PolymerLatex GmbH

Trademark Trial and Appeal Board

Aug 19, 2010

No. 79053418 (T.T.A.B. Aug. 19, 2010)

Mailed: August 19, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PolymerLatex GmbH
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Serial No. 79053418
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Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger, PLLC
for PolymerLatex GmbH.

Chrisie Brightmire King, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Walters, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by PolymerLatex GmbH
(applicant) to register the standard character mark POLYMERLATEX
for goods ultimately identified as follows:1
Chemicals used in industry; dispersions, in
particular colloidal dispersions of macromolecules,
aqueous dispersions, binder dispersions; chemical
binding agents, namely, for use in the manufacture of
paper, carpets, foams; emulsions, in particular
aqueous emulsions for use in the manufacture of

1 Application Serial No. 79053418, filed October 26, 2007, based on a
request for extension of protection under Section 66(a) of the
Trademark Act.
THIS OPINION IS
NOT PRECEDENT OF
THE TTAB
Serial No. 79053418
2
concrete, paper, lacquers and paints; chemical
impregnations in the nature of chemical agents for
impregnating, binding or coating of textiles, furs
and leather, non-wovens and fabrics; impregnating
chemicals for textiles and shoes; adhesives used in
industry; chemical thickeners for use in industry;
chemical additives for adhesives; unprocessed
artificial resins for industrial use; chemical
additives for bitumen; vulcanisation accelerators;
vulcanising preparations; chemical additives for use
in the manufacture of paper, carpets, shoes, foams;
chemical additives for use in the manufacture of
concrete; chemical additives for building materials
in the nature of cement mortar, plasters, and for
adhesives for tiles; chemical intensifiers for
rubber; chemical additives for rubber solutions;
plastics dispersions being unprocessed plastics;
unprocessed plastics In Class 1; and

Sealing agents, namely, adhesive sealants for use in
roofing, grout sealant; rubber and goods made
therefrom, namely, styrene-butadiene rubber,
synthetic rubber, rubber derivatives, rubber for use
in the manufacture of tires, cable, paper, rubber
bars and rods, rubber sheets, rubber bands for
commercial and industrial uses; sealing compounds,
namely, sealing compounds for joints, caulking;
sealants, namely, waterproof sealants, sealants for
buildings, sealants for pavement joints, sealants for
pipe joints; semi-processed foams being semi-worked
synthetic plastic and synthetic resins as semi-
finished products in the form of foams; semi-
processed plastics; rubber, raw or semi-worked; semi-
processed plastic in the form of pellets, blocks,
sheets, tubes, bars, or rods, in Class 17.

The trademark examining attorney has refused registration on
the ground that the mark is merely descriptive of the goods under
Section 2(e)(1) of the Trademark Act.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Serial No. 79053418
3
We affirm the refusal.
A term is merely descriptive within the meaning of Section
2(e)(1) if it immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with which
it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). The question of whether a particular term is merely
descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which the term is used, and the possible
significance that the term is likely to have to average
purchasers as they encounter the goods or services in the
marketplace. See In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986).
The examining attorney argues that the mark POLYMERLATEX
describes two ingredients or features of applicant's goods which
include chemicals, adhesives and sealing agents. To support her
position, the examining attorney submitted the following
definitions of the terms "polymer" and "latex" from The American
Heritage Dictionary of the English Language (Fourth ed. 2000):2
Polymer:
Any of numerous natural and synthetic compounds of
usually high molecular weight consisting of up to
millions of repeated linked units, each a relatively
light and simple molecule.

2 From the website bartleby.com.
Serial No. 79053418
4
Latex:
1. The colorless or milky sap of certain plants,
such as the poinsettia or milkweed, that coagulates
on exposure to air.
2. An emulsion of rubber or plastic globules in
water, used in paints, adhesives, and various
synthetic rubber products.
3. Latex paint.

In addition, we take judicial notice of an entry for "latex"
from The Columbia Encyclopedia (2008), discussing natural and
synthetic latex:3
Emulsion of a polymer (e.g., rubber) in water (see
colloid). Natural latexes are produced by a number
of plants, are usually white in color, and often
contain, in addition to rubber, various gums, oils,
and waxes. ... Synthetic latexes may be prepared in
two ways: the polymer may be prepared as an emulsion
(emulsion polymerization), or the dry, powdered
polymer may be dispersed in water. Both natural and
synthetic latexes are widely used, especially in the
production of rubber goods. Latex paints, sometimes
called rubber-base paints, consist of a latex colored
by the addition of a pigment.

The examining attorney has also introduced an entry from
Wikipedia for the term "Latex (polymer)"4
Latex is name collectively given to a group of
similar preparations consisting of stable dispersions
of polymer microparticles in a liquid matrix (usually
water). Latexes may be natural or synthetic.
Synthetic latexes are usually produced by emulsion
polymerization using a variety of initiators,
surfactants and monomers;....

