SPX Corp.

Trademark Trial and Appeal Board

Apr 5, 2002

No. 75877999 (T.T.A.B. Apr. 5, 2002)

4/5/02

Hearing: Paper No. 11
February 7, 2002 ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SPX Corporation
________

Serial No. 75/877,999
_______

John H. Weber and Kenneth H. Oh of Pepper Hamilton, LLP for
SPX Corporation.

Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Acting 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-AUTODIAGNOSTICS as a trademark for “electronic engine
analysis system comprised of a hand-held computer and
related computer software.”1 Registration has been refused

1 Application Serial No. 75/877,999, filed December 22, 1999,
based on an asserted a bona fide intention to use the mark in
commerce.

THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser No. 75/877,999
2
pursuant to 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 identified goods. Registration has also
been refused because applicant has failed to comply with
the Examining Attorney’s requirement for an acceptable
identification of goods, and to comply with the Examining
Attorney’s requirement to supply information concerning its
goods.
Applicant and the Examining Attorney filed briefs, and
an oral hearing was held.2
We turn first to the requirement for an acceptable
identification of goods.3 Applicant has identified its
goods as “electronic engine analysis system comprised of a
hand-held computer and related computer software.” The

2 With its brief applicant submitted copies of third-party
registrations for trademarks containing design forms of the letter “E.”
The Examining Attorney has objected to these submissions as untimely.
We agree. Trademark Rule 2.142(d) provides, in relevant part, that the
record in an application should be complete prior to the filing of an
appeal. Accordingly, we have not considered the registrations. We
have, however, considered dictionary definitions of “auto” which were
submitted by applicant with its brief, since the Board may take
judicial notice of dictionary definitions. See 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). Similarly,
we have taken judicial notice of the dictionary definition of “E”
submitted by the Examining Attorney with her appeal brief.
3 After the oral hearing applicant filed a request for suspension and
remand so that it might amend the identification of goods in an attempt
to obviate this ground for refusal. There are various problems with
this request, not least of which is the fact that it was not
accompanied by the proposed amendment for the Examining Attorney to
consider. However, because of our determination of the issue of the
acceptability of the identification, the request for remand is denied
as moot.

Ser No. 75/877,999
3
Examining Attorney states that this identification is
indefinite because applicant has not indicated the function
of the related computer software, as a result of which it
is not clear whether the software is system operating
software, operating software for the hand-held computer,
some type of communication software for communications
between the handheld computer and an electronic engine, or
some other function. 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. As identified, the “computer software”
would be understood to be used in connection with a hand-
held computer used in an electronic engine analysis system,
and this identification is adequate to indicate the scope
of any registration which applicant might obtain.
Accordingly, we reverse the requirement for a more definite
identification of goods.
The next ground of refusal is that the mark is merely
descriptive of the goods. We affirm the refusal on this
ground.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
Ser No. 75/877,999
4
of the goods or services with which it is used. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). The
determination is made not in a vacuum, but in relation to
the goods on which, or the services in connection with
which, the mark is used or proposed to be used. See In re
Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215
(CCPA 1978); In re Venture Lending Associates, 226 USPQ 285
(TTAB 1985). Further, the determination is made from the
standpoint of the average prospective purchaser. In re
Abcor Development Corporation, supra.
In support of the refusal of registration, the
Examining Attorney has submitted dictionary definitions for
the various elements of applicant’s mark, as follows:
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.4
E: 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.5

auto: an automobile6
auto: adjective relating to cars7

4 The Computer Glossary, 8th ed. © 1998.
5 Newton’s Telecom Dictionary, 16th ed. © 2000.
6 The American Heritage Dictionary of the English Language, 3d ed. ©
1992.
7 Cambridge International Dictionary of English © 2000
Ser No. 75/877,999
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diagnostic: the art or practice of
diagnosis
diagnosis: investigation or analysis of
the cause or nature of a condition,
situation, or problem (~ of engine
trouble)8

The Examining Attorney has also made of record a large
number of excerpts taken from the NEXIS data base from
articles in which the phrases “auto diagnostic(s)” or
“automobile diagnostic(s)” appear, including the following:9
AAA New Mexico is a non-profit auto
club providing roadside assistance,
travel services, auto diagnostics,
traffic safety programs, insurance and
other services.
“Albuquerque Journal,” April 13, 1998

About $5,700 in computer equipment was
stolen during a break-in at Performance
Auto, 5677 Niagara Falls Blvd., police
said.
Police said that an overhead garage
door window was broken to enter the
business and that a $3,500 laptop
computer, a $700 auto diagnostic
computer and other equipment were taken
Tuesday.
“The Buffalo News,” November 9, 2000

...where he started working as a
testing engineer for an auto parts
maker.
In 1974 Georgiu started All Test, a
manufacturer of auto diagnostic
computers. He sold AllTest in 1986 for
$5 million. Using that money, he next
started Alldata....
“Sacramento Business Journal,”

