Mott Corp.

Trademark Trial and Appeal Board

Feb 5, 2018

No. 86772839 (T.T.A.B. Feb. 5, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 5, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mott Corp.
_____

Serial No. 86772839
_____

Michael E. Hall of Kacvinsky Daisak Bluni PLLC
for Mott Corp.
Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Kuhlke, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Mott Corporation (“Applicant”) has filed an application to register the mark
MISSION CRITICAL PRECISION in standard characters on the Principal Register
for goods ultimately identified as:
Porous metal media for filtration, flow control, diffusion, sparging, and
dispersion; sintered porous powder metal filtering media for general
industrial use in the purification of air and industrial fluids in
International Class 6;

Machines used for the separation of solids, liquids, gases, and slurries;
machines used for process filtration in a wide variety of industries;
machines for filtering solids, liquids, gases, and slurries; machine
Serial No. 86772839
- 2 -

components, namely, filters for filtering solids, liquids, gases, and slurries
in International Class 7;

Flow regulators for industrial and commercial use; automatic liquid-flow
control machines and instruments; flow switches for monitoring and
controlling the flow of gases or liquids; metering orifices, namely, orifice
plates and plugs for metering or controlling the flow rate of liquids; control
valves for regulating the flow of gases and liquids; valves for controlling and
regulating the flow of gases or liquids, not being parts of plumbing, heating,
cooling installations, or cooling machines in International Class 9; and

Filters for removing particulate matter from gases during manufacturing;
air filters for industrial installations; liquid filters for industrial
installations, not being parts of machines; solid filters for industrial
installations; filters and filtering devices for air and gas conditioning; water
filters; water filtering apparatus; water filtration and purification units;
waste liquid and purification units; fibrous filtering media for general
industrial use in the purification of air and industrial fluids; filters for
fluids, namely, for water and area-water solutions; gas and liquid filtration
housings and filter elements for general industrial use in the purification
of air and industrial fluids International Class 11.1

The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark is merely
descriptive of Applicant’s identified goods. When the refusal was made final,
Applicant appealed and requested reconsideration. The Examining Attorney
maintained the refusal to register and denied the request for reconsideration.
Thereafter, Applicant requested remand for consideration of an amendment to the
identification of goods. The Examining Attorney accepted the amendment and
adhered to the final refusal. The appeal is now briefed.
For the reasons set forth below, we affirm the refusal to register.

1 Application Serial No. 86772839, filed September 29, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
Serial No. 86772839
- 3 -

Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
used in connection with the applicant’s goods, is merely descriptive of them. 15 U.S.C.
§ 1052(e)(1).2 “A term is merely descriptive if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is
used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015). By contrast, a mark is suggestive if it “requires
imagination, thought, and perception to arrive at the qualities or characteristics of
the goods.” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
The determination of whether a mark is merely descriptive must be made in
relation to the goods for which registration is sought, not in the abstract. In re
Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831. This
requires consideration of the context in which the mark is used or intended to be used
in connection with those goods, and the possible significance that the mark would
have to the average purchaser of the goods in the marketplace. In re Chamber of
Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). In other words, the question
is not whether someone presented only with the mark could guess the goods listed in

2 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it ... (e) Consists of a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive or deceptively misdescriptive of them. ...”
Serial No. 86772839
- 4 -

the identification. Rather, the question is whether someone who knows what the
goods are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)). See also In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB
1998); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990);
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or surveys”
(In re Bayer, 82 USPQ2d at 1831) as well as “labels, packages, or in advertising
material directed to the goods.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978). It may also be obtained from Applicant’s own website and specimen
of use and any explanatory text included therein. In re N.C. Lottery, 866 F.3d 1363,
123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1565 (Fed. Cir. 2001).
Before analyzing the substantive matter before us, we address a procedural issue
raised by Applicant. Applicant criticizes the Examining Attorney for “offering three
different rationales for the refusal” during prosecution. Brief, p. 5; 15 TTABVUE 6.
To be clear, the Board is not bound by an examining attorney’s reasoning when
considering the merits of a refusal. As explained in TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) Section 1217 (June 2017), “[i]n determining
an ex parte appeal, the Board reviews the appealed decision of the examining
Serial No. 86772839
- 5 -

attorney to determine if it was correctly made. The Board need not find that the
examining attorney’s rationale was correct in order to affirm the refusal to register,
but rather may rely on a different rationale.” Internal case citations omitted. With
this principle in mind we analyze the evidence of record.
The record includes the following definitions of the adjectival phrase “mission
critical” and the word “precision” used as a noun:
mission critical