3 From the website credoreference.com.

4 From the website wikipedia.org.
Serial No. 79053418
5
As shown by the entries above, the term "latex" refers
either to the "milky sap" of the plant ("natural latex") or to
the compound synthesized from the plant ("synthetic latex"). As
stated in applicant's brief and on its website (polymerlatex.de),
applicant is a manufacturer of "synthetic latex." The evidence
shows that latex, in its synthetic form, is essentially an
emulsion or dispersion of a polymer in water. Applicant's goods
which are broadly identified in part as "aqueous dispersions" and
"aqueous emulsions [for use in the manufacture of concrete]" in
Class 1 include emulsions and dispersions of polymers in water,
i.e., latex. It can also be seen, particularly from the
definitions in The American Heritage Dictionary and The Columbia
Encyclopedia, that latex, in its synthetic form, also refers to
products derived from the polymer emulsions and dispersions.
Such goods would include the "synthetic rubber" and "adhesive
sealants for use in roofing, grout sealant" identified in Class
17 of the application.
Thus, the term "Latex" in applicant's mark, POLYMERLATEX,
describes the nature of applicant's goods, which are, or include,
"latex" in one form or another, and, at a minimum, the term
"polymer" describes a component of the latex compound. As
explained on applicant's website:
Latex is described as a dispersion of minute polymer
particles in water - a milky liquid with a water
content of approx. 50%. The latex particles have
Serial No. 79053418
6
diameters measuring tens of thousands of a millimetre
with a polymer core that is surrounded by a polar
shell that interacts with the water, thus stabilising
the dispersion. ... The art of producing this
'milk' is selecting the correct polymer, creating the
right size of polymer particles and then surrounding
them with a suitable sheath.

What is latex used for? Thanks to its enormous
number of minute particles, latex has a gigantic
surface area that can be modified with chemicals.
During the drying process, latex forms 'sticky'
polymer surface films. This is what makes plastic
dispersions unique and capable of bonding, protecting
or refining surfaces of contrasting materials. ...

Applicant's own descriptive use of the terms "polymer" and
"latex" is strong evidence that the mark is descriptive. See,
e.g., In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978) ("Evidence of the context in which a mark is
used...in advertising material...is probative of the reaction of
prospective purchasers to the mark"); and In re Educational
Communications, Inc., 231 USPQ 787, 790 (TTAB 1986) ("applicant's
own highly descriptive usages of the components of its asserted
mark ... is strong evidence of its generic nature").
Furthermore, polymer emulsions and dispersions such as those
produced by applicant are commonly referred to as "polymer
latex." The examining attorney has made of record several patent
applications, excerpted below, showing that the combined term
"polymer latex" is used by others in the industry to refer to a
type or form of latex compound (emphasis added).
Serial No. 79053418
7
An application by The Dow Chemical Company entitled "Polymer
Latex Composition and Coating Formulation Made Therefrom"
describes the invention as a "polymer latex" composition:5
Abstract: The present invention is a polymer latex
composition comprising a water-borne polymer latex
prepared from a hydroxy-functional acrylic
monomer.... ... Coatings made from formulations
comprising the polymer latex compositions of the
present invention exhibit good durability and
weatherability and are, therefore, especially
suitable to prepare clearcoats for the automotive
industry.

An application by BASF Corporation discusses the "Method and
Apparatus for Predicting Polymer Latex Properties in an Emulsion
Polymerization Process to Improve the Quality and Productivity of
the Polymer Latex":6
Abstract: ... The method for predicting one or more
polymer latex properties for an emulsion polymer
latex according to the invention includes conducting
an emulsion polymerization process in a reactor
including one or more reactor inputs to produce an
emulsion polymer latex, measuring a set of process
parameters for the emulsion polymerization process,
performing a heat balance and a mass balance across
the reactor based on the set of measured process
parameters to determine a set of calculated polymer
latex properties for the emulsion polymerization
process....

We note applicant's statement that it is one of the three
leading latex manufacturers and sellers of latex in Europe,
together with BASF Corporation and The Dow Chemical Company. Use

5 International Appl. No. PCT/US1993/007574 (wipo.org).

6 International Appl. No. PCT/US2002/026406 (wipo.org).
Serial No. 79053418
8
of the term "polymer latex" in this clearly descriptive manner by
applicant's largest competitors is persuasive evidence that
purchasers for applicant's latex would view the term
descriptively as well. See, e.g., BellSouth Corp. v.
DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed.
Cir. 1995) ("competitor use is evidence of genericness.").
Another example of a patent application using "polymer
latex" to refer to a form of latex is entitled "Polymer latex
suitable for the preparation of dip-molded articles" (such as
disposable medical gloves).7 As explained in the Abstract, the
invention relates to a polymer latex
made by free-radical emulsion polymerization
comprising polymer particles containing structural
units derived from at least one conjugated diene
component...that is particularly suitable for the
production of dip-molded articles. Furthermore, the
present invention relates to a process for making
such a polymer latex, to the use of said polymer
latex for the production of dip-molded articles, to a
compounded polymer latex composition that is suitable
for the production of dip-molded articles, to a
method for making dip-molded latex articles as well
as to the latex articles obtained thereby.

