Seachem Laboratories, Inc.

Trademark Trial and Appeal Board

Jun 12, 2013

No. 85285151 (T.T.A.B. Jun. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Seachem Laboratories, Inc.
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Serial No. 85285151
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Nora M. Tocups of the Law Office of Nora M. Tocups LLC for Seachem Laboratories,
Inc.

Alice Benmaman, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
_____

Before Quinn, Kuhlke and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Seachem Laboratories, Inc. (“applicant”) filed a use-based application to
register on the Principal Register the mark MultiTest, in standard character form,
for goods ultimately identified as “chemical kits for use by consumers in measuring
for pH, alkalinity, ammonia, iron, silicate, phosphate, iodine, iodide, nitrite, nitrate,
or copper in aquariums,” in Class 1.
The Trademark Examining Attorney initially refused registration under
Section 2(e)(1) on the ground that applicant’s mark is merely descriptive, but
suggested registration under Section 2(f) because “[t]he application record indicates
Serial No. 85285151

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that applicant has used its mark for a long time.”1 After applicant amended its
application to seek registration under Section 2(f) based on its substantially
exclusive and continuous use of the mark since 1981, the Trademark Examining
Attorney refused to accept applicant’s claim of acquired distinctiveness on the
ground that the mark MultiTest is generic.2
The issues on appeal are whether the proposed mark MultiTest used in
connection with chemical testing kits for aquariums is generic or merely descriptive
and, if the mark is not generic but is merely descriptive, whether it has acquired
distinctiveness.
Whether MultiTest is Generic?
When a proposed mark is refused registration as generic, the examining
attorney has the burden of proving genericness by "clear evidence" thereof. See In
re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987); and In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987).
The issue is to determine whether the record shows that members of the
relevant public primarily use or understand the term sought to be registered to
refer to the category or class of goods in question. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986); In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).

1 July 6, 2011 Office action.
2 September 21, 2011 Office action.
Serial No. 85285151

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Making this determination “involves a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term sought to be registered ... understood
by the relevant public primarily to refer to that genus of goods or services?” Ginn,
228 USPQ at 530. Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony, surveys, dictionaries,
trade journals, newspapers and other publications. See Merrill Lynch, 4 USPQ2d at
1143; In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963
(Fed. Cir. 1985).
We begin by finding that the genus of the goods at issue in this case is
“chemical kits for use by consumers in measuring for pH, alkalinity, ammonia, iron,
silicate, phosphate, iodine, iodide, nitrite, nitrate, or copper in aquariums.” Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of [goods or] services set forth
in the [application or] certificate of registration.”). These goods also fall within the
broader category of chemical testing kits per se; therefore, we must determine
whether MultiTest is generic for chemical testing kits. See In re A La Vieille
Russie Inc., 60 USPQ2d 1895, 1897 (TTAB 2001) (RUSSIANART for “dealership
services in the field of fine art, antiques, furniture and jewelry” falls within the
category of Russian art); In re Central Sprinkler Co., 49 USPQ2d 1194, 1197 (TTAB
1998) (ATTIC for “automatic sprinklers for fire protection” falls within the narrower
category of sprinklers for fire protection of attics); Stromgren Supports Inc. v. Bike
Athletic Co., 43 USPQ2d 1100, 1106 (TTAB 1997) (COMPRESSION for “elastic
Serial No. 85285151

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athletic garments and outerwear, namely, sports girdles” falls within the category
of sports medicine products including compression shorts or girdles); In re Analog
Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d
1879 (Fed. Cir. 1989) (unpublished) (ANALOG DEVICES for a laundry list of
electronic products falls within the category or class of goods having analog
capability). The key in the analysis is that the term at issue must be generic for the
items in the description of goods.
Turning to the second inquiry, how the public understands the term, the
relevant public consists of consumers with fish aquariums.
As noted above, the evidentiary burden of establishing that a term is generic
rests with the USPTO and the showing must be based on clear evidence. Merrill
Lynch, 4 USPQ2d at 1143.
Based on the record described below, we find that there is clear evidence to
support a finding that the relevant public, when it considers MultiTest in
conjunction with chemical testing kits for use with aquariums, readily understands
the term to identify a type of chemical kit used with aquariums.
The term “multi -” is defined as “a combining form meaning ‘many,’ ‘much,’
‘multiple,’ ‘many times,’ ‘more than once,’ ‘more than two,’ ‘composed of many like
parts,’ ‘in many respects,’ and ‘used in formation of compound words.’”3

