SPX Corp.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75878287 (T.T.A.B. Aug. 6, 2002)

Mailed: August 6, 2002
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SPX Corporation
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Serial No. 75/878,287
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John H. Weber of Baker Hostetler LLP for SPX Corporation.
Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______
Before Seeherman, Holtzman and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
SPX Corporation has appealed from the final refusal of
the Trademark Examining Attorney to register E-DIAGNOSTICS
for “electronic engine analysis system comprised of a hand-
held computer and related computer software.”1 Registration
has been refused on three grounds: applicant’s mark is
merely descriptive within the meaning of Section 2(e)(1) of
1 Application Serial No. 75/878,287, filed December 22, 1999,
and asserting a bona fide intent to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/878,287
2
the Trademark Act, 15 U.S.C. 1052(e)(1); applicant has
failed to comply with the requirement to submit an
acceptable identification of goods; and applicant has
failed to comply with the requirement to provide
information about its goods.
Applicant and the Examining Attorney have submitted
appeal briefs.2 Applicant had requested an oral hearing,
but subsequently withdrew that request.
This case bears many similarities to another appeal
filed by applicant for the mark E-AUTODIAGNOSTICS, In re
2 With their briefs applicant and the Examining Attorney have
submitted certain dictionary definitions. The Board may take
judicial notice of dictionary definitions, and we have therefore
considered this material. University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
In its appeal brief, applicant also objects to an excerpt
submitted by the Examining Attorney from the on-line Acronym
Finder. Applicant claims that the Board has previously stated
that no evidence from this web-site should be considered as
evidence, but has provided no authority to support this claim.
(The case cited by applicant is non-precedential, and has not
been considered.) Applicant also discusses statements allegedly
made in the preface for the web-site, but these claims are
unsupported. Applicant did not submit a copy of the preface,
despite the fact that the Acronym Finder excerpt was made of
record by the Examining Attorney in the first Office action, and
applicant clearly had an opportunity to submit evidence in
response. Accordingly, we have considered the Acronym Finder
evidence. We would point out, however, that this evidence,
namely, that “E” is an acronym for “electronic,” is supported by
the other evidence of record.
Finally, applicant states in its brief that the trademark
database contains numerous registrations for the letter “E”
without a disclaimer. Applicant did not submit copies of any
such registrations, and we consider this mere conclusory
statement to have no probative value.
Ser No. 75/878,287
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SPX Corporation, __USPQ2d__, Serial No. 75/877,999 (TTAB
April 5, 2002) and we will therefore refer to some of the
statements we made in that opinion in the present case.
We turn first to the requirement that applicant submit
information about its goods. In the first Office action
the Examining Attorney stated that “applicant must submit
samples of advertisements or promotional materials for the
goods or, if unavailable, for goods of the same type,” and
“if such materials are not available, the applicant must
describe the nature, purpose, and channels of trade of the
goods in the application.” Applicant, in its response to
this Office action, simply ignored the request for
information, and the requirement for such information was
therefore made final in the next Office action. Applicant
did not attempt to comply with the requirement by filing a
request for reconsideration, and did not mention the
requirement in its appeal brief. The Examining Attorney
discussed applicant’s failure to respond to the information
requirement in her brief; applicant did not file a reply
brief.
Thus, applicant has neither attempted to comply with
the Examining Attorney’s requirement for information, nor
has it provided any explanation for its failure to comply.
Ser No. 75/878,287
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Trademark Rule 2.61(b) provides that the Examining
Attorney may require the applicant to furnish such
information and exhibits as may be reasonably necessary to
the proper examination of the application. Applicant has
clearly not complied with this requirement. Rather it has
totally ignored the request for information. Accordingly,
we affirm the refusal based on applicant’s failure to
comply with the requirement for information concerning its
goods. See In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB
1990).
We turn next to the requirement for an acceptable
identification of goods, since the identification of goods
is relevant to our consideration of the refusal based on
mere descriptiveness. The Examining Attorney asserts that
applicant’s identification—electronic engine analysis
system comprised of a hand-held computer and related
computer software—is indefinite because the term “related
computer software” is unclear in that it does not indicate
the function of the software. It is the Examining
Attorney’s position that, as identified, the software could
be used for any function, including “system operating
software, operating software for the hand-held computer,
some type of communication software for communications
between the hand-held computer and an electronic engine, or
Ser No. 75/878,287
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it could have any of a number of other functions.” Brief,
p. 8.
We disagree. Although certainly an additional phrase
in the identification stating the function of the software
would provide more information as to exactly what the
software does, we do not believe it to be necessary in
order to provide the public with notice as to the nature of
applicant’s goods. The identification indicates that the
software is used as part of an electronic engine analysis
system, and this language is sufficiently limiting that it
would not be reasonable to interpret the software as
general system operating software, etc. Thus, the
identification is adequate to indicate the scope of any
registration which applicant might obtain.
This brings us to the refusal under Section 2(e)(1).
Section 2(e)(1) of the Act prohibits the registration of a
mark which is merely descriptive of the identified goods.
Both applicant and the Examining Attorney have set forth
the principles which govern the determination of whether a
mark is merely descriptive, and therefore we will not
repeat them here.
In support of her position that the mark is merely
descriptive, the Examining Attorney has submitted various
dictionary definitions:
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e-: (Electronic-) The “e-dash” prefix
may be attached to anything that has
moved from paper to its electronic
alternative, such as e-mail, e-cash,
etc.3
E stands for electronic. But it’s
become the all-purpose Internet and Web
prefix. Stuck on the front of any term
you want, it means to make that thing
happen over the Internet/Web, e.g., e-
commerce, e-mail, e-check.4
diagnostic: the art or practice of
diagnosis—often used in pl.5
diagnosis: investigation or analysis of
the cause or nature of a condition,
situation, or problem <~ of engine
trouble>
In addition, the Examining Attorney has submitted a
substantial number of excerpts taken from the NEXIS
database, including the following:
When you see a technological term that
starts with the letter ‘e’ and a
hyphen, it most likely is an e-
commerce-driven term. And nine times
out of 10, the “e” means electronic.
