Rockwell Automation, Inc.

Trademark Trial and Appeal Board

Dec 2, 2016

No. 86285538 (T.T.A.B. Dec. 2, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: December 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rockwell Automation, Inc.
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Serial No. 86285538
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Elisabeth Townsend Bridge, of Whyte Hirschboeck Dudek S.C.,
for Rockwell Automation, Inc.
Barbara Rutland, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Seeherman, Zervas and Wolfson,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Rockwell Automation, Inc. (“Applicant”) seeks registration on the Principal
Register of the proposed standard character mark RAPID Line Integration for
“Computer software for use in industrial automation manufacturing equipment,
namely, application software and operator interface software used to integrate
manufacturing line, equipment and controls” in International Class 9.1 Applicant has

1 Application Serial No. 86285538 was filed on May 19, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon an allegation of a bona fide intention to use
the mark in commerce.
Serial No. 86285538
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disclaimed the term LINE INTEGRATION pursuant to a requirement by the
Examining Attorney.
The Examining Attorney determined that RAPID Line Integration is merely
descriptive of Applicant’s identified services, and refused registration of Applicant’s
mark pursuant to Section 2(e)(1) of the Trademark Act on the ground that the mark
is merely descriptive.
After the refusal was made final, Applicant appealed the refusal. Briefs have been
filed by both Applicant and the Examining Attorney. We reverse the refusal.
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the
registration of a mark which, when used on or in connection with the goods of the
applicant, is merely descriptive of them. A term is merely descriptive if it immediately
conveys knowledge of a significant quality, characteristic, function, feature or
purpose of the goods or services it identifies. See, e.g., In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Determining the descriptiveness
of a mark is done in relation to an applicant’s identified goods and/or services, the
context in which the mark is being used, and the possible significance the mark would
have to the average purchaser because of the manner of its use or intended use. See
In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)).
Descriptiveness of a mark is not considered in the abstract. In re Bayer
Aktiengesellschaft, 82 USPQ2d at 1831. In other words, the question is whether
Serial No. 86285538
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someone who knows what the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).
“The Office bears the burden of setting forth a prima facie case in support of a
descriptiveness refusal.” In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB
2001).
The Examining Attorney maintains that the component terms of the mark are
individually descriptive and that the combination of the terms is also merely
descriptive of computer software used to integrate “manufacturing line, equipment
and controls.”2
With regard to the term “line integration,” the Examining Attorney notes that the
term “line” is in Applicant’s identification of goods, that the definition of record of
“integration” is “the process of combining with other things in a single larger unit or
system,”3 and that the combined wording merely describes software used in
“manufacturing line integration or the process of combining manufacturing lines in a
single larger unit or system.”4 Moreover, Applicant disclaimed the term “line
integration” in response to the Examining Attorney’s requirement therefor, thereby
conceding the descriptiveness of the term. The Examining Attorney is correct that
the disclaimer of a term pursuant to a requirement by the Examining Attorney is a

2 6 TTABVUE 6.
3 Macmillan Publishers Limited English Dictionary, attached to September 12, 2014 Office
Action.
4 6 TTABVUE 8.
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concession that the term is merely descriptive. See In re Pollio Dairy Prods. Corp., 8
USPQ2d 2012, 2014 (TTAB 1988) (“By its disclaimer of the word LITE, applicant has
conceded that the term is merely descriptive as used in connection with applicant’s
goods. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 161 USPQ 547 (TTAB
1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972). The issue as to the
descriptiveness of the word LITE is not before us and applicant’s arguments relative
thereto have not been considered.”). Applicant does not argue in its brief that “line
integration” is not merely descriptive of its goods.
With regard to the term “rapid,” the Examining Attorney cites to the following
material submitted with the final Office Action as showing descriptive significance of
“rapid” in the automated manufacturing field:
ParamountInd.com, “Paramount is innovatively establishing new
levels of achievement in rapid manufacturing, producing finished parts
for highly-specialized applications direct from 3D CAD digital input,
thus dispensing with the costly and time-consuming process of tool
making … Applications for Rapid Manufacturing [include] packaging.”

p2pfoundation.net, “Rapid Manufacturing is a broad term including
the use of Rapid Prototyping, Rapid Tooling, and the direct use of Layer
Manufacturing technologies to produce final products quickly. . . . Rapid
Manufacturing is a new area of manufacturing developed from a family
of technologies known as Rapid Prototyping. These processes have
already had the effect of both improving products and reducing their
development time; this in turn resulted in the development of the
technology of Rapid Tooling, which implemented Rapid Prototyping
techniques to improve its own processes. Rapid Manufacturing has
developed as the next stage, in which the need for tooling is eliminated.
It has been shown that it is economically feasible to use existing
commercial Rapid Prototyping systems to manufacture series parts in
quantities of up to 20,000 and customized parts in quantities of
hundreds of thousands. This form of manufacturing can be incredibly
cost-effective and the process is far more flexible than conventional
manufacturing.”
Serial No. 86285538
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Wikipedia.org, “Rapid Manufacturing … refers to methods and
production methods for fast and flexible production of components and
series by tool[-]less production directly from CAD data.”