Applicant states that this application has been assigned to
applicant, and applicant argues that the application therefore
fails to show others using the mark in connection with similar
goods. The fact that applicant now owns the application does not
change the nature of the use of "polymer latex" in the

7 USPTO Appl. No. 20060052513 (freshpatents.com).
Serial No. 79053418
9
application as a descriptive term, rather, it simply constitutes
additional evidence of applicant's own descriptive use.
As further evidence that the composite term "polymer latex"
would be perceived as descriptive, the examining attorney
submitted printouts from a number of online scientific journals
and publications showing use of "polymer latex" to refer to
polymer emulsions of the type or form identified in the
application. Some excerpts appear below (emphasis added).
A study reported in the Journal of Chromatography A (Vol.
1040, Issue 2, June 25, 2004) entitled "Determination of residual
monomer in polymer latex by full evaporation headspace gas
chromatography" refers to polymer emulsions as "polymer latex":8
1. Introduction: "Emulsion polymerization is an
important industrial process. High conversion of
monomer to polymer in such process is desired because
it not only improves the efficient production of the
polymers but also reduces the amount of residual
monomers, which are generally regarded as toxic to
the human health. ... In polymer latex, the
residual monomer is distributed between the aqueous
phase and the solid, polymer particle phase. ...
...
3. Results and discussion (3.1. Methodology): In a
high conversion...polymer latex sample, it can be
assumed that the monomer species are distributed in
both aqueous and solid polymer particle phases. ...
(3.2.1. Effect of temperature): ... When carrying
out this type of analysis on polymer latex samples,
the sample should be inhibited to prevent further
polymerization, especially on heating. ...

8 From the website ScienceDirect (sciencedirect.com).
Serial No. 79053418
10
An announcement for a "Short course on polymer Latex
Technology slated for August in Switzerland" appearing in the
magazine HighBeam Research (highbeam.com) describes the course
as "an in-depth study of the synthesis, characterization, and
properties of high polymer latexes."
A thesis or dissertation on "Direct Catalytic Hydrogenation
of Unsaturated Diene-Based Polymers in Latex Form" describes the
commercial process for producing synthetic rubber (polymer) used
in the automotive and oil drilling industry:9
Abstract: ... NBR [nitrile butadiene rubber) is a
synthetic rubber of copolymerized acrylonitrile and
butadiene produced in latex form by emulsion
polymerization. ... As a result of this research
project, new latex hydrogenation technologies were
successfully developed to fulfill all major
requirements for a solvent-free polymer latex
hydrogenation route, which is a significant milestone
for the improvement of this polymer modification
technology. ...

Contrary to applicant's contention, "polymer latex" is not
used in any of these examples as a reference to either applicant
or its products. The term is clearly used in a manner that
describes a form of latex or its composition, and not as
indicating any particular source for the latex. Furthermore, the
fact that the entities using this term may be familiar with
applicant and recognize "PolymerLatex" as applicant's company

9 From the University of Waterloo website, uwspace.uwaterloo.ca.
Serial No. 79053418
11
name is not evidence of their recognition of this term as a
trademark.
Applicant's argument that the evidence does not show use of
the term applied for is not understood, as there are many
examples of such use in the record. To the extent that applicant
is arguing that the evidence does not show use of the mark in the
"form" applied for, that is, as a single term rather than two
separate words, and that the presentation of its mark in this
manner overcomes a finding that the combined term is not
descriptive, this argument is not well taken.
It is not necessary that the evidence show use by others in
the exact manner in which it is displayed as a mark. See In re
SPX Corp., 63 USPQ2d 1592 (TTAB 2002). The point is that the
evidence in this case shows use of the very combination of terms
applicant is seeking to register. Further, this type of minor
variation in the display of a descriptive term has frequently
been held to be legally insignificant. See, e.g., In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987) (FIRSTIER, the equivalent of "first tier," merely
descriptive of banking services); Weiss Noodle Co. v. Golden
Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411 (CCPA
1961) (HA-LUSH-KA generic equivalent of the Hungarian word
"haluska"); In re Cox Enterprises, 82 USPQ2d 1040, 1043 (TTAB
2007) (THEATL, the equivalent of THE ATL, a common nickname for
Serial No. 79053418
12
the city of Atlanta, merely descriptive of publications featuring
information about Atlanta).
Finally, we note that the examining attorney has made of
record a printout of applicant's prior Registration No. 3564858
for the mark POLYMER LATEX (and design) for essentially the same
goods wherein the term POLYMER LATEX has been disclaimed. It is
true, as applicant argues, that the disclaimer in this
registration does not in itself preclude applicant from obtaining
registration for the mark in a subsequent application. The
disclaimer is, nonetheless, further evidence that POLYMERLATEX,
the equivalent of POLYMER LATEX, is a descriptive term. See
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560,
4 USPQ2d 1793, 1797 n.1 (Fed. Cir. 1987) ("disclaimers are
evidence, albeit not conclusive, of descriptiveness of the
term.").
There is no question that customers for applicant's aqueous
emulsions and dispersions and products derived therefrom, i.e.,
latex, would, without any guesswork or the exercise of any
imagination, immediately understand the meaning of POLYMERLATEX
as applied to those goods. This is a descriptive term that
competitors of applicant should remain free to use in connection
with their own latex compounds.
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.