Transgo, Inc.

Trademark Trial and Appeal Board

Dec 16, 1999

No. 75055823 (T.T.A.B. Dec. 16, 1999)

Paper No. 16
EJS
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
DEC. 16, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Transgo, Inc.
________
Serial No. 75/055,823
_______
Mark P. Stone of for Transgo, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Seeherman, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Transgo, Inc. has applied to register “REPROGRAMMING
KIT” as a trademark for the following goods:
automotive transmission valve body
components, namely, separator plates and
springs; automotive transmission parts,
namely, separator plates and springs,
sold together as a unit; automatic
transmission valve body parts sold as a
unit for installation in the valve
bodies of vehicle automatic
transmissions; and valve body kits
comprising separator plates and springs
for installation in the valve bodies of
vehicle automatic transmissions.1

1 Serial No. 75/055,823, filed February 9, 1996, alleging use and
use in commerce as early as 1970.
Serial Number 75/055,823
2
The Trademark Examining Attorney issued a final refusal
to register based upon Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e)(1), on the ground that the applied-for
term is generic for such products. In response to
applicant’s alternative request for registration pursuant to
the provisions of Section 2(f) of the Trademark Act, the
Examining Attorney held that if this term is not generic,
then applicant’s mark is so highly descriptive that
applicant’s claim of acquired distinctiveness is
insufficient to permit registration.
Applicant and the Examining Attorney submitted briefs,
but an oral hearing was not requested.
Applicant’s goods, according to the patent which the
Examining Attorney has made of record, are a system used to
modify factory-installed transmissions, essentially by
modifying the structure and operation of the existing
hydraulic circuits of the original transmission. The system
produces quick application and release forces with minimum
ratio sharing, or overlap, through the modification of the
operation of the original transmission by enlarging or
Serial Number 75/055,823
3
plugging orifices in the original hydraulic circuitry to
change fluid flow.2
It appears, from the evidence of record, that the
purchasers of applicant’s goods are auto mechanics,
manufacturers of high performance automotive transmission
parts, sellers of automotive transmission parts; and those
interested in racing automobiles or otherwise modifying
their vehicles for high performance.3
Turning first to the issue of genericness, it is the
Examining Attorney’s position that applicant's goods include
“kits” which are used to “reprogram” vehicle transmission
valve bodies. Therefore, the Examining Attorney asserts
that REPROGRAMMING KIT is a generic name for applicant's
goods.

2 The concurring opinion has gone into great detail about the
workings of automatic transmissions and the modifications of
them. The author of that opinion appears to be more knowledgeable
about such products than are we in the majority. Therefore, we
cannot say that the various statements in the record demonstrate
as clearly to us as they do to the concurring judge the exact
workings of applicant’s goods or of the newer products, discussed
in the concurring opinion, which are used to modify automatic
transmissions. In any event, the more detailed description of
such products does not affect our decision herein that the Office
has failed to prove that “reprogramming kit” is a generic term for
applicant’s identified goods.
3 Although the informational material supplied by applicant as a
specimen states that it is for “professional installation,” it
appears from the identification of goods and the specimens that
those wanting to modify their transmissions may still be
purchasers of applicant’s product, even though the product is
professionally installed.
Serial Number 75/055,823
4
In support of her position the Examining Attorney has
made of record excerpts of articles taken from the NEXIS
database using the terms “reprogram,” “reprogrammed” and
“reprogramming” in connection with automotive transmissions;
dictionary definitions of the terms “program” and “kit”; a
copy of a patent owned by applicant's president, referred to
above; and information about applicant's goods posted on one
of its distributor's web sites.
The Examining Attorney has the burden of proving
genericness by “clear evidence" thereof. See, In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
Determining whether a mark is generic …
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?
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d. 987, 228 USPQ 528 (Fed. Cir. 1986)
The evidence of record shows that the genus of goods at
issue herein are kits or automatic transmission valve body
parts or components, sold as a unit, for the purpose of
changing the shifting pattern of automatic transmissions of
vehicles. After carefully reviewing all of the evidence
submitted by applicant and the Examining Attorney, we find
Serial Number 75/055,823
5
that the Office has not met its burden of proving that the
consuming public would refer to that genus of goods as a
REPROGRAMMING KIT.
With respect to the NEXIS evidence, although words such
as “reprogram” are used in articles in connection with
automatic transmissions, none of these articles makes
reference to a “reprogramming kit” or, indeed, to
“reprogramming devices,” “reprogramming systems,” etc. In
her brief the Examining Attorney has highlighted five NEXIS
articles, which are reproduced below.4
First, B&M added a larger 30-spline
input shaft, a reprogrammed valve body
for crisper shifts, a Corvette servo
assembly, a superior 2-4 band, a heavy-
duty overdrive sprag assembly and ….
“Hot Rod,” December 1995
