Rational AG

Trademark Trial and Appeal Board

Apr 24, 2003

No. 76122164 (T.T.A.B. Apr. 24, 2003)

Mailed: April 24,2003
Paper No.12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rational AG
________
Serial No. 76/122,164
_______
Jeanette S. Zimmer of Schiff Hardin & White for Rational AG.
Eugenia K. Martin, Trademark Examining Attorney, Law Office 104
(K. Margaret Le, Managing Attorney).
_______
Before Hohein, Bottorff and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Rational AG has filed an application to register the
mark "CDS CALCDIAGNOSIS SYSTEM" and design, as shown below,
for "food cookers and steamers for commercial use."1
1 Ser. No. 76/122,164, filed on September 5, 2000, which is based upon
German Reg. No. 30017210, issued on March 3, 2000. In addition to a
claim of a right of priority, a "claim of color is made in the mark
for the colors red and blue." Specifically, "[r]ed is claimed for the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/122,164
2
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a disclaimer
of the wording "CALCDIAGNOSIS SYSTEM," which the Examining
Attorney maintains is merely descriptive of applicant's goods
within the meaning of Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), and therefore must be disclaimed apart from
the mark as shown.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the disclaimer
requirement.
Applicant, having disclaimed the word "SYSTEM," directs
the focus of its initial brief to the question of whether the
term "CALCDIAGNOSIS" is merely descriptive of its goods. In this
regard, applicant states that it "agrees that one of the features
of its food cookers and steamers is that it monitors the level of
lime [i.e., calcium,] scale building up inside the food cooker or
steamer so that the operator will know when cleaning or service
is needed." Applicant contends, however, that:2
portions of the drawing shown in solid black, namely, for the letter
'C' and the upper left-hand portion of the letter 'D' and the words
'CALCDIAGNOSIS SYSTEM,'" while "[b]lue is claimed for the lower right-
hand portion of the letter 'D' and for the letter 'S.'" However,
"[t]he stippling ... is for the purpose of shading and is not intended
to indicate color." The word "SYSTEM" is disclaimed.
2
Citing TMEP §1213.05(a), which is entitled "Compound Word Marks,"
applicant also argues that such section "defines a compound word mark
as a mark that is 'comprised of two or more distinct words or words
and syllables that are represented as one word'" and that the term
"CALCDIAGNOSIS is one word comprised of two parts, namely, one
syllable (the abbreviation or prefix 'calc') and one word
('diagnosis')." In view thereof, and because TMEP §1213.05(a) further
provides (in part) that "[a]ll compound word marks, as defined above,
are considered unitary, and [thus] a disclaimer of a component will
Ser. No. 76/122,164
3
Appellant's mark is not "Calcium Level
Diagnosis," which, in Appellant's view, would
be descriptive. Even if Appellant's mark was
"Calcium Diagnosis," it arguably would be
suggestive because the combination of the
terms "Calcium" and "Diagnosis" are
incongruous. How can "calcium" have a
"diagnosis"? What is being "diagnosed"?
Answers to questions like these may be
provided by the Appellant's website, but the
Appellant's mark does not provide them.
In any event, Appellant's mark is [in
part] comprised of the abbreviation or prefix
CALC and the word DIAGNOSIS. As discussed in
Appellant's Request for Reconsideration ...,
the abbreviation CALC can have other
meanings, such as calculator. As such, the
purchaser could reasonably infer that
CALCDIAGNOSIS means that the food cooker
"calculates and diagnoses something (that
also would not be descriptive because it is
not immediately clear what would be
"calculated" and "diagnosed"). ....
The Examining Attorney did not cite to
any third[-]party uses of the word
"calcdiagnosis," let alone in a descriptive
manner. The absence of third[-]party
descriptive uses supports Appellant's
contention that the word CALCDIAGNOSIS is a
unique word, coined by Appellant. This
inventive and unique combination does not
immediately communicate to a prospective
purchaser of Appellant's food cookers and
steamers that one of the features of
Appellant's products is that it monitors the
not be required unless the mark is appropriately presented in the
application in a typed drawing as two or more separate words" (italics
in original), applicant maintains that, "[b]ased on the plain language
of the TMEP, it is clear that the CALCDIAGNOSIS portion of Appellant's
mark should be considered unitary and no disclaimer of CALCDIAGNOSIS
should be required." Applicant's reliance on TMEP §1213.05(a),
however, is misplaced inasmuch as its mark is not the compound word
mark "CALCDIAGNOSIS" but rather is the compound mark "CDS
CALCDIAGNOSIS SYSTEM" and design. Consequently, while the term
"CALCDIAGNOSIS" may be considered unitary, applicant's mark as a whole
is not; therefore, a disclaimer of the term "CALCDIAGNOSIS" may
properly be required if such term is merely descriptive of applicant's
goods. See, e.g., In re Uniroyal, Inc., 215 USPQ 716, 718-19 (TTAB
1982) [mark "UNIROYAL STEEL/GLAS" for vehicle tires held not unitary;
requirement for disclaimer of unitary term "STEEL/GLAS" accordingly
found appropriate].
