Micro Motion, Inc.v.Danfoss A/S

Trademark Trial and Appeal Board

Nov 30, 1998

No. 91093658 (T.T.A.B. Nov. 30, 1998)

Paper No. 37
JQ
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF THE TTAB NOV. 30 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Micro Motion, Inc.
v.
Danfoss A/S
_____
Opposition No. 93,658
to application Serial No. 74/277,583
filed on May 20, 1992
_____
James L. Sears of The M.H. Sears Law Firm Chartered for
Micro Motion, Inc.
Thomas E. Smith of Lee, Mann, Smith, McWilliams, Sweeney &
Ohlson for Danfoss A/S.
______
Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Danfoss A/S to
register the term MASSFLO for “flowmeters for the
measurement of flow of mass of fluids.”1

1 Application Serial No. 74/277,583, filed May 20, 1992, alleging
a date of first use of June 1985 and a date of first use in
commerce of March 1989. Applicant also claims ownership of
Danish Registration No. 00.390 1986, issued January 31, 1986.
Opposition No. 93,658
2
Micro Motion, Inc. has opposed registration on the
ground that the term sought to be registered is generic.
Applicant, in its answer, denied the allegations in the
notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; official records introduced
by way of opposer’s notice of reliance; and the exhibits
listed by opposer in the December 21, 1994 declaration of
James L. Sears.2
The Board, before turning to the merits of the
opposition, must first direct its attention to a procedural
matter. When opposer filed its brief on the case, opposer
contemporaneously filed a motion to amend the pleadings to
conform them with the evidence as provided by Fed. R. Civ.
P. 15(b). More specifically, opposer seeks to add a claim
of mere descriptiveness, contending that testimony was
taken, without objection, such that the issue was tried by
the parties. The Board, consistent with its practice,
earlier deferred until final hearing a ruling on the motion.
Trademark Trial and Appeal Board Manual of Procedure (TBMP),
§ 507.03(b).

2 The declaration and exhibits were submitted in connection with
a motion for summary judgment filed by opposer. The parties
filed, on October 15, 1996, a stipulation to the effect that this
evidence be admitted and deemed properly of record for purposes
Opposition No. 93,658
3
Applicant has objected to opposer’s motion, arguing
that the sole issue in this case is genericness. Applicant
essentially contends that had mere descriptiveness been an
issue at trial, then applicant would have presented evidence
bearing on acquired distinctiveness. Applicant claims that
to allow an amendment to the pleadings at this late stage
“would in effect prevent applicant from putting in a defense
not only of non-descriptivenss but of acquired
distinctiveness.” Applicant maintains that opposer had
ample time to amend its pleading prior to trial and, in this
connection, points to the Board’s decision denying opposer’s
motion for summary judgment wherein the Board noted that
“[t]here has been no assertion either in the pleading or in
the summary judgment motion that the mark is merely
descriptive of applicant’s goods.”
Fed. R. Civ. P. 15(b) provides, in pertinent part, that
when issues not raised by the pleadings are tried by express
or implied consent of the parties, they shall be treated in
all respects as if they had been raised in the pleadings.
Opposer’s motion to amend is not well taken. Our
review of the record convinces us that the issues of mere
descriptiveness and acquired distinctiveness were not tried
by the parties as contemplated under Fed. R. Civ. P. 15(b).
Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336, 222

of trial. The Board, on October 28, 1998, approved the
Opposition No. 93,658
4
USPQ 185 (Fed. Cir. 1984). The evidence allegedly bearing
on mere descriptiveness easily could be interpreted as going
to genericness. Under such circumstances, we cannot say
that applicant was fairly apprised that the evidence was
being introduced in support of the unpleaded mere
descriptiveness issue. To allow amendment at this late
juncture would result in undue prejudice to applicant. In
this connection, we particularly note applicant’s assertion
that had it been on notice at trial that mere
descriptiveness was an issue, applicant’s defense likely
would have included evidence of acquired distinctiveness.
Inasmuch as it appears that applicant was not on notice that
mere descriptiveness was an issue in this case, the motion
to amend is denied.
We now turn to the merits of the genericness claim. A
term is generic if it names the class of the goods or
services to which it is applied. See: H. Marvin Ginn Corp.
v. International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986), and In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985). The test for determining whether a term is
generic is its primary significance to the relevant public,
that is, whether the term is used or understood, by
purchasers or potential purchasers of the goods or services