3 Infoplease.com based on the Random House Unabridged Dictionary (1997) attached to the
July 6, 2011 Office action.
Serial No. 85285151

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The word “test” is defined, inter alia, “the process of identifying or detecting
the presence of a constituent of a substance, or of determining the nature of a
substance, commonly by the addition of a reagent,” or “subject to a chemical test.”4
Thus, the meaning of MultiTest is many tests or more than one test. The
combination of the term “Multi” with the word “Test” does not have an incongruous
meaning or form a unique commercial impression as applied to chemical testing kits
for fish aquariums such that the term MultiTest loses its ordinary meaning.
Accordingly, consumers of chemical testing kits for aquariums will perceive the
term in its ordinary dictionary sense.5 See In re Gould Paper Corp., 834 F.2d 1017,
5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (“the combination of ‘SCREEN’ and ‘WIPE’
does not render Gould’s mark [SCREENWIPE] unique or incongruous, the common
descriptive aspect of applicant’s mark is not lost in the combined form.”). See also
In re Cox Enters. Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (THEATL – a
compressed version of the term “THE ATL,” a recognized nickname for the city of
Atlanta – held merely descriptive of printed matter of interest to residents of and
tourists and visitors to Atlanta, Georgia).
In her September 21, 2011 Office action, the Trademark Examining Attorney
submitted the following evidence of third-party use of the term “Multi Test” to show
“the common use of this term in connection with applicant’s goods, that is, a test kit
for measuring more than one chemical.”

4 Id.
5 Suffice it to say that we do not agree with applicant’s argument that MultiTest is
incongruous. (Applicant’s Brief, p. 8).
Serial No. 85285151

6

1. Medimpex United Inc. (meditests.com)
The OraLert™ (Oral Fluid) Saliva Drug Test Multi Test
Product Description
The OraLert™ Twist Screening Multi-Drug Multi-Line
Saliva Test is an improved later flow chromatographic
immunoassay for the detection of 6 common and required
by NIDA illegal drugs of abuse in human oral fluid.
2. D-D, The Aquarium Solution (theaquariumsolution.com)
D-D Multi Test Kit
An all in one high quality test kit from D-D to monitor
Calcium, Alkalinity, and Magnesium in reef aquaria. …
The D-D Multi Test Kit includes liquid tests for the three
most commonly tested parameters by marine or reef
aquarists, those of calcium, magnesium and alkalinity.
3. Hyannis Country Garden (countrygarden.com)
Pond Water Test Kits >> Multi Test Kits
Description
PondCare Master Liquid Test Kit
PondCare Master Test Kit is a complete kit for testing tap
water & pond water. …
Tests include
● pH
● ammonia
● nitrate
● phosphate

Serial No. 85285151

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4. A1c Multi-Test Kit (diabetestechnologies.com)
A1c Multi-Test kits are designed for clinical trials,
(including Primate samples), large volume users, on-site
diabetes screening and/or health fairs. …
Price: A1c Multi-Test Kits are available in kits of 50
tests. Ideal for screening and health fairs.
5. Foster and Smith Aquatics (fosterandsmithaquatics.com)
Red Sea Algae Control Multi Test Kit
● High resolution tests for nitrate and phosphate in one
convenient kit
● Updated colorimetric (color matching) tests for today’s
reef hobbyist
● Test nitrate and phosphate levels to manage nuisance
algae growth
Foster and Smith Aquatics also advertised the “Red Sea Reef Foundation Pro Multi
Test Kit” that “accurately tests [aquariums] for reef calcium, alkalinity and
magnesium.”
In her April 20, 2012 Office action, the Trademark Examining Attorney
submitted excerpts from the MarineDepot.com website advertising applicant’s
MultiTest kits “in connection with test [sic] that measures more than one
chemicals [sic] in one kit.” The website features a photograph of applicant’s
package, shown below, stating that it contains “over 75 tests.”
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Serial No. 85285151

