Mailed:
March 4, 2010
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Phase Dynamics, Inc.
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Serial No. 77331493
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Dyan M. House of Munck Carter, LLP for Phase Dynamics, Inc.
Hannah M. Fisher, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney)
_______
Before Seeherman, Grendel and Walsh, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Phase Dynamics, Inc. has appealed from the final
refusal of the trademark examining attorney to register
HEURISTIC SALINITY as a trademark for “liquid testing
equipment, namely, analyzer for determining the composition
of liquid.”1 Registration has been refused pursuant to
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1 Application Serial No. 77331493, filed November 16, 2007,
based on Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77331493
2
§ 1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its identified goods.
The appeal has been fully briefed.
Before turning to the substantive issue in this
appeal, we must address a procedural point. With its
appeal brief applicant submitted as an exhibit a response
it filed in connection with another application it owned,
Serial No. 77331495, for the mark HEURISTIC SALINITY that
is now registered on the Supplemental Register, No.
3562766. The examining attorney has stated that this
submission is “tardy,” and indeed, Trademark Rule 2.142(d)
provides that the record in the application should be
complete prior to the filing of the appeal. Although
applicant “asserts that the mention of Appellant’s response
to the office action in the ’495 Application is timely,”
reply brief, p. 3, applicant has given no reason to support
this assertion. Applicant also requests that we take
judicial notice of the response. However, it is well
settled that the Board does not judicial notice of
registrations that reside in the Patent and Trademark
Office. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Accordingly, applicant’s response, filed in connection with
Ser No. 77331493
3
its application Serial No. 77331495 has been given no
consideration.2
Section 2(e)(1) of the Trademark Act prohibits the
registration of a mark that, when used on or in connection
with the goods of an applicant, is merely descriptive of
them. A term is deemed to be merely descriptive of goods
or services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
2 Even if we had considered the paper, it would have no effect
on our decision herein. Applicant seeks to show by this paper
that the registration of that application on the Supplemental
Register is not an admission of the descriptiveness of HEURISTIC
SALINITY for the services identified therein because applicant,
in amending its application to the Supplemental Register, stated
that it did not believe that its mark was merely descriptive.
Whatever statements applicant chose to make about its beliefs,
the fact that applicant amended its application to the
Supplemental Register, upon which inherently distinctive marks
cannot be registered, is an admission by applicant that its mark
is not inherently distinctive, and the fact that the registration
issued on the Supplemental Register is evidence that the mark is
not inherently distinctive.
Ser No. 77331493
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attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
Applicant makes a number of arguments with which we
disagree. First, it states that the examining attorney
must offer “clear and convincing evidence” that applicant’s
mark is merely descriptive. Brief, p. 4. However, the
standard for proving a claim of mere descriptiveness is
“preponderance of the evidence.” See Anheuser-Busch Inc.
v. Holt, 92 USPQ2d 1101, 1105 (TTAB 2009).
Second, applicant claims that there are four tests
that may be used to determine if a mark is suggestive
rather than merely descriptive: imagination, competitors’
use, competitors’ need and the dictionary test. See
applicant’s brief, pp. 7-8. Although dictionary evidence
Ser No. 77331493
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may certainly be used to prove a mark is merely
descriptive, we are not aware of any case law that actually
sets out a “dictionary test.” With respect to the other
three tests, we have already addressed such an argument in
In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009):
...we have considered applicant's
argument that “the Board employs three
tests to determine whether a mark is
suggestive rather than descriptive: (1)
the “competitors’ need test,” (2) the
“competitors’ use test,” and (3) the
degree of imagination test.” Brief, p.
17. Applicant bases this argument on
No Nonsense Fashions Inc. v.
Consolidated Foods Corp., 226 USPQ 502
(TTAB 1985). However, these “tests”
were set out in an inter partes case in
a discussion of whether use of a term
by third parties on their packaging
detracted from the plaintiff's
trademark rights. Thus, to the extent
that applicant is suggesting that the
Office must prove all three points,
applicant is incorrect. Since this
decision issued in 1985, there have
been numerous decisions from the Court
of Appeals for the Federal Circuit and
the Board making clear that the test
for descriptiveness is whether a term
“immediately conveys knowledge of a
quality, feature, function, or
characteristic of the goods or services
with which it is used.” In re Bayer
Aktiengesellschaft, 82 USPQ2d at 1831,
citing In re Gyulay, 820 F.2d 1216,
1217, 3 USPQ2d 1009 (Fed. Cir. 1987).
... There is no requirement that the
Office prove actual competitor use or
need; it is well established that even
if an applicant is the only user of a
merely descriptive term, this does not
justify registration of that term. See
Ser No. 77331493
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In re BetaBattInc., 89 USPQ2d 1152,
1156 (TTAB 2008); In re Sun
Microsystems, Inc., 59 USPQ2d 1084,
1087 (TTAB 2001); In re Acuson, 225
USPQ 790, 792 (TTAB 1985).