stipulation.
Opposition No. 93,658
5
at issue, primarily to refer to the class of such goods or
services. See: Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987); H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., supra; and In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994).
Evidence of the relevant public’s understanding of a term
may be obtained from any competent source, including direct
testimony of consumers, consumer surveys, newspapers,
magazines, dictionaries, catalogs, and other publications.
See: In re Merrill Lynch, Pierce, Fenner, and Smith Inc.,
supra, and In re Northland Aluminum Products, Inc., supra.
The record includes the following dictionary listings
taken from the Academic Press Dictionary of Science and
Technology (1992):
mass flow Fluid Mechanics. the mass of
a fluid substance that passes a
specified unit area in a unit amount of
time.
mass flowmeter Engineering. an
instrument that measures the mass of
fluid flowing through a pipe per unit of
time.
Opposer also introduced an excerpt from the McGraw-Hill
Encyclopedia of Science and Technology (1992) which includes
a section on “mass flow rate meters.”
Opposition No. 93,658
6
The record is replete with references to “mass
flowmeter,” “mass flow meter” and “flowmeter” as the names
of a specific type of product, namely a meter that measures
mass flow. By way of examples, applicant’s specimens,
advertisements and product literature refer to applicant’s
product as “flowmeter” or “mass flowmeter.” Opposer and
third parties in the trade use the terms in the same way to
name their same type of product. Further, applicant’s
patents show the name of applicant’s product as “mass flow
meter working on the coriolis principle,” with the patents,
in several instances, broadly referring to the product as a
“meter.” Witnesses for each party refer time and again to
the product as a “mass flowmeter” or “flowmeter.” Numerous
excerpts from printed publications refer to the name of the
product in similar fashion.
There can be no dispute, and applicant essentially
acknowledges (brief, p. 15) that the category of goods
involved in this case is “mass flowmeters,” that is, meters
that measure mass flow. While not used as often as “mass
flowmeters,” an alternative form of the name of the category
is “mass flow meters” (where the terms “flow” and “meters”
are separated by a space).
We find the term “mass flow” to be generic as applied
to the particular type of meter sold by applicant. More
specifically, we find that the term MASSFLO likewise is
Opposition No. 93,658
7
generic as applied to mass flowmeters. In making this
determination, we readily acknowledge the sometimes-used
distinction that generic names are nouns and descriptive
terms are adjectives. 2 J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 12:10 (4th ed. 1997)
[“A rule of thumb sometimes forwarded as distinguishing a
generic name from a descriptive term is that generic names
are nouns and descriptive terms are adjectives. However,
this “part of speech” test does not accurately describe the
case law results.”]. Here, we recognize that “mass flow” is
a noun when used as the name of a measurement taken by mass
flowmeters, and is an adjective when used in connection with
the meters that themselves measure mass flow (namely, mass
flowmeters). This adjectival use, however, does not remove
the term from being generic when used in connection with
meters of the type sold by applicant. “Mass flow” is the
name of a meter in the same way as “gas” and “water” name
types of meters. Moreover, applicant’s term MASSFLO is
phonetically equivalent to “mass flow.” In short, MASSFLO
is the name of a category of meter. In this case, because
the term MASSFLO directly names the most important or
central aspect or purpose of applicant’s goods, that is,
that the meters are mass flowmeters (meters that measure
mass flow), this term is generic and should be freely
available for use by competitors. See: In re Northland
Opposition No. 93,658
8
Aluminum Products, Inc., supra [BUNDT for coffee cake held
generic]; In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718
(CCPA 1970) [CUSTOMBLENDED for gasoline held generic because
category of gasoline was blended personally for the
motorist]; In re Helena Rubinstein, Inc., 410 F.2d 438, 161
USPQ 606 (CCPA 1969) [PASTEURIZED for face cream held