9

chemical.”6 Applicant explains that each kit contains many tests, “but each of the
tests in the same kit is the same.”7 In other words, applicant contends that
MultiTest means more than one test in the package of tests, not a test for multiple
chemicals.
The problem with this argument is that it is not supported by the evidence in
the record. The excerpts from the MarineDepot.com website advertises applicant’s
MultiTest kits for (1) marine pH and alkalinity (Marine Basic Test), (2) marine pH
and alkalinity, (3) ammonia, and (4) nitrate; and each kit tests for multiple
chemicals. For example, the advertising text for the ammonia kit provides the
following information:
This kit measures total (NH3 and NH4+) and free
ammonia (NH3 only) down to 0.05 mg/L and is virtually
interference free in marine and fresh water. …
* * *
● multi-cavity plate for simultaneously testing of up to
six tests at the same time.
Thus, applicant’s advertising highlights the fact that the MultiTest chemical kits
test for more than one chemical and may conduct multiple simultaneous tests.
Moreover, the term MultiTest used by applicant engenders the commercial
impression of testing for more than one chemical or conducting simultaneous tests;
whereas the term MultiTests engenders a commercial impression more in concert
with applicant’s argument.

6 Applicant’s Brief, p. 3.
7 Id.
Serial No. 85285151

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Applicant contends that the excerpts from the MarineDepot.com websites
show use of MultiTest as a trademark, not a class of goods.8 We do not doubt that
applicant has been making an effort to use MultiTest as its trademark. However,
considered in the light most favorable to applicant, this record supports the finding
that MultiTest is a generic name for a chemical kit used to test for multiple
chemicals whether by one test or several individual tests. This is corroborated by
the third-party use of the term “Multi Test” to identify tests for multiple chemicals,
specifically the three third-party uses in the field of aquariums. In response to the
evidence submitted by the Trademark Examining Attorney, applicant furnished no
viable proof that the public perceives MultiTest as anything other than a generic
term for a type of test.
Finally, applicant asserts that MULTITEST has been registered three times
in connection for products for testing or measuring.9 Those registrations do not
bind us in determining whether applicant’s mark is generic and/or merely
descriptive because the Board must determine each case on its own merits. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), citing In
re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed.
Cir. 1985).
Needless to say, this court encourages the PTO to achieve
a uniform standard for assessing registrability of marks.
Nonetheless, the Board (and this court in its limited
review) must assess each mark on the record of public
perception submitted with the application. Accordingly,

8 Applicant’s Reply Brief, p. 2.
9 Applicant’s Brief, p. 11.
Serial No. 85285151

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this court finds little persuasive value in the registrations
that Nett Designs submitted to the examiner or in the list
of registered marks Nett Designs attempted to submit to
the Board.
In re Nett Designs Inc., 57 USPQ2d at 1566.
Having carefully considered the character of the mark sought to be registered
and the evidence of record, including applicant’s analysis of that evidence, we find
that the record is sufficient to establish that the relevant public would find that
MultiTest applied to chemical testing kits for aquariums is generic.
Whether MultiTest is Merely Descriptiveness?
Implicit in our holding that the evidence before us establishes that
MultiTest is generic for applicant’s goods is a holding that MultiTest is at least
merely descriptive of applicant’s goods under Section 2(e)(1). “The generic name of
a thing is in fact the ultimate in descriptiveness.” H. Marvin Ginn Corp., 228 USPQ
at 530.10
Whether MultiTest has acquired Distinctiveness?
If, on appeal, it should be found that MultiTest is not generic for applicant’s
goods, it may nonetheless be considered at least merely descriptive of the goods and,
if so, unregistrable in the absence of a showing of acquired distinctiveness.

10 Applicant argued that MultiTest is not merely descriptive and, in the alternative, claimed
that it had acquired distinctiveness under Section 2(f). Unlike the situation in which an
applicant initially seeks registration under Section 2(f) or amends its application without
objection, the alternative claim does not constitute a concession that the subject matter
sought to be registered is not inherently distinctive. See In re Thomas Nelson, Inc., 97
USPQ2d 1712, 1713 (TTAB 2011); In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB
1992); In re Prof'l Learning Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB 1986).
Serial No. 85285151