8 Webster’s Collegiate Dictionary, 10th ed. © 1993).
9 We have given no consideration to the two articles appearing
in foreign publications, as there is no indication as to whether
these articles had any public exposure in the United States.
Ser No. 75/877,999
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October 20, 2000

Alldata, created in 1986, designs and
manufactures computer software and CD-
Rom discs that are used for auto
diagnostics and repair.
Georgiu would not divulge current
financial information....
“Sacramento Bee,” February 10, 1996

The move allows InfoMove to use Alldata
automobile diagnostic and maintenance
information....
“Global Positioning & Navigation News,”
June 14, 2000

... They will still sell cars, but a
certain profit share will come from
providing remote auto diagnostics or
traveler information.
“Journal of Commerce,” May 10, 2000

But it also boasts computerized
instruments. And one recent day, it
was a showcase for the latest in
computerized auto diagnostic equipment
displayed by Buffalo Grove-based Snap-
on Industrial salesmen.
For the 20 or so automotive educators
who came from as far as Lockport and
Crystal Lake, it was a chance to check
out the expensive, computerized
automotive equipment....
“Chicago Tribune,” November 18, 1998

A $2,500 hand-held automobile
diagnostic scanner was stolen in the
past week from Page Street Auto....
“Chicago Daily Herald,” June 4, 1998

RIStech, Franklin, Wis., has developed
Interactive Support (IS), a technology
that provides remote support of PC-
based controls for industrial equipment
used in material handling, packaging,
automobile diagnostics, and more.
“American Machinist,” September 1, 2000
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Sharon Paige, a corrections department
security officer, has been cleared of
grand larceny charges in the theft of
an automobile diagnostic computer worth
up to $3,000.
“USA Today,” August 27, 1997

Applicant argues that when “auto” is used as a prefix
in the term “autodiagnostics” it will not be viewed as
“automobile diagnostics” but will be regarded as “an
amorphous concept of a self-propelling diagnostics.”
Brief, p. 3. It is applicant’s position that in its mark
“auto” is used as a prefix, and not as an abbreviation for
“automobile,” and therefore when this prefix, meaning
“self-moving” or “self-propelling,” is combined with
“diagnostics,” the resulting “autodiagnostics indicates
that the diagnostic is somehow ‘self-moving’ or ‘self-
propelling.’” Brief, p. 3.
We are not persuaded by this argument. As noted
above, the question of mere descriptiveness must be
determined not in the abstract but in relation to the goods
for which registration is sought, and the impact that the
mark is likely to have on the average purchaser of the
goods. Applicant’s identification of goods is for an
electronic engine analysis system, and this identification
encompasses systems for the analysis of automobile engines,
a point which applicant does not dispute. When consumers
Ser No. 75/877,999
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see the mark E-AUTODIAGNOSTICS in connection with an
electronic automobile engine analysis system, they will
immediately understand the term AUTO as referring to
“automobile” rather than as a prefix indicating that the
system or the diagnostics are “self-moving.” In fact, the
dictionary definition of “auto,” submitted by applicant
with its brief and which we judicially notice, does not
state that “auto” means simply “self-moving.” Rather, this
definition includes a reference to automobiles, to wit:
An abbrev. of automobile, used as a
prefix with the meaning of self-moving,
self-propelling; as, an autocar, an
autocarriage, an autotruck, etc., an
automobile car, carriage, truck, etc.10

Applicant has not submitted any example or evidence of
“auto” being used as a prefix in a term that does not refer
to an automobile from which we can conclude that purchasers
of its electronic engine analysis system would regard the
prefix “auto” as meaning self-moving in the context of the
mark.
On the contrary, the articles which the Examining
Attorney has made of record show that “auto diagnostics” is

10 http://www.dictionary.com. The website indicates the
definition is taken from Webster’s Revised Unabridged Dictionary,
© 1996, 1998.