generic]; In re Preformed Line Products Co., 323 F.2d 1007,
139 USPQ 271 (CCPA 1963) [PREFORMED for preformed electrical
equipment held generic]; Servo Corp. of America v. Servo-Tek
Products Co., 289 F.2d 955, 129 USPQ 352 (CCPA 1961) [SERVO
for servomechanisms held generic]; J. Kohnstam, Ltd. v.
Louis Mark & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960)
[MATCHBOX for toy vehicles held generic because that
category of toy cars was sold in matchbox-sized boxes]; In
re Central Sprinkler Company, ___USPQ2d___ (TTAB October 22,
1998, Application Serial No. 74/505,190) [ATTIC for
automatic sprinklers for fire protection of attics held
generic]; In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991) [MULTI-VIS for multiple viscosity motor oil held
generic]; In re Reckitt & Colman, North America Inc., 18
USPQ2d 1389 (TTAB 1991) [PERMA PRESS for soil and stain
removers held generic]; In re National Patent Development
Corp., 231 USPQ 823 (TTAB 1986) [ULTRA PURE for biological
interferons for medical use held generic]; Fluid Energy
Processing & Equipment Co. v. Fluid Energy, Inc., 212 USPQ
Opposition No. 93,658
9
28 (TTAB 1981) [FLUID ENERGY for hydraulic/pneumatic
equipment held generic]; Copperweld Corp. v. Arcair Co., 200
USPQ 470 (TTAB 1978) [COPPERCLAD for copper-coated carbon
electrodes held generic]; In re Demos, 172 USPQ 408 (TTAB
1971) [CHAMPAGNE for salad dressing held unregistrable]; and
Ethicon, Inc. v. Deknatel, Inc., 183 USPQ 503 (TTAB 1963)
[COTTONY for sutures held generic].
Further, the fact that MASSFLO is a telescoped,
slightly misspelled version of “mass flow” does not compel a
different result. The deletion or change in one letter
normally does not transform a generic term into a source
indicator. See, e.g., In re Stanbel, Inc., 16 USPQ2d 1469
(TTAB 1990), aff’d without pub. op., 20 USPQ2d 1319 (Fed.
Cir. 1991)[where the record established that the term “ice
pack” was a generic designation for a “nontoxic reusable ice
substitute for use in food and beverage coolers,”
applicant’s asserted mark ICE PAK was held generic and,
therefore, unregistrable]. See also cases cited at McCarthy
on Trademarks and Unfair Competition, supra at §§ 11:31 and
12:38. Moreover, the misspelling here still results in the
phonetic equivalent of the generic term. The terms “mass
flow” and “massflo” are pronounced the same and, given the
commonly understood meaning of the term “mass flow” in the
trade, we have no doubt that the two terms would be viewed
as having the same meaning. That is to say, applicant’s use
Opposition No. 93,658
10
of the term MASSFLO would be understood by relevant
purchasers as primarily naming a category of meters, namely
mass flowmeters.
The fact that applicant has obtained certain foreign
registrations of MASSFLO also is not persuasive of a
different result here. We agree with opposer that this
evidence is irrelevant inasmuch as the determination of
genericness must be governed by the statute and legal
principles of this country. Additionally, the fact that a
third party was able to obtain in the United States a
registration of MASS-FLO for “instruments for measuring and
controlling the flow of gases and vapors” is of no moment.
Each case must be decided on its own facts and, while
uniform treatment under the Trademark Act is highly
desirable, our task here is to determine, based upon the
record before us, whether applicant’s mark is registrable.3
As highlighted by applicant, the record reveals that
none of the witnesses is familiar with any uses of the term
MASSFLO in the industry other than applicant’s use, and that
no one calls a “mass flowmeter” a “mass flow.” Nonetheless,
we would point out that the record is replete with examples
showing that the term “mass flowmeter” is a commonly used
term and that people in the industry are familiar with the
term. That applicant may have been the first to use and/or
Opposition No. 93,658
11
is currently the only entity using the term MASSFLO (with
the term “meter” implied) does not undercut the fact that
the term “mass flow” is understood to be a type of meter.

3 In this connection, we note that opposer has filed a petition
to cancel Registration No. 1,646,730 (Cancellation No. 26,302).
Opposition No. 93,658
12
Decision: The opposition is sustained and registration
to applicant is refused.
E. J. Seeherman
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board