“USA Today,” July 8, 1998
In automotive applications, Blue-tooth
will be used to connect hand-held
devices to onboard electronics to
enable hands-free phone use, for
example, or engine diagnostics and GPS
information over PDAs or similar
devices.
“Purchasing,” November 16, 2000
3 The Computer Glossary, 8th ed. © 1998.
4 Newton’s Telecom Dictionary, 16th ed., © 2000.
5 Merriam-Webster’s Collegiate Dictionary, 10th ed., © 1998.
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Anyone who owns an off-brand car should
think twice before venturing far from a
dealership or garage that can fix it,
he says. Nobels said that computerized
diagnostic equipment is specialized and
very expensive these days.
“The Orlando Sentinel,” July 27, 2000
Both engine manufacturers and after-
market suppliers have developed
sophisticated hardware and software
systems designed to make engine
diagnostics and troubleshooting quicker
and more intuitive. ... Cummins’ new
QuickCheck system piggybacks upon the
expanding capabilities of Palm handheld
devices to enable them to read and
capture SAE J1587 engine data quickly
and conveniently from any electronic
diesel engine.
“Diesel Progress North American
Edition,” July 1, 2000
It could also help make engine
diagnostics at the repair shop easier,
allowing a mechanic to just park the
car next to a shop console without
having to wriggle under the hood to
connect a cable.
“Electronic News,” January 8, 2001
Martin County residents interested in
an automotive career will be able to
get their hands on the latest
diagnostic equipment, engine analyzers,
scanners, lab scopes and automotive
software in a new state-of-the-art
automotive laboratory....
“The Stuart News/Port St. Lucie News
(Stuart, FL),” November 26, 2000
We have no doubt, based on the evidence of record,
that “DIAGNOSTICS” describes the identified engine analysis
system. As the dictionary definition for “diagnostic”
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points out, this term is often used in the plural, and
means “diagnosis,”6 and the word “diagnosis” is defined with
the very word used in applicant’s identification—the
analysis of the cause or nature of a condition, situation
or problem. In fact, the dictionary’s example of use of
this word is in terms of the function of applicant’s goods:
diagnosis of engine trouble. The NEXIS evidence also shows
that “diagnostics” is a recognized term for engine
analysis.
Applicant does not dispute the descriptive nature of
the word “diagnostics.” However, applicant argues that the
presence of the prefix “E-” in the mark prevents the mark
as a whole from being merely descriptive. Applicant
contends that because the dictionary definition of “E-”
states that this prefix may be attached to anything that
has moved from paper to its electronic alternative, the
term E-DIAGNOSTICS does not make any real sense, since an
engine analysis system would not be converted to electronic
form from paper. Applicant also argues that the “E-“”
prefix is recognized by the public to represent services
provided over the Internet, but because applicant is
6 We take judicial notice of the dictionary definition of
“diagnostics” in The American Heritage Dictionary of the English
Language © 1970 meaning “diagnosis”.
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applying the prefix to goods, it creates a unique
commercial impression. Finally, applicant claims that
there is an incongruity in combining the “E-” prefix with
DIAGNOSTICS because the function of the goods, diagnostics,
cannot be electronic.
We are not persuaded by these arguments. The
dictionary definition shows that the “E-” prefix means
“electronic.” Applicant’s goods are identified as an
electronic engine analysis system. Further, although “E-”
is frequently used in connection with the Internet, many
associate the prefix with computers in general and
activities that are performed by computers. As the
identification states, applicant’s electronic engine
analysis system uses, that is, is comprised of, a computer
and related software. It is, in fact, an electronic
diagnostic system. When the prefix is combined with
DIAGNOSTICS, and used in connection with an “electronic
engine analysis system comprised of a hand-held computer
and related computer software,” the resulting mark
E-DIAGNOSTICS mark will immediately convey to consumers
that this is an electronic system using computer technology
to analyze engines.
There are two final points we must address. Applicant
claims that its mark is a double entendre because the
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definitions for “E” include “earth, engineer, excellent,
and English.” However, because the determination of
whether a mark is merely descriptive must be made in
relation to the goods on which the mark is used or proposed
to be used, and because applicant’s goods are identified as
“electronic,” it is this meaning of the word that consumers
will ascribe to the mark. The second point concerns
statements made by the Examining Attorney in her brief.
While she argues that the identified engine analysis system
is electronic (e.g., “the diagnostic devices are
electronic”, brief, p. 4), she also has made certain
statements that the mark is merely descriptive because the
goods are electronic diagnostic systems used for analyzing
the condition of electronic engines. We do not read
applicant’s identification as being an analysis system for
electronic engines; rather, the term “electronic” modifies
the kind of system that it is, not the kind of engines that
the system analyzes. As noted above, we find that E-
DIAGNOSTICS is merely descriptive because it describes a
characteristic of the goods, namely, that it is an
electronic system used to analyze engines. (The Board need
not find that the Examining Attorney’s rationale is correct
in order to affirm the refusal to register. See TBMP
§1217, and cases cited therein.)
Ser No. 75/878,287
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Decision: The refusal based on the unacceptability of
the identification of goods is reversed; the refusals
based on the ground that the mark is merely descriptive of
the goods and the requirement for information are affirmed.