Necessary for a business or other organization to work well.3

Mission critical refers to any factor of a system (equipment,
process, procedure software, etc.) that is essential to the business
operation or to an organization. Failure or disruption of mission
critical factors will result in serious impact on business
operations or upon an organization, and even can cause social
turmoil and catastrophe.4

A mission critical system is a system that is essential to the
survival of a business or organization. When a mission critical
system fails or is interrupted, business operations are
significantly impacted. A mission-critical system is also known as
mission essential equipment and mission critical application. …
For example, when water treatment facility pumps are stalled, or
a jet engine fails, all related operations cease. When such systems

3 Definition of “mission-critical” from MacMillan Dictionary at
www.macmillandictionary.com/dictionary/american/mission-critical submitted with
January 19, 2016 Office Action at TSDR 3.
4 Excerpt from entry for “mission critical” from Wikipedia submitted with August 10, 2016
Final Office Action at TSDR 3. Applicant in its brief disputes the probative value of this entry
because it includes the qualification that “[t]his article needs additional citations for
verification.” Brief, p. 9 n. 13; 15 TTABVUE 9. We have considered the Wikipedia evidence
because Applicant had the opportunity to rebut it (when it filed its request for
reconsideration), and also because it has been corroborated by another source. See In re IP
Carrier Consulting Group, 84 USPQ2d 1028, 1032-3 (TTAB 2007).
Serial No. 86772839
- 6 -

are interrupted, organizations face substantial repercussions and
hampered productivity.5

precision

The quality of being very accurate and exact.6

When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive commercial impression.
If each component retains its merely descriptive significance in relation to the goods,
the combination results in a composite that is itself merely descriptive. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004). See also
In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Putman Publishing Co., 39
USPQ2d 2021 (TTAB 1996). Such is the case here where the combination of the terms
“mission critical” followed by “precision” immediately conveys to prospective
consumers a characteristic of the goods, namely that exactness of the involved goods
are essential to the functioning of the systems in which they are used, i.e., the
precision of these goods is mission critical and not an attribute merely useful or
desirable. The consuming public may also perceive Applicant’s mark as laudatory,
inasmuch as it ascribes excellence or superiority to the involved goods. See In re Nett

5 Entry for “mission critical system” from Techopedia at www.techopedia.com submitted
with August 10, 2016 Final Office Action at TSDR 3.
6 Definition of “precision” from MacMillan Dictionary at
www.macmillandictionary.com/dictionary/american/precision submitted with January 19,
2016 Office Action at TSDR 4.
Serial No. 86772839
- 7 -

Designs Inc., 57 USPQ2d at 1566 (THE ULTIMATE BIKE RACK merely descriptive
of applicant’s goods “in a laudatory manner” and, therefore, subject to disclaimer).
Applicant’s web site (http://mottcorp.com/about) touts the custom design of
“mission critical” products to the precise specifications of each individual customer:
Our customers can’t afford failure of their mission critical systems. So,
we customize every product to meet their precise specifications, using
our highly agile culture with nearly 60 years of experience to our
advantage. As a result we deliver products and services three times
faster than the competition. … Mott, which was founded by metallurgist
Lambert (Bud) Mott in 1959 has earned a reputation for reliability.
Many of our customers have trusted us with their most sensitive projects
for decades.7