Ser. No. 76/122,164
4
lime-scale buildup in the food cooker. The
purchaser or user must use imagination,
thought or perception in an effort to reach a
conclusion about Appellant's suggested
meaning of the abbreviation CALC and its
relation of the word DIAGNOSIS in connection
with the goods. .... Since a purchaser must
take multiple mental steps to figure out the
suggested meaning of Appellant's mark, the
mark ... is not descriptive.
Nonetheless, applicant further maintains that, even
"assuming arguendo that both components of the [term
CALCDIAGNOSIS, namely, the] word[s] CALC and DIAGNOSIS[,] are
immediately and correctly understood by the purchaser,
combinations of merely descriptive components have been found
registrable if the juxtaposition of the words is inventive or
evokes a unique commercial impression. .... That is, the
commercial impression of a composite mark may still be arbitrary
or even suggestive--even though its separate parts, individually,
bear some meaning." As evidence that the term "CALCDIAGNOSIS"
should likewise be regarded as arbitrary or, at the very least,
no more than suggestive, and therefore should not have to be
disclaimed, applicant has "attached as Exhibit F" to its main
brief copies of third-party registrations3 for the following
marks, each of which registrations appears to have issued without
resort to a claim of acquired distinctiveness pursuant to Section
2(f) of the Trademark Act, 15 U.S.C. §1052(f):
3 While such copies, having been submitted for the first time with
applicant's main brief, are clearly untimely under Trademark Rule
2.142(d), the Examining Attorney, in her brief, has not only raised no
objection thereto but has treated the evidence as if it properly
formed part of the record by discussing the merits thereof. We
accordingly have considered such copies. See, e.g., In re Nuclear
Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990) at n. 2.
Ser. No. 76/122,164
5
CALCI-COOKIE (U.S. Reg. No. 2,356,955)
covering "calcium fortified cookies";
CALCIGUM (U.S. Reg. No. 2,493,348) covering
"chewing gum--calcium fortified"; CALCIPORE
(U.S. Reg. No. 2,606,577) covering
"chemicals, namely calcium carbonated for use
in the manufacture of breathable films"; and
CALCITREATS (U.S. Reg. No. 2,507,884)
covering "calcium fortified pastries, candy,
bakery goods, chewy nougats, candy creams,
candy bars, chocolate, yogurt and candy
coated crackers and cookies."
Applicant, while "recognizing that such registrations are not of
precedential value to the Board," indicates that it "raises these
examples to demonstrate that the Trademark Office has registered
compound word marks ... that include an abbreviation that stands
for 'calcium' in connection with goods [which] clearly relate to
calcium." According to applicant, "[t]he abbreviation CALCI more
clearly refers to 'calcium'--unlike Appellant's mark in which the
abbreviation CALC can have other possible non-descriptive
meanings."
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of any ingredient, quality, characteristic,
feature, function, purpose or use of the goods. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
Ser. No. 76/122,164
6
determined not in the abstract but in relation to the goods for
which registration is sought, the context in which it is being
used on or in connection with those goods and the possible
significance that the term would have to the average purchaser of
the goods because of the manner of its use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product is from consideration of
the mark alone is not the test." In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985).
We agree with the Examining Attorney that requiring a
disclaimer of the wording "CALCDIAGNOSIS SYSTEM," which in the
context of applicant's goods plainly signifies "calcium diagnosis
system," is proper because such phrase is merely descriptive of a
feature or function of such goods and is not an inseparable part
of the mark "CDS CALCDIAGNOSIS SYSTEM" and design as a whole. In
particular, as the Examining Attorney notes, the following
excerpts were made of record from various websites which
advertise and/or review applicant's goods and explain "what the
'CalcDiagnosis System' is with regard to the [applicant's]
cookers and steamers:"
"The CalcDiagnosis System® constantly
monitors limescale build-up in the steam
generator, taking into account how hard or
soft the local water is and how often the
ClimaPlus Combi® [oven] is used.