Third, applicant argues that the examining attorney
has “improperly isolated the individual terms that comprise
Appellant’s Mark to support her position” and, citing
Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252
U.S. 538, 40 S.Ct. 414 (1920), states that “the commercial
impression of a trademark is derived from it as a whole,
not from its elements separated and considered in detail.”
Although this quote is accurate, the Court was commenting
on a practice by the (then-named) Patent Office requiring
that a portion of a mark that was merely descriptive (in
that particular case, it was the term “Moistair Heating
System) be removed from the mark before it could register,
as opposed to the applicant simply disclaiming exclusive
rights to the term. The Court decided that striking out a
considerable or conspicuous part of a mark would greatly
affect its value because the commercial impression of a
trademark is derived from it as a whole. It did not, in
any fashion, state that it was inappropriate to consider
evidence as to the meaning of the individual words in the
mark in ascertaining whether the mark as a whole is merely
descriptive, and the Beckwith decision is normally cited in
Ser No. 77331493
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connection with likelihood of confusion cases for the
proposition that, in comparing marks, they must be
considered as a whole rather than dissected.
Fourth, applicant claims that “the Examining
Attorney’s evidence in support of her refusal consists only
of dictionary definitions of the individual terms that make
up Appellant’s Mark…. Brief, p. 4, emphasis in original.
To the extent that applicant is questioning the value of
the dictionary definitions because they do not show use of
the entire term “heuristic salinity,” we point out that the
refusal at issue is that the mark is “merely descriptive,”
not that the mark is generic. Accordingly, we would not
expect the examining attorney to submit a dictionary
definition of the term as a whole. To the extent that
applicant is asserting that the examining attorney has
submitted only dictionary evidence we point out that the
examining attorney has, in addition to dictionary
definitions, submitted applicant’s Supplemental Register
registration, discussed above, for HEURISTIC SALINITY for
“liquid analysis services,”3, and portions of applicant’s
patent application.
3 Registration No. 3562766, issued January 13, 2009.
Ser No. 77331493
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In addition, the record includes portions of a Google
search summary and third-party registrations for HEURISTIC
and variations of this term, made of record by applicant.
The latter evidence was submitted by applicant in its
response to the first Office action, purportedly to show
that HEURISTIC is not a descriptive term. However, after
the examining attorney pointed out that these registrations
proved just the opposite, since most of the marks were
registered on either the Supplemental Register or pursuant
to Section 2(f), or the term HEURISTIC was disclaimed,
applicant no longer referred to them. Because they no
longer form part of applicant’s argument, and because they
list goods and services different from those at issue
herein, we will not discuss them further.
The dictionary evidence consists of definitions of
“heuristic” taken from various dictionaries, including the
following:
Involving or serving as an aid to
learning, discovery, or problem-solving
by experimental and especially trial-
and-error methods
;
also: of or relating to exploratory
problem-solving techniques that utilize
self-educating techniques (as the
evaluation of feedback) to improve
performance
Merriam-Webster’s Online Dictionary,
www.merriam-webster.com
Ser No. 77331493
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1. Of or relating to a usually
speculative formulation serving as a
guide in the investigation or solution
of a problem: The historian discovers
the past by the judicious use of such a
heuristic device as the ‘ideal type’”
(Karl J. Weintraub). 2. Of or
constituting an educational method in
which learning takes place through
discoveries that result from
investigations made by the student.
3. Computer Science Relating to or
using a problem-solving technique in
which the most appropriate solution of
several found by alternative methods is
selected at successive stages of a
program for use in the next step of the
program
The American Heritage Dictionary of the
English Language, 4th ed. © 2000
www.bartleby.com
1. serving to indicate or point out;
stimulating interest as a means of
furthering investigation.
2. encouraging a person to learn,
discover, understand, or solve problems
on his or her own, as by experimenting,
evaluating possible answers or
solutions, or by trial and error: a
heuristic teaching method.
3. of, pertaining to, or based on
experimentation, evaluation, or trial-
and-error methods. 4. Computers, Math.
Pertaining to a trial-and-error method
of problem solving used when an
algorithmic approach is impractical.
Random House Unabridged Dictionary, ©
1997
www.infoplease.com
The patent submitted by the examining attorney, and
which applicant has stated belongs to it, is entitled
“High Water Cut Well Measurements Using Heuristic
Ser No. 77331493
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Salinity Determination.” We list below the first of the
claims:
A method for heuristically determining
the water content of a multiphase fluid
flow stream, comprising the actions of
(a) collecting electrical measurements
of a multiphase fluid flow stream,
wherein said collection action is
continued until the difference between
the minimum and maximum of at least one
of said measurements equals or exceeds
a pre-determined value; (b) calculating
the aqueous phase salinity of said
stream based on at least said minimum;
(c) calculating the water content of
said flow stream based at least on (b);
whereby salinity-dependent uncertainty
is reduced; and (d) outputting the
results of (c).
