive the applied-for marks not as generic, but
rather as designating source in applicant.
We would also point out that Gould involved a newly
created product category, screen wipes, while applicant’s
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
7
product has been sold since 1968. As the Board stated in
In re Ferrero S.p.A., 24 USPQ2d 1155, 1157 (TTAB 1992):
Common sense leads us to conclude that
if a term is generic for a type of a
product that has been on the market for
decades, evidence of its use by others
in the marketplace should be available
and should be considered.
See also, In re Volvo White Truck Corp., 16 USPQ2d 1417
(TTAB 1990). However, despite the fact that applicant has
been selling melamine under MELAMINE CHEMICALS, INC. since
1968, the Examining Attorney has been unable to discover
any generic uses of the term “melamine chemicals” either by
applicant or any others in the field. This factor is
particularly significant here.
We also note applicant’s argument that there is a
certain incongruity in its mark. Indeed, the Examining
Attorney, in her supplemental brief, acknowledges that
“[t]he mark is basically two terms repeating the same idea-
-melamine chemicals or ‘chemicals, chemicals.” If
anything, the redundancy recognized by the Examining
Attorney supports applicant’s notion that the mark is
somewhat incongruous and, therefore, distinctive. This
incongruity weighs in favor of registrability.
In sum, in view of the Federal Circuit’s decision in
American Fertility, and after further consideration of the
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
8
evidence of record in light thereof, we find that the
Office has not met its burden of establishing by clear
evidence that MELAMINE CHEMICALS, INC. as a whole is
generic for the identified goods and services.
This brings us to the issue of whether MELAMINE
CHEMICALS, INC. is merely descriptive and, if so, whether
applicant has shown that it has acquired distinctiveness as
a trademark/service mark.
A term is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). In the present case,
we find that the mark as a whole immediately describes a
primary characteristic of the goods and services, namely
that they involve chemicals and, more specifically,
melamine. Given the meanings of the terms in applicant’s
mark, MELAMINE CHEMICALS, INC. is merely descriptive of
applicant’s goods and services.
Having determined that the mark is descriptive of
applicant’s goods, we must now consider whether applicant
has met its burden of demonstrating that its mark has
acquired distinctiveness.
Applicant has furnished the declaration of Frederic
Huber, applicant’s president and chief executive officer.
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
9
Mr. Huber begins by explaining that melamine is a specialty
chemical with important uses in adhesives, molded plastics,
and paints, and as a fire retardant. Melamine is generally
sold to manufacturers in those industries in large
quantities varying in size from 20 metric tons to 500
metric tons. Due to the nature of the melamine product and
the target customers for melamine, Mr. Huber explains that
applicant does not have a large advertising budget. Mr.
Huber goes on to state, in pertinent part, that applicant
was formed in 1968 and is the third largest manufacturer of
melamine among the ten producers of melamine throughout the
world (only three of which are located in the United
States). According to Mr. Huber, applicant has been using
the marks sought to be registered for its goods and
services since 1968, and that this use has been continuous
and substantially exclusive, pointing out that no other
manufacturer of melamine has used the term MELAMINE
CHEMICALS, INC. to designate its goods or services. Mr.
Huber asserts that MELAMINE CHEMICALS, INC. is not a
generic name for applicant’s goods or services, but rather
is a trademark/service mark recognized in the industry and
by applicant’s customers as indicating source or origin in
applicant. Mr. Huber states that applicant’s sales of
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
10
melamine for the period 1990-1995 are in excess of $231.5
million.
Applicant also has submitted form declarations from
seventeen individuals who are employed by companies which
purchase melamine from applicant. The declarants are
either officers or managers of these companies. After
setting forth the length of time that their companies have
purchased melamine from applicant, the declarants go on to
make the following pertinent statements:
The name MELAMINE CHEMICALS[,] INC. to
me designates [applicant’s] products
and services and distinguishes them
from those of others.
The name MELAMINE CHEMICALS, INC. to me
designates a single source of origin of
melamine and the custom supply of
melamine and providing technical
services in the field of melamine.
To my knowledge, no other manufacturer
or seller of melamine has used or uses
the name MELAMINE CHEMICALS, INC. to
designate its products and services.
The name MELAMINE CHEMICALS, INC. to me
is not a generic designation for
melamine or the services of the custom
supply of melamine and consulting in
the field of melamine.
Upon further review of the evidence submitted by
applicant, most particularly the declarations of those who
purchase applicant’s goods and services, we find that
Ser. Nos. 74/406483; 74/406,485; 74/546,552; and 74/546,554
11
applicant has shown entitlement to claim the benefits of
Section 2(f).
At the very least, the points raised by applicant in
its request for reconsideration based on the Federal
Circuit’s recent decision, buttressed by the evidence of
record, raise a doubt about this case. Although we have
our concerns here about the genericness of applicant’s
mark, those doubts must be resolved in applicant’s favor.
The mark should be published, thus allowing a third party
to file an opposition and develop a more comprehensive
record. See, e. g., In re Atavio, 25 USPQ2d 1361 (TTAB
1992); In re Morton-Norwich Products, Inc., 209 USPQ 791
(TTAB 1981); and In re Gourmet Bakers, Inc., 173 USPQ 565
(TTAB 1972).
Decision: The request for reconsideration is granted.
The refusals to register are reversed.
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board