Ser No. 75/877,999
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a recognized term for goods and services involved in engine
analysis, including computers which are used for this
purpose.
Applicant also notes that there is no evidence of the
use of E-AUTODIAGNOSTISTICS or AUTODIAGNOSTICS as a single
term. Although conceding that the Examining Attorney has
“submitted numerous articles as evidence of the
descriptiveness of the words ‘auto diagnostics’ or
‘automobile diagnostics,’” and that “‘auto diagnostics may
be perceived as ‘automobile diagnostic’” brief, p. 4,
applicant asserts that there is no evidence that
“autodiagnostics” “would indicate anything more than an
amorphous diagnostic propelling itself.
It is true that, although there are numerous articles
in which the terms “auto diagnostics” or “automobile
diagnostics” are used, there is no evidence of the use of
“autodiagnostics” (or “e-autodiagnostics”) as a single
word. However, it is not necessary that a term appear in a
dictionary or a newspaper article in the exact manner in
which it is depicted as a trademark for that mark to be
found merely descriptive. It has been held in numerous
cases that telescoping two words which are merely
descriptive of the goods into a single term by the deletion
of a space does not avoid a finding of mere descriptiveness
Ser No. 75/877,999
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for the combined term. See, for example, In re BankAmerica
Corp., 229 USPQ 852 (TTAB 1986) (PERSONALINE is merely
descriptive of consumer loan services in which a personal
line of credit is provided); In re U.S. Steel Corp., 225
USPQ 750 (TTAB 1985) (SUPEROPE merely descriptive of wire
rope); In re Gagliardi Bros., Ind., 218 USPQ 181 (TTAB
1983) (BEEFLAKES is merely descriptive of thinly sliced
beef).
In this case, it would be readily apparent to the
purchasers of the identified goods that the mark E-
AUTODIAGNOSTICS consists of the prefix “E-” followed by the
two ordinary words AUTO DIAGNOSTICS which have been
telescoped together into AUTODIAGNOSTICS, particularly in
view of the recognized meaning of “auto diagnostics” for
such goods.
Nor does the addition of the prefix “E-” change the
merely descriptive significance of the mark as a whole.
The dictionary definitions submitted by the Examining
Attorney show that this prefix indicates the electronic or
internet nature of an item or service. Applicant itself
points to an article made of record by the Examining
Attorney which states, in part, that:
When you see a technological term that
starts with the letter ‘e’ and a
hyphen, it most likely is an
Ser No. 75/877,999
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e-commerce-driven term. And nine times
out of 10, the ‘e’ means electronic.11

Applicant asserts that the cases in which the Board
has found E-prefix marks to be merely descriptive involve
services, rather than goods. Although this is true, it
does not mean that when the E-prefix is part of a mark used
for goods, that mark cannot be merely descriptive of the
goods.
Given the definition of the E-prefix as indicating
something electronic, as well as the evidence discussed
above as to the descriptiveness of the term AUTODIAGNOSTICS
for an engine analysis system, we find that, when the
combined term E-AUTODIAGNOSTICS is used for an “electronic
engine analysis system comprised of a hand-held computer
and related computer software,” purchasers, prospective
purchasers and users of such goods will immediately

11 “USA Today,” July 8, 1998. The entire portion quoted by
applicant in its brief begins with the following sentences: “The
words e-tail and e-tailer stem from the boom in electronic
commerce and are a takeoff on the word retail. They generally
refer to retail and retailers in cyberspace, usually in the form
of on-line malls and merchants.” Applicant argues that this
article “supports the conclusion that neither the mark as a whole
or viewed alone [presumably the E-prefix] is descriptive for
goods.” Brief, p. 5. However, the entire quote is in answer to
the question, “What are e-tailers?” The fact that the question
is answered in terms of on-line malls and merchants is directly
due to the nature of the question asked. We think the further
portion of the answer, about the nature of the prefix E- in
general, is far more telling as to the understanding of this term
by the public.

Ser No. 75/877,999
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understand that applicant’s goods are an electronic system
used to analyze car engines. Accordingly, we find that the
mark is merely descriptive of applicant’s identified goods.
Finally, registration has been refused on the basis
that applicant did not comply with the Examining Attorney’s
requirement to supply samples or advertisements or
promotional materials or, if such materials were not
available, to describe the nature, purpose and channels of
trade or the goods, and to indicate whether the goods are
used in connection with automobiles. The Examining
Attorney made this requirement for information in the first
Office action. Applicant, in responding to the first
Office action, totally ignored the request. The
requirement for information was made final in the next
Office action. Applicant did not respond to this action,
but filed a notice of appeal, followed by an appeal brief.
Again, its brief is silent with respect to the requirement
for such information. Applicant did not argue against the
validity of such a request, or otherwise explain why it had
failed to respond to it. At the oral hearing, applicant’s
attorney merely indicated that perhaps it would have been a
better course to have responded.
Trademark Rule 2.61(b) provides that the Examining
Attorney may require the applicant to furnish such
Ser No. 75/877,999
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information and exhibits as may be reasonably necessary to
the proper examination of the application. In response to
a request for information such as the Examining Attorney
made in this case, an applicant has several options. It
may comply with the request by submitting the required
advertising or promotional material. Or it may explain
that it has no such material, but may submit material of
its competitors for similar goods or provide information
regarding the goods on which it uses or intends to use the
mark. Or it may even dispute the legitimacy of the
request, for example, if the goods identified in the
application are such ordinary consumer items that a request
for information concerning them would be considered
unnecessary and burdensome. What an applicant cannot do,
however, is to ignore a request made pursuant to Trademark
2.61(b), as applicant has here. Accordingly, and because
the Examining Attorney’s request for information was
reasonable, 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).
Decision: The refusal based on the unacceptability of
the identification of goods is reversed; the refusals based
Ser No. 75/877,999
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on the ground that the mark is merely descriptive of the
services and the requirement for information are affirmed.