Claims 9, 18, 19 and 20 also begin, “A method for
heuristically determining the water content of a multiphase
fluid flow stream, comprising the actions of,” followed by
a list. Among the actions in these lists are “determining
the salinity of the water associated with said oil,” (d) in
Claim 18; “determining the salinity of the water associated
with said second quantity of oil,” (d) in Claim 19: and
“calculating the water content of said second quantity of
oil based at least on a salinity value determined at least
on the minimum value of the range,” (c) in Claim 20.
Applicant has submitted Google search summary results
in an attempt to show that the term “heuristic salinity” is
used only in connection with applicant. While that may be
Ser No. 77331493
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true, as noted previously, even if an applicant is the only
user of a merely descriptive term, this does not justify
registration of that term. Here, the Google excerpts use
“heuristic salinity” in a descriptive manner, not as a
trademark for applicant’s goods. See:
High Water Cut Well Measurements Using
Heuristic Salinity…
Methods and systems for determining the
amount of water in a high water cut
crude petroleum flow stream exiting
from a hydrocarbon well.
www.freepatentsonline.com
A heuristic salinity of the water phase
of the crude oil can then be determined
based on the span statistics and
reference equations and/or reference
data…
www.wipo.int
Finally, as noted previously, the record also includes
a copy of applicant’s Supplemental Register registration
for the same mark at issue herein, HEURISTIC SALINITY, for
“liquid analysis services.” This registration shows that
HUERISTIC SALINITY is a merely descriptive term for such
services.
After reviewing all the evidence of record, we find
that HEURISTIC SALINITY is merely descriptive of a
characteristic of the identified “liquid testing equipment,
namely, analyzer for determining the composition of
liquid.” The petroleum or mechanical engineers that
Ser No. 77331493
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applicant contends are the users of its goods4 would know
the term “heuristic” and its meaning in connection with
scientific methodology, as shown by the dictionary
definition “of, pertaining to, or based on experimentation,
evaluation, or trial-and-error methods.” The recognition
of that meaning is clearly shown by applicant’s decision to
title its patent “High Water Cut Well Measurements Using
Heuristic Salinity Determination” and to describe its
claims as being “a method for heuristically determining….”
When the term HEURISTIC SALINITY is used in connection with
an analyzer for determining the composition of liquid, the
relevant consumers will immediately understand that one
function of the goods is that they analyze, through
heuristic methods, the salinity of the liquid.
We have considered applicant’s various arguments, but
are not persuaded by them. For example, applicant asserts
that it “uses the term ‘heuristic salinity’ in the patent
to suggest that the method described in the patent is able
to self-adjust the span of frequencies used to measure the
aqueous phase by the salinity of the aqueous phase.” Reply
brief, p. 2. Whatever applicant might mean to “suggest”
4 Although it appears that the goods, as identified, can be
used, as the examining attorney contends, by chemists or other
scientists, because the evidence shows that engineers involved in
the petroleum field would view the mark as merely descriptive, we
need not discuss the reaction of other technical people.
Ser No. 77331493
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by HEURISTIC SALINITY, the title of its patent shows that
this term describes its goods, i.e., that the analyzer uses
“heuristic salinity determination,” and therefore HEURISTIC
SALINITY is merely descriptive of a significant
characteristic of the goods. Applicant also asserts that
the combination of terms results in a unique combination
that makes the mark inherently distinctive. However, the
title of the patent shows that the term “heuristic
salinity” is not a unique combination, in the manner of
SUGAR & SPICE, see In re Colonial Stores, Inc., 374 F.2d
549, 157 USPQ 382 (CCPA 1968), but rather is language that
would immediately be recognized as descriptive of the
methodology of the analyzer. Applicant also argues that
“if a proposed mark has more than one dictionary definition
and there is at least one meaning which would be suggestive
of some other relevant association, the mark is not merely
descriptive.” Brief, pp. 8-9. The problem with this
position is that the only relevant dictionary definitions
for the goods at issue are those which relate to
experimentation, evaluation or trial-and-error methods.
Certainly applicant has not explained how any of the other
definitions would be understood as relating to applicant’s
goods; on the contrary, applicant has explained that its
product is “not able to learn, discover, or understand,”
Ser No. 77331493
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brief, p. 8, referring to the dictionary definition of
“encouraging a person to learn, discover, understand or
solve problems on his or her own.”
Because HEURISTIC SALINITY would immediately and
directly convey to the relevant consumers of applicant’s
goods that the analyzer uses heuristic salinity
determination or methodology, we find the mark to be merely
descriptive.
Decision: The refusal of registration is affirmed.