In normal conditions, limescale deposits
are removed and flushed out automatically,
preventing build-up in the steam generator.
To ensure that your ClimaPlus Combi
continues to operate reliably in extreme
conditions, e.g. if the water is very hard,
the CalcDiagnosis System warns you well in
advance that the steam generator needs
cleaning.
Ser. No. 76/122,164
7
....
CalcDiagnosis System® Benefits[:] ....
Information on current limescale level can be
called up at the touch of a button." --
www.RATIONALusa.COM (August 22, 2002);
"CalcDiagnosis System
Say goodbye to limescale problems
The CalcDiagnosis System® constantly
monitors limescale build-up in the steam
generator .... Scale build-up in the steam
generator is thus substantially reduced and
the descaling intervals extended.
To ensure that your ClimaPlus Combi
continues to operate reliably in extreme
conditions, e.g. if the water is very hard,
the CalcDiagnosis System warns you well in
advance that the steam generator needs
cleaning.
....
The CalcDiagnosis System® from RATIONAL
automatically monitors limescale build-up in
the steam generator.
Your benefits:
Automatic descaling process triggered by
rising limescale levels." -- www.rational-
asia.com (August 22, 2002); and
"The latest innovation on the RATIONAL
COMBI STEAMERS is the Calc-Diagnosis System.
Once you have specified how hard or soft your
local water is and how often you use the
Combi steamer, the system keeps a constant
check on lime scale levels inside the boiler
and displays the current status at the touch
of a button. The intelligent Calc-Diagnosis
System lets you know when a service is due in
ample time. This guarantees maximum
operational reliability, and saves a lot of
money in repairs and inconvenience when the
oven is down." -- www.malta-hotels.com
(February 13, 2001).
The above evidence, the Examining Attorney accurately asserts,
shows that "the CalcDiagnosis System identifies the limescale
levels in the [applicant's] steamers and cookers, it provides the
relevant information on limescale levels to the user of the
goods, and it informs the user when they need cleaning" inasmuch
Ser. No. 76/122,164
8
as "analysis of the limescale levels triggers a 'descaling,' or
cleaning, process in the goods. Such evidence, according to the
Examining Attorney, also properly demonstrates that "the
CalcDiagnosis System is an important feature of the goods."
In addition, the evidence of record includes
definitions of several terms. Excerpts from The American
Heritage Dictionary of the English Language (3rd ed. 1992) define
"calci- or calc-" as a prefix meaning "[c]alcium; calcium salt;
lime: calciferous"; list "diagnosis" in relevant part as a noun
signifying "2. a. A critical analysis of the nature of
something. b. The conclusion reached by such analysis"; and set
forth "lime" in pertinent part as a noun connoting "1. a. See
calcium oxide. b. Any of various mineral and industrial forms of
calcium oxide differing chiefly in water content and percentage
of constituents such as silica, alumina, and iron. Also called
quicklime." Excerpts from the The American Heritage Dictionary
of the English Language (4th ed. 2000) likewise define "calci- or
calc-" as a prefix connoting "[c]alcium; calcium salt; lime" and
list "calc." as an abbreviation for "calculate," while "calc-" is
set forth as a prefix meaning "[v]ariant of calci-." "Calc" is
also defined by an excerpt from The Free On-line Dictionary of
Computing (1993-2001) as signifying "[a]n extensible, advanced
desk calculator and mathematical tool written in Emacs Lisp by
Dave Gillespie."
Applicant, in view of the above, states in its reply
brief that it "readily admits that CALC is one of the recognized
abbreviations for 'calcium.'" Applicant argues, however, that
Ser. No. 76/122,164
9
the evidence establishes that such abbreviation "has other
meanings" and that:
Therefore, when considered by purchasers
in association with Appellant's goods,
"calcium" is not the immediate--or even most
likely--connotation deduced by a purchaser;
other, more readily understood connotations
for the abbreviation (e.g. calculate) would
come to mind. The Examining Attorney
provides no evidence that either in general,
in the relevant industry, or on the goods,
the abbreviation CALC is substantially
synonymous with the word "calcium."