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Accordingly, we now consider in detail applicant’s evidence of acquired
distinctiveness.
In finding that the designation MultiTest is incapable of being a source
identifier for applicant’s goods, we have considered all of the evidence touching on
the public perception of this designation, including the evidence of acquired
distinctiveness. As to acquired distinctiveness, applicant has the burden to
establish a prima facie case of acquired distinctiveness. See Yamaha International
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir.
1988).
Applicant submitted the declaration under Trademark Rule 2.20 of Dr. Greg
Morin, its Chief Executive Officer, attesting to the facts that applicant is not aware
of any other company using the trademark MultiTest and that applicant has used
the mark MultiTest in commerce since at least as early as 1981.
We do not find applicant’s evidence of acquired distinctiveness to be
convincing. Applicant’s use since 1981, while indicative of its commercial success, is
not conclusive or persuasive considering the nature of the subject matter sought to
be registered. In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172 (TTAB 2008)
(finding, despite applicant’s claim of use in commerce for almost one hundred years,
as well as an “inadvertently cancelled” seventy-year old registration for the mark
BOND-OST for cheese, current evidence clearly showed the mark was generic for
the goods, and assuming arguendo that BOND-OST is not generic, that applicant
had failed to establish acquired distinctiveness of the highly descriptive mark); In re
Serial No. 85285151

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Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) (holding applicant’s
evidence of acquired distinctiveness, including a claim of use since 1990, sales of
more than 7,650,000,000 units of its goods, and extensive display of its mark
CRYSTAL GEYSER ALPINE SPRING WATER on advertising and delivery trucks
and promotional paraphernalia, insufficient to establish that the highly descriptive
phrase ALPINE SPRING WATER had acquired distinctiveness for applicant’s
bottled spring water); In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1286
(TTAB 2000) (applicant’s use of the product designs ranging from seven to
seventeen years is insufficient to bestow acquired distinctiveness); In re Kalmbach
Publ’g Co., 14 USPQ2d 1490 (TTAB 1989) (holding applicant’s sole evidence of
acquired distinctiveness, a claim of use since 1975, insufficient to establish that the
highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE
had become distinctive of applicant’s magazines); In re Gray Inc., 3 USPQ2d 1558,
1559 (TTAB 1987) (“[T]o support registration of PROTECTIVE EQUIPMENT [for
burglar and fire alarms and burglar and fire alarm surveillance services] on the
Principal Register a showing considerably stronger than a prima facie statement of
five years’ substantially exclusive use is required.”); In re Packaging Specialists,
Inc., 221 USPQ 917, 920 (TTAB 1984) (evidence submitted by applicant held
insufficient to establish acquired distinctiveness of PACKAGING SPECIALISTS,
INC., for contract packaging services, notwithstanding, inter alia, continuous and
substantially exclusive use for sixteen years, deemed “a substantial period but not
necessarily conclusive or persuasive”). Compare In re Uncle Sam Chem. Co., 229
Serial No. 85285151

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USPQ 233, 235 (TTAB 1986) (finding §2(f) claim of acquired distinctiveness of
SPRAYZON for “cleaning preparations and degreasers for industrial and
institutional use” persuasive where applicant had submitted declaration of its
president supporting sales figures and attesting to over eighteen years of
substantially exclusive and continuous use).
Accordingly, even if the designation MultiTest were found to be not generic,
but merely descriptive, given the highly descriptive nature of the designation
MultiTest, we would need to see a great deal more evidence (especially in the form
of direct evidence from customers) than what applicant has submitted in order to
find that the designation has become distinctive of applicant’s goods. That is to say,
the greater the degree of descriptiveness, the greater the evidentiary burden on the
user to establish acquired distinctiveness. See Yamaha Int'l. Corp. v. Hoshino
Gakki Co., 6 USPQ2d at 1008 ; and In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 4 USPQ2d at 1144 (“It is incumbent on the Board to balance the evidence of
public understanding of the mark against the degree of descriptiveness
encumbering the mark.”). The sufficiency of the evidence offered to prove secondary
meaning should be evaluated in light of the nature of the designation. Highly
descriptive terms, for example, are less likely to be perceived as trademarks and
more likely to be useful to competing sellers than are less descriptive terms. More
substantial evidence of secondary meaning thus will ordinarily be required to
establish their distinctiveness.
Serial No. 85285151

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Decision: The refusal under Section 2(e)(1) of the Act on the ground that the
proposed mark is generic is affirmed; the refusal under Section 2(e)(1) of the Act on
the ground that the mark is merely descriptive and the Section 2(f) showing is
insufficient is likewise affirmed.