Thus, Applicant in its own words confirms that its goods are designed for necessary
or “mission critical” systems and custom built with accuracy or “precision.” “An
applicant’s materials, such as its website or advertisements describing its goods or
services, or specimens showing use of its mark, may be considered even if the
applicant files its application based on an intent-to-use or changes the basis of its
application to intent-to-use.” TBMP § 1208.05 (citing In re Promo Ink, 78 USPQ2d
1301, 1303 (TTAB 2006)). Cf. In re N.C. Lottery, 123 USPQ2d at 1710 (“the TTAB did
not err by considering the explanatory text of the specimens in the descriptiveness
inquiry.”).
Applicant counters that its “website is using the term ‘mission critical’ in reference
to systems employed by Applicant’s customers while Applicant’s website uses the
term ‘precise’ in reference to something else entirely, namely the specifications

7 March 2, 2017 Request for Reconsideration Denial at TSDR 2.
Serial No. 86772839
- 8 -

provided by customers to Applicant. It does not follow from those observations that
these terms are merely descriptive.” Brief, p. 15; 15 TTABVUE 16. Applicant’s
argument misses the point. In the commercial context described above, namely that
Applicant’s customers “can’t afford a failure” and have trusted Applicant for decades
with “sensitive projects,” consumers encountering Applicant’s mark MISSION
CRITICAL PRECISION will immediately know that Applicant’s goods are
trustworthy because they are designed with precision. The record shows that
Applicant’s proposed mark is merely descriptive because it immediately conveys to
prospective consumers a characteristic of its identified goods, and is laudatory.
Our determination is bolstered by the website evidence made of record by the
Examining Attorney illustrating that it is not uncommon for third-party
manufacturers to use the phrase “mission critical” to denote the crucial nature of
certain types of equipment or machinery. In some examples, the term “precision” is
also used to indicate that the products are custom-made to exact specifications:
AST company specializing in machine design and manufacturing
(http://ast-inc.com/rapid-replacement-parts): “When mission critical
equipment goes down it’s more than a machine repair. The sooner its
running again, the sooner you’re back in business. AST has a plan to
support your critical needs. That’s why we keep an inventory of the most
commonly needed parts. It’s why we offer contracted spares inventory
as a service. We have emergency precision machine services on site
and a network of rapid response partners ready to make parts we don’t
have in stock.”8
Solberg Worldwide (http://solbergmfg.com): “Around the world we
engineer, manufacture, and deliver solutions for the equipment that
powers our lives. From compressors to turbines, vacuum pumps to

8 August 10, 2016 Final Office Action at TSDR 4.
Serial No. 86772839
- 9 -

reciprocating engines, Solberg’s filtration, silencing and separation
products can be found on the most challenging applications. … We are
committed to providing products and systems that protect mission
critical machinery while safeguarding the surrounding environment.
… We maintain a strong focus on the development of sustainable
solutions that protect mission critical machinery and the surrounding
environment.”9
Above Air Technologies (http:www.aboveair.com/products/mission-
critical-equipment): “MISSION CRITICAL EQUIPMENT Above Air’s
precision cooling equipment provides the flexibility that mission
control applications demand. Please click on a cabinet type to further
explore our precision cooling equipment product offerings.”10
ArctiChill (http://globalspecs.com/FeaturedProductsDetail/ArctiChill):
“Mission Critical Precision Chillers – Product Announcement from
ArctiChill. P-Series Chillers and accessories from ArctiChill are
guaranteed to meet the flow, pressure and precision delivery
requirements for accurate, dependable, critical cooling for mission
critical process and medical applications.”11
Reyco Precision Machining Inc. (https://www.reycoprecision.net): “[W]e
specialize in the making of parts that are critical in their application.
From flight parts for space missions to aviation parts in defense
systems, we are a proven supplier over the course of 31 years. With our
experience working with a wide range of materials and our ability to
fabricate to .0001 tolerances, Reyco has earned the reputation of a
capable, can-do team. Whatever the nature of your parts, you’ll have the
advantage of having Reyco give everything we produce a consistent,
mission-critical treatment.”12
Emphasis added. We further note the following use of “mission critical” in a trade
journal publication:
Trimble, EXTENSIONS MEP Newsletter (http://mep.trimble.com), article
entitled “The Mission-Critical Role of Capital Asset Management” by

