Microcell Corp.

Trademark Trial and Appeal Board

Sep 30, 2002

No. 75931409 (T.T.A.B. Sep. 30, 2002)

Mailed: September 30, 2002
Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Microcell Corporation
________
Serial No. 75/931,409
_______
Steven J. Hultquist of Intellectual Property/Technology Law
for Microcell Corporation.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Hairston, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Microcell Corporation
to register on the Principal Register the mark FIBERCELL
for the following goods, as amended: “electrochemical fuel
cells, batteries, and power supplies” in International
Class 9. The application was filed on February 29, 2000,
based on applicant’s assertion of a bona fide intention to
use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/931409
2
Citing Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), the Examining Attorney has finally refused
registration on the ground that if applicant’s mark were
used on or in connection with the goods identified in the
application, it would be merely descriptive thereof.
Applicant has appealed, and both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The test for determining whether a term is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term immediately conveys information concerning
a significant quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used or is intended to be
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Venture Associates, 226 USPQ
285 (TTAB 1985); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). The determination of mere descriptiveness
must be made in relation to the goods or services for which
registration is sought, the context in which the term or
phrase is being or will be used on or in connection with
those goods or services, and the impact that it is likely
to make on the average purchaser of such goods or services.
See In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB
Ser. No. 75/931409
3
1995); and In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991). That is, the question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them. See In re Home
Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990); and In re American Greetings Corp., 226 USPQ 365
(TTAB 1985).
The Examining Attorney argues that the term “fiber”
refers to the fibrous nature of applicant’s fuel cells and
batteries which are filled with “filamentary electrodes”
and “packed into a cell structure or container that is
filled with acid” (applicant’s response filed December 5,
2000, p. 3), and that “cell” in this usage refers to the
definition in The American Heritage Dictionary (1996) set
forth as “5. Electricity a. A single unit for electrolysis
or conversion of chemical into electrical energy; usually
consisting of a container with electrodes and an
electrolyte. Also called electrochemical cell.” The
Examining Attorney further contends that the words combined
into “FIBERCELL” remain merely descriptive of a feature or
characteristic of the involved goods, specifically
purchasers would immediately understand that the cells are
Ser. No. 75/931409
4
comprised in part of fibers; that even if, as argued by
applicant, the combination of words may be capable of
different meanings, the question of descriptiveness must be
determined not in the abstract, but in the context of
purchaser perception in relation to the involved goods; and
that the evidence clearly shows that FIBERCELL is merely
descriptive of applicant’s “electrochemical fuel cells,
batteries, and power supplies.”
As evidence in support of the refusal to register, the
Examining Attorney submitted (i) dictionary definitions of
the involved words; (ii) printouts of several excerpted
stories retrieved from the Nexis database regarding
“fiber(s)” as part of “fuel cell” technology; and (iii) a
printout from the “nist.gov” website of a “Project Brief
ATP [Advanced Technology Program] Competition 2001 (October
2001)” titled “Fabrication of Fuel Cells from Microcell
Fibers,” sponsored by applicant.
Applicant contends that the mark FIBERCELL is not
merely descriptive of its goods, electrochemical fuel
cells, batteries, and power supplies; that the Examining
Attorney has inappropriately dissected applicant’s mark
into separate words, without considering the mark as a
whole; that a combination of two or more descriptive terms
may result in a composite mark which is not merely
Ser. No. 75/931409
5
descriptive; that here the words are each capable of
multiple meanings (i.e., “fiber” might be seen by consumers
as referring to a thread, a root, a strand of nerve tissue,
indigestible material in human food, with the primary
meaning being biological or botanical, and “cell” could
refer to a cellular telephone, stem cells, terrorist cells,
or prison cells); that because the mark connotes multiple
associative meanings, it is therefore suggestive in
relation to applicant’s goods; that it would require mature
thought to understand the meaning of applicant’s mark in
relation to the goods; that there is no evidence that
others in the relevant field need to use FIBERCELL to
describe their goods; and that doubt on the issue of mere
descriptiveness is resolved in applicant’s favor.
However, applicant acknowledges that “the term
‘FIBERCELL’ may suggest the components of applicant’s new
and unique electrochemical cell,” but contends that
“purchasers would not immediately make the connection of a
compartment packed with filamentary electrodes that are not
visible from the surface.” (Applicant’s response filed
December 5, 2000, p. 7). Moreover, applicant concedes
