Tempo G

Trademark Trial and Appeal Board

Apr 29, 1998

No. 74580166 (T.T.A.B. Apr. 29, 1998)

Paper No. 10
ejs
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB APRIL 29, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tempo G
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Serial No. 74/580,166
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Thomas I. Rozsa for Tempo G
Charles T. J. Weigell, Trademark Examining Attorney, Law
Office 109 (Deborah S. Cohn, Managing Attorney)
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Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Tempo G has appealed from the refusal of the Trademark
Examining Attorney to register GEL-TAPE as a trademark for
“flexible pressure sensitive adhesive base carrier tape for
automatic handling of raw wafer dies and other surface-mount
components.”1 Registration has been refused pursuant to
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1),

1 Application Serial No. 74/580,166, filed September 29, 1994,
asserting a bona fide intention to use the mark in commerce.
Ser No. 74/580,166
2
on the ground that applicant’s mark is merely descriptive of
its identified goods.
Applicant and the Examining Attorney filed briefs; an
oral hearing was not requested.
We affirm the refusal of registration.
Charles Gutentag, applicant’s president, has submitted
a declaration explaining that applicant’s goods are a
variety of continuous carrier tape, made to contain
electronic surface mount components for automatic handling.
In the electronic component and assembly industries the
conventional forms of standardized carrier tape in general
use are referred to as “punched tape” and “embossed tape.”
Applicant’s product is a new type of carrier tape. Mr.
Gutentag states that this new form of goods named ‘GEL-TAPE’
is the subject of a U.S. patent application “entitled
CARRIER TAPE PACKAGING SYSTEM UTILIZING A LAYER OF GEL FOR
RETAINING SMALL COMPONENTS.” He also asserts that the term
GEL-TAPE serves “to distinguish the form of these newly
devised goods from the conventional, standardized forms of
‘punched tape’ and ‘embossed tape’.”
A mark is merely descriptive of goods or services, and
therefore unregistrable, if it immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Ser No. 74/580,166
3
It is clear from the evidence of record, as well as
applicant’s own identification, that “carrier tape” and
“tape” are generic terms for applicant’s identified goods.
Moreover, Mr. Gutentag’s declaration and the patent for the
goods show that the word “gel” describes a significant
characteristic of the carrier tape, which features a “thin
resilient flexible gel layer.” Mr. Gutentag has stated in
his declaration that the word “gel” has a definition which
embraces materials physically described as “flat flexible
film” and “non-porous air-impermeable thin flexible film.”
When these two descriptive words are combined as GEL-TAPE,
the resultant mark immediately conveys to purchasers that
the identified goods are carrier tape which has a gel layer,
i.e., a “flat flexible film” or “non-porous air-impermeable
thin flexible film.”
This case, thus, differs from those cited by applicant,
in which two admittedly descriptive terms, when combined,
were found to result in a composite which was not merely
descriptive. Cf. Application of Colonial Stores, Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR AND SPICE, in
addition to describing the ingredients of bakery products,
brought to mind the nursery rhyme). Despite applicant’s
assertion, the composite GEL-TAPE is not a fanciful term;2

2 The fact that a party may be the first or only user of a term
does not make it “fanciful and creative.” Moreover, it is a
well-established principle of trademark law that one cannot
Ser No. 74/580,166
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it does not convey any meaning other than a tape with a gel
component.
Further, the very manner in which the descriptive terms
“gel” and “tape” have been combined in applicant’s mark
reinforces their descriptive connotation, since GEL-TAPE has
the same format as the designations “punched tape” and
“embossed tape,” terminology which applicant states are
common industry terms for these other types of tape.
Consumers will thus perceive GEL-TAPE as describing or
naming a particular type of carrier tape, rather than as
identifying the source of the goods.
We have noted applicant’s argument that, because its
mark GEL-PAK has been registered for chip trays, GEL-TAPE
should similarly be registered for carrier tape. We do not
know what evidence was before the Examining Attorney in that
application, but our determination of registrability must be
based on the record before us, and on this record we find
GEL-TAPE to be merely descriptive of applicant’s identified
“flexible pressure sensitive adhesive base carrier tape for
automatic handling of raw wafer dies and other surface-mount
components.

exclusively appropriate a descriptive term simply because one is
the first user of the mark or the only producer of the particular
goods.
Ser No. 74/580,166
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Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board