Nanochip ID, Inc.

Trademark Trial and Appeal Board

Apr 12, 2017

No. 86694656 (T.T.A.B. Apr. 12, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: April 12, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nanochip ID, Inc.
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Serial No. 86694656
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Travis D. Wilson of The Law Office of Travis Wilson,
for Nanochip ID, Inc.
Sophia S. Kim, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Zervas, Bergsman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Nanochip ID, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark NANOCHIP (in standard characters) for “radio frequency identification (RFID)
tags,” in Class 9.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground

1 Application Serial No. 86694656 was filed on July 16, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as June 17, 2013.
Serial No. 86694656
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that Applicant’s mark is merely descriptive because it immediately describes a
feature or characteristic of the goods, namely, that the products “feature a very small
microchip.”2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) 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 AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
Whether a mark is merely descriptive is determined in relation to the goods for
which registration is sought, not in the abstract or on the basis of guesswork.

2 Trademark Examining Attorney’s Brief at 6 TTABVUE 9; see also 6 TTABVUE 4 (“The
proposed mark conveys the impression that the identified goods [radio frequency
identification tags] are comprised of a very small integrated circuit or microchip.”).
Serial No. 86694656
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Descriptiveness must be evaluated “in relation to the particular goods for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Chamber of Commerce of the U.S.,
102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). In other words,
we evaluate 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); In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
When two or more merely descriptive terms are combined, the determination of
whether the combined 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, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publ’g. Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
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On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363
(SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing
head at one end, the head being of solid uninterrupted construction without prongs”).
In this regard, “incongruity is one of the accepted guideposts in the evolved set of
legal principles for discriminating the suggestive from the descriptive mark.” In re
Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498
(the association of applicant’s mark TENNIS IN THE ROUND with the phrase
“theater-in-the-round” creates an incongruity because applicant’s services do not
involve a tennis court in the middle of an auditorium). Thus, we must consider the
issue of descriptiveness by looking at the mark in its entirety.
“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services.” In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)). If the Examining Attorney establishes a prima facie
case, the burden shifts to the applicant to rebut that case. Id. “The Board resolves
doubts as to the mere descriptiveness of a mark in favor of the applicant.” Fat Boys,
118 USPQ2d at 1512 (citing In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB
1994)).
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We start our analysis of whether NANOCHIP is merely descriptive by defining
the terms that comprise the mark. The word “nano” is defined, inter alia, as “denoting
a very small item.”3 The word “chip” is defined, inter alia, as set forth below:
Also a microchip. Electronics. A tiny slice of
semiconducting material, generally in the shape of a few
millimeters long, cut from a larger wafer of the material,
on which a transistor or an entire integrated circuit is
formed.4
Applicant’s website identifies the “radio frequency identification (RFID) tags” as
microchips.5
Applicant’s mark NANOCHIP retains the dictionary definitions of its component
parts when used in connection with “radio frequency identification (RFID) tags”
engendering the commercial impression that Applicant’s product is or is comprised of
a very small microchip that functions as an identification tag. The combined term
NANOCHIP does not form a unitary mark with a non-descriptive meaning. Excerpts
from Applicant’s website (nanochipid.com) touting the small size of the product
support this finding of fact.

3 Oxford Dictionaries (oxforddictionaries.com) attached to the November 5, 2015 Office
Action, TSDR p. 4. References to TSDR pages are in the .pdf format.
4 Dictionary.com based on the Random House Dictionary (2017). The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format.
In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d
1031, 1038 n.14 (TTAB 2010). See also MacMillan Dictionary (macmillandictionary.org)
attached to the November 5, 2015 Office Action, TSDR pp. 6-7 (“a very small piece of silicon
marked with electronic connections”); Free On-Line Dictionary of Computing (foldoc.org)
(“integrated circuit” or “microelectronic semiconductor device”) attached the November 5
2015 Office Action, TSDR p. 10.
5 Nanochipid.com attached to the November 5, 2015 Office Action, TSDR pp. 12-15 (“The
NEW Microchip,” “Advanced microchip technology available for only $3.99 per chip,”
“nano/chip Carton (10 microchips)”).
Serial No. 86694656
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6

7

Applicant argues that NANOCHIP is suggestive because “it fails to convey the use
or purpose of that microchip, in the instant application as a part of a RFID tag.”8
However, as indicated above, a mark may be merely descriptive it “immediately
conveys knowledge of a quality, feature, function, or characteristic of the goods or
services with which it is used.” In this case, when NANOCHIP is used in connection
with a RFID tag, the mark directly conveys to consumers a feature of Applicant’s
product, namely, an RFID that is or is comprised of a very small microchip.

6 Applicant’s February 18, 2016 Response to an Office Action, TSDR p. 15.
7 November 5, 2015 Office Action, TSDR p. 15.
8 Applicant’s Brief, p. 4 (4 TTABVUE 8).
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Applicant also contends that the use of NANOCHIP in connection with RFID tags
creates a double entendre.
In relation to Applicant’s NANOCHIP mark, the second
meaning is in the word “NANO.” While it usually denotes
the size of the product, it can also refer to the cost. Nano in
cost equates to a smaller and therefor [sic] less expensive
cost to the consumer. This second meaning is used by the
Applicant in regard to their goods.9
However, Applicant’s contention is based solely on the word “nano” when the mark
at issue is NANOCHIP. While the word “nano” may have multiple meanings in the
abstract, when Applicant uses NANOCHIP in connection with RFID tags, it clearly
conveys the message that its product is or is comprised of a very small microchip.
In view of the foregoing, we find that NANOCHIP is merely descriptive under
Section 2(e)(1) of the Trademark Act of a characteristic of Applicant’s goods when
used in connection with “radio frequency identification (RFID) tags.”
Decision: The refusal to register Applicant’s mark NANOCHIP is affirmed.

9 Applicant’s Brief, p. 6 (4 TTABVUE 10).