“that the applicant’s goods for which the mark is sought to
be registered include structures containing hollow fiber
elements forming or comprising electrode elements,” but
Ser. No. 75/931409
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contends that the involved fibers are extremely small (sub-
millimeter), and thus, the fiber structures must be
multiplied into arrays and bundled structures and the
individual fibrous element is “lost in the resultant
assembly.” (Applicant’s response filed July 26, 2001, p.
2).
The “Project Brief—Fabrication of Fuel Cells from
Microcell Fibers,” sponsored by applicant and appearing on
the nist.gov website, includes the following statements:
Develop a new fuel-cell technology
based on a novel microfiber membrane
structure...; and
Fuel cells, which cleanly convert
chemical energy to electrical energy,
are common in space and military
systems but remain too costly and
difficult to make for general uses
such as stand-alone power for homes
and business or for electric vehicles.
Microcell Corp. plans to overcome the
barriers to commodity applications by
exploiting its patented “microcell”
design concept, in which all
components are fabricated within a
fiber ranging from 500 to 1,000
micrometers in diameter, and the
fibers (or microcells) are connected
and packed together to make a fuel
cell module....
Moreover, the following are examples of the several
excerpted stories retrieved from the Nexis database,
showing use of the term “fiber” in relation to “fuel
cells”:
Ser. No. 75/931409
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Headline: Electrode Improves Oxygen
Diffusion
...The particularly inexpensive,
lightweight, homogenous and porous gas
diffusion electrode for polymer
membrane fuel cells is made of a
carbonized-carbon fiber..., “Fuel Cell
Technology News,” January 2000;
Headline: Fiber Strengthens Flexible
Plate
...The graphite sheet is embedded with
ceramic fibers extending from its
opposite planar surfaces into the
sheet, making it gas permeable so it
can be used as an electrode in fuel
cells...., “Fuel Cell Technology News,”
September 2000;
Headline: Energy; Award-winning
Innovations
...Fuel cell manufacturers
traditionally develop their own
humidification systems, however, many
are heavy, expensive, and not very
efficient. The Enthalpy Wheel,
developed by Ronald DuBose from Emprise
Corp., Marietta, Ga., is smaller, less
expensive, and lighter than competing
systems, and will work for any
alkaline, phosphoric acid, or proton
exchange membrane fuel cell
application. The honeycomb wheel is
made of acrylic fiber..., “R & D,”
September 1, 2000; and
Headline: 25 Winning Technologies
...“GM would like to use the fibers in
a number of applications including
lithium-ion batteries, fuel cells, and
interior and exterior door panels...,”
“Industry Week,” December 16, 1996.
We agree with the Examining Attorney that the mark
FIBERCELL immediately and directly conveys information
Ser. No. 75/931409
8
about a significant feature of “electrochemical fuel cells,
batteries, and power supplies,” specifically, that
applicant’s fuel cells and batteries contain fibers or
fibrous elements. This record shows that the relevant
purchasing public would so perceive the term as indicating
this feature of applicant’s goods, regardless of whether
the purchaser can actually see the fibers contained within
the fuel cell or battery.
Purchasers will readily perceive “fiber” to refer to
the fiber elements contained within applicant’s fuel cells
and batteries, and the word “cell” in the context of the
fuel cells and batteries, will be perceived as referring to
fuel cells. We see no reason why purchasers would view the
word “fiber,” when used with fuel cells and batteries, to
mean, as applicant suggests, primarily a biological or
botanical concept. Nor would they perceive the word
“cell,” when considered in relation to applicant’s goods,
as referring to a telephone or a prison or terrorists.
Thus, the two words separately have a readily understood
meaning in the industry, and when combined as the term
FIBERCELL and used on or in connection with applicant’s
goods, the term is merely descriptive of a significant
feature of the goods.
Ser. No. 75/931409
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The combination of these two words does not create an
incongruous or creative mark. Rather, applicant’s mark
FIBERCELL, if applied to applicant’s identified goods,
would immediately describe, without conjecture or
speculation, a significant feature of applicant’s goods, as
discussed herein. Nothing requires the exercise of
imagination or mental processing or gathering of further
information in order for purchasers of and prospective
customers for applicant’s goods to readily perceive the
merely descriptive significance of the term FIBERCELL as it
pertains to applicant’s goods. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987);
and In re Intelligent Instrumentation Inc., 40 USPQ2d 1792
(TTAB 1996).
Finally, even if applicant became the first (and/or
only) entity to use the term “FIBERCELL” in relation to
“electrochemical fuel cells, batteries and power supplies,”
such is not dispositive where, as here, the term
unquestionably projects a merely descriptive connotation.
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994),
and cases cited therein. We believe that competitors would
have a competitive need to use this term. See 2 J. Thomas
Ser. No. 75/931409
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McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2000).
Decision: The refusal to register under Section
2(e)(1) is affirmed.