We concur with the Examining Attorney, however, that when used in
the context of applicant's food cookers and steamers for
commercial use, the term "CALC" would be immediately understood
by purchasers and users of its goods to refer to the calcium or
lime which accumulates in such goods through use, especially
since applicant's goods are designed to monitor the build up of
calcium or lime deposits and issue a warning as to when a
cleaning or descaling is needed. None of the other meanings of
the term "CALC," such as "calculate," would as readily come to
mind with respect to commercial food cookers and steamers, which
require periodic cleaning or descaling of the calcium or lime
left by the water used therein in order to continue to properly
function.
Consequently, as contended by the Examining Attorney,
the phrase "CALCDIAGNOSIS SYSTEM" merely describes, without the
need for speculation or conjecture, "the exact function [or
feature] of the system, namely[,] to provide a diagnosis, or
analysis, of the calcium levels which have built up in the
cookers and steamers." Although applicant's advertising, as the
Ser. No. 76/122,164
10
Examining Attorney also notes, "discusses 'lime' as opposed to
calcium," because lime is an oxide of calcium, the knowledgeable
and sophisticated commercial purchasers and users of applicant's
goods would immediately understand that, "when the applicant
discusses 'lime' which has built up in the cookers and steamers,"
applicant is "referring to calcium which has built up" in such
goods and which must be removed after intervals of operation if
the goods are to continue to function. Thus, rather than it
being the case that, as argued by applicant, customers and
prospective purchasers must gather further information by
consulting its website advertising in order to understand the
meaning of the term "CALCDIAGNOSIS," such advertising simply
confirms that the term, which appears in applicant's mark as
"CalcDiagnosis," would immediately be perceived in relation to
applicant's goods as meaning only calcium diagnosis.
Moreover, as the Examining Attorney persuasively points
out, no new, nondescriptive meaning is created by the combination
of the descriptive terms "CALC" and "DIAGNOSIS." The combined
term "CALCDIAGNOSIS" does not result, for example, in a composite
which is so incongruous, unusual or otherwise different in
meaning from its constituent terms as to possess no definitive
connotation or significance other than that of an indication of
source for applicant's goods. Instead, there is simply nothing
in such combined term which, when used in connection with
applicant's commercial food cookers and steamers, requires the
exercise of imagination, cogitation or mental processing or
necessitates the gathering of further information in order for
Ser. No. 76/122,164
11
the merely descriptive significance thereof to be immediately
apparent. Plainly, to customers for and users of applicant's
goods, the term "CALCDIAGNOSIS" conveys forthwith that a
significant feature or function thereof is the calcium diagnosis
capability which indicates when the goods need to be cleaned or
descaled of built-up lime. Likewise, because a system for
diagnosis or critical analysis of calcium or lime deposits is
merely described by the phrase "CALCDIAGNOSIS SYSTEM," a
disclaimer thereof is proper. Furthermore, as the Examining
Attorney additionally notes, it is settled that even if applicant
is or intends to be the first to use such phrase or the term
"CALCDIAGNOSIS" in connection with its products, registration
thereof is not warranted where, as here, those designations have
been shown to be merely descriptive. See, e.g., In re Quik-Print
Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 n. 8 (CCPA
1980); and In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983).
Finally, with respect to the third-party registrations
relied upon by applicant, the Examining Attorney correctly
observes that they are not conclusive as to the question of mere
descriptiveness. Specifically, as the Examining Attorney
properly points out, a phrase or term which is merely descriptive
is not made registrable simply because other similar marks appear
on the register. See, e.g., In re Scholastic Testing Service,
Inc., 196 USPQ 517 (TTAB 1977). Each case, instead, must be
determined on its own merits. See, e.g., In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ["Even
Ser. No. 76/122,164
12
if some prior registrations had some characteristics similar to
[applicant's] application, the ... allowance of such prior
registrations does not bind the Board or this court."]; In re
Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 (TTAB
2001); and In re Pennzoil Products Co., 20 USQP2d 1753, 1758
(TTAB 1991).
Accordingly, we agree with the Examining Attorney's
conclusion that because "[t]he wording CALCDIAGNOSIS SYSTEM in
the applicant's mark [merely] describes a [feature or] function
of the [applicant's commercial] food cookers and steamers,
namely, to diagnose ... the limescale, or calcium, levels on the
goods in order to optimize the performance of the goods," the
mark is not registrable in the absence of a disclaimer of such
wording.
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant's mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the merely descriptive phrase
"CALCDIAGNOSIS SYSTEM".4
4 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.08(a) and (b).