RENCO Encoders Inc.

Trademark Trial and Appeal Board

Jun 20, 2002

No. 75586074 (T.T.A.B. Jun. 20, 2002)

Hearing:
March 12, 2002
Mailed: June 20, 2002
Paper No. 15
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re RENCO Encoders Inc.
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Serial No. 75/586,074
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David Toren and Shifra N. Malina of Brown & Wood for
RENCO Encoders Inc.

M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).1
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Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

RENCO Encoders Inc. has filed an application to
register the mark SUPERSENSOR for “longitudinal and angle
measuring apparatus, namely, linear, rotary and angle

1 Trademark Examining Attorney Boris Umansky appeared and argued this
case at the hearing.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/586,074
2
encoders; electrical controllers for the aforementioned
goods.”2
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s mark is merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, and an oral hearing
was held. We affirm the refusal to register.
The Examining Attorney contends that applicant’s
encoders are, or contain, sensors, as applicant’s
brochure indicates. She submits a definition of
“encoder” as “1. any program, circuit or algorithm which
encodes … 2. a sensor or transducer for converting rotary
motion or position to a series of electronic pulses”3; and
excerpts of articles from the Lexis/Nexis database which
indicate that encoders for various uses contain sensors.
The Examining Attorney contends, further, that, in
the context of applicant’s mark, “super” is simply a

2 Serial No. 75/586,074, in International Class 9, filed November 10,
1998, based on an allegation of a bona fide intention to use the mark in
commerce.

3 Free Online Dictionary of Computing, www.foldoc.com, September 13,
1999.

Serial No. 75/586,074
3
laudatory term indicating superior quality or grade4; that
applicant’s own literature indicates that its Modular 2.1
inch encoder is “highly reliable,” and designed for
“maximum performance”; and that the relevant consumer
will “believe that applicant’s SUPERSENSOR performs these
functions with an even greater reliability and accuracy,
and thus applicant’s SENSORS are superior.” She adds
that “the composite merely combines the laudatory
expression with the name of the goods to form an
expression that is understood as merely descriptive of
those goods.”
Applicant contends that the term “supersensor” does
not appear in any dictionary; that there are numerous
meanings for the term “super” and, therefore, the term
“supersensor” is an arbitrary term with “no accepted
meaning in English.” Applicant contends that the two
terms, “super” and “sensor,” are a “unique combination.”
Both applicant and the Examining Attorney submitted
copies of third-party registrations, many for two-word
telescoped marks beginning with “super,”5 which is not

4 As per the definition of the term contained in American Heritage
Dictionary of the English Language, Third Ed., 1992, submitted by the
Examining Attorney.

5 Where a mark consists of two words telescoped into a single term, the
term is considered unitary so that disclaimer of one part of the term is
Serial No. 75/586,074
4
disclaimed, and many for marks consisting of two words
beginning with “super,” which is disclaimed. However,
third-party registrations are not determinative of the
question of registrability of applicant's mark. It is
well settled that each case must be taken on its own
facts. In re Pennzoil Products Co., 20 USPQ2d 1753, 1758
(TTAB 1991); and In re Inter-State Oil Co., Inc., 219
USPQ 1229, 1231 (TTAB 1983). Further, “third-party
registrations simply are not conclusive on the question
of descriptiveness, and a mark which is merely
descriptive cannot be made registrable merely because
other similar marks appear on the register.” See, In re
Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB
1977).
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or
service in connection with which it is used, or intended
to be used. In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). It is not necessary, in order to find a

not required by the PTO. Thus, these third-party registrations are of
little probative value in this case.
Serial No. 75/586,074
5
mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Further,
it is well-established that the determination of mere
descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely
to make on the average purchaser of such goods or
services. In re Recovery, 196 USPQ 830 (TTAB 1977).
Applicant does not disagree that encoders contain
“sensors” and that these sensors are a major component of
an encoder. We agree with applicant, supported by the
dictionary definitions of record, that “super” is a term
with numerous and very different meanings. However, as
noted herein, we must consider the mark in the context of
the goods. We agree with the Examining Attorney that the
likely connotation of “super,” in this context, is “an
article or product of superior size, quality or grade.”
As an adjective modifying “sensor” it is likely to be
understood as a laudatory term extolling the superiority
of the sensors contained in applicant’s encoders.
Applicant draws the conclusion, without any explanation,
Serial No. 75/586,074
6
that the combination of the two terms, “super” and
“sensor,” creates a unique trademark. We see no basis
for applicant’s unsupported statement. Similarly, we see
no basis for applicant’s unsupported statement that the
telescoping of the two words creates a uniquely different
impression from the individual words.
Thus, we conclude that, when applied to applicant’s
goods, the term SUPERSENSOR immediately describes,
without conjecture or speculation, a significant feature
or function of applicant’s goods, namely that applicant’s
encoders contain sensors of superior quality, performance
or duration. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering
of further information in order for purchasers of and
prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
SUPERSENSOR as it pertains to applicant’s goods.
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.