9 Id. at 5.
10 Id. at 7.
11 March 2, 2017 Request for Reconsideration Denial at TSDR 7-8.
12 Id. at 9.
Serial No. 86772839
- 10 -

John Cameron posted March 2015: “For many businesses operating in the
construction industry today, much of their work relies on the operation of
capital assets such as Generators, Chillers, Transformers, etc. These types
of equipment contribute to the business’s ability to properly run and
generate a profit. It is therefore a major requirement that they remain in
operation at all times because if a piece of machinery is goes down, the
detrimental effect on the business is loss of work and, ultimately income.”13
Applicant dismisses the probative value of this evidence because the offered goods
are different than those at issue here. However, even though the goods may not be
identical to Applicant’s, they are akin to Applicant’s goods in that they are all
“mission critical” to a system’s operation, and designed with “precision.” That is,
Applicant’s term is used in the same descriptive sense as it is used by others to convey
the same characteristics, even if the goods having those characteristics are not the
same. Applicant also criticizes this evidence for not showing third-party use of the
terms “mission critical precision” in that exact order:
The Examining Attorney’s shifting rationales for the refusal all entail
separating MISSION CRITICAL from PRECISION to claim the former
allegedly describes something and the latter allegedly describes
something else, but it bears repeating that the applied-for mark is
MISSION CRITICAL PRECISION. While Applicant has no quarrel with
the Examining Attorney discussing/analyzing each component of
Applicant’s mark, the ultimate analysis must view the mark as a whole
and the Examining Attorney consistently ignores that final step.
…
[A] reoccurring problem with all of the Examining Attorney’s evidence
[is that] he relies upon websites that use “mission critical_____” and/or
“precision _____” in other contexts, which does not support his position
that Applicant’s mark MISSION CRITICAL PRECISION is merely
descriptive.

13 August 10, 2016 Final Office Action at TSDR 6.
Serial No. 86772839
- 11 -

Brief, p. 7-8, 10; 15 TTABVUE 8-9, 11. Applicant’s argument reflects a
misunderstanding of the descriptiveness analysis. Usages of the exact same words in
the exact same order are not required. In any event, the definitions and excerpts from
Applicant’s website, standing alone, suffice to demonstrate that Applicant’s mark is
merely descriptive. The Examining Attorney is not required to prove that others have
used the mark at issue or that they need to use it. The correct test is whether the
mark conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d
1511, 1514 (TTAB 2016). See also In re Walker Mfg. Co., 359 F.2d 474, 149 USPQ 528,
530 (CCPA 1966) (“The question . . . is not whether the Board or others may or would
utilize ‘CHAMBERED PIPE’ to describe applicant’s goods, but whether this
designation does, in fact, describe such goods.”). Even if Applicant were the first and
only entity in this industry to use the term MISSION CRITICAL PRECISION this
would not obviate the descriptive nature of the proposed mark. See KP Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law
does not countenance someone obtaining “a complete monopoly on use of a descriptive
term simply by grabbing it first”) (citation omitted); In re Walker Mfg. Co., 359 F. 2d
474, 149 USPQ 528 (CCPA 1966); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126
USPQ 397, 398 (CCPA 1960) (“Even novel ways of referring to a product may
nonetheless be merely descriptive.”); In re Bailey Meter Co., 102 F. 2d 843, 41 USPQ
275, 276 (CCPA 1939) (“The fact that appellant may have been the first and only one
Serial No. 86772839
- 12 -

to adopt and use the mark sought to be registered does not prove that the mark is not
descriptive . . . .”).
In sum, Applicant’s proposed mark immediately conveys, without need for
conjecture or speculation, an attribute of Applicant’s goods. Accordingly, we find
Applicant’s proposed standard character mark MISSION CRITICAL PRECISION
merely descriptive of the identified goods.
Decision: The descriptiveness refusal to register Applicant’s mark under Section
2(e)(1) of the Trademark Act as to each International Class of goods is affirmed.