The Examining Attorney argues that “[w]hile applicant’s software may not be
literally used for ‘rapid manufacturing’ as defined by the evidence, the identification
of goods is broadly worded such that it can be read to include computer software used
to integrate manufacturing line, equipment and controls in a rapid manufacturing
production environment.”5
The problem with the Examining Attorney’s argument is that the evidence does
not establish that software of the type described in Applicant’s identification of goods
is used in connection with rapid manufacturing. The evidence concerning rapid
manufacturing submitted by the Examining Attorney does not mention the use of
such software in a rapid manufacturing environment, or show that rapid
manufacturing requires “interface software used to integrate manufacturing line,
equipment and controls.” Simply put, the evidence in the record is not sufficient to
support the Examining Attorney’s contention that “the identification of goods is
broadly worded such that it can be read to include computer software used to
integrate manufacturing line, equipment and controls in a rapid manufacturing
production environment.”
The Examining Attorney also argues that if “rapid” in Applicant’s mark does not
refer to “rapid manufacturing,” “the descriptive nature of the wording ‘RAPID’ may

5 6 TTABVUE 10.
Serial No. 86285538
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be found in the ordinary meaning of the term, which may refer to ‘acting or moving
quickly; fast.’ Therefore, ‘RAPID’, in the applied-for mark, merely describes goods
involving fast manufacturing.”6
The Examining Attorney adds that “one of the goals of Applicant’s software
appears to be to increase the speed of the manufacturing line or the integration
time,”7 and points to Applicant’s February 24, 2014 response which states:
Applicant’s RAPID LINE INTEGRATION software is
designed to integrate all the various manufacturing
equipment within one manufacturing line. Working as a
common interface with each piece of equipment, many of
which are manufactured by different OEM manufacturers,
there is no need to modify or customize any equipment to
link with the other equipment on the line. Each piece of
equipment does not need to create its own “handshake”
with the next piece down the line. Instead, all the
equipment is installed with the RAPID LINE SOFTWARE
so that each piece can be quickly and easily implemented
into the manufacturing line. The entire line can be
integrated together with ease, any portion of the line
repaired or replaced with speed and efficiency, and the
overall downtime of the manufacturing line reduced
significantly.8
(Emphasis in original.)
Applicant’s promotional material includes the following instances where
Applicant has discussed the integration feature of its goods:
1. RAPID Line Integration can be implemented faster
than most traditional methods allowing most users to
begin optimizing the line sooner with timely and
accessible information including:

6 6 TTABVUE 8.
7 6 TTABVUE 10.
8 Applicant’s February 24, 2015 response.
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•Real-time and historical information available
immediately on the plant floor human machine
interface (HMI).
•Integrated fault and event handling enables
detailed downtime and true root cause reporting.
•Advanced analytics and custom reporting via web
based reporting services.9
(Emphasis in original.)
2. The RAPID Line Integration solution from Rockwell
Automation provides a flexible, repeatable approach to
integrating manufacturing lines. Utilizing a common
equipment interface, the system enables users to
configure, control and analyze line performance from a
standard operator station. By doing so, this approach
can lower the total cost and time of deploying and
optimizing manufacturing equipment.
Applicant argues that imagination, thought and perception on the part of the
purchaser is needed to understand the nature of Applicant’s Goods; and that “[t]he
purpose or function of the Applicant’s Goods is to create a common equipment
interface, which enables manufacturers to more easily and economically commission
new manufacturing lines or upgrade a line more efficiently. The goal of the
Applicant’s Goods is to limit the amount of downtime. The goal is not to run ‘fast’
software programs or to even increase the speed of the manufacturing line or the
integration time.”10
As far as the references to speed in Opposer’s promotional material, Applicant
states, “these minor references are not taken in their proper context, with the

9 Id., Exh. B.
10 4 TTABVUE 7.
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Examining Attorney erroneously concluding that the Applicant’s Goods are described
as ‘functioning in a fast or rapid manner.’”11 Applicant adds:
While Applicant’s Goods “can be implemented faster
than most traditional methods”12 of line integration, this
does not properly describe the goods, their function, or
their purpose as required for a descriptive mark. Instead,
Applicant’s Goods are used to optimize a manufacturing
line with a simplified, repeatable interface across all
equipment which provides the ability to produce reliable
and real-time reporting for performance and to identify
manufacturing issues.13
We agree with Applicant that imagination or thought are required to arrive at the
meaning for RAPID in Applicant’s mark proposed by the Examining Attorney. With
regard to the Examining Attorney’s argument that the purpose of Applicant’s
software is to speed up the manufacturing line, there is nothing in the record to show
that software of the type identified in the application makes a manufacturing line
faster or speedier. As for the Examining Attorney’s argument that Applicant’s
software yields “faster” integration of the components of a manufacturing line, we
find that the evidence does not convey an immediate or precise significance of “rapid”
with respect to Applicant’s software. See U.S. West Inc. v. BellSouth Corp., 18
USPQ2d 1307, 1312 (TTAB 1990) (THE REAL YELLOW PAGES” is not merely
descriptive of a classified telephone directory since “REAL” does not “convey any
immediate or precise significance with respect to applicant’s goods … .”). There is but
a thin line of distinction between a suggestive and a merely descriptive term, and it

11 Id.
12 The Examining Attorney does not indicate the source of the quoted phrase.
13 4 TTABVUE 8.
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is often difficult to determine when a term moves from the realm of suggestiveness
into the sphere of impermissible descriptiveness. In re Recovery, Inc., 196 USPQ 830,
831 (TTAB 1977). See also, In re Future Ads LLC, 103 USPQ2d 1571, 1574 (TTAB
2012).
Decision: The refusal to register Applicant’s mark RAPID Line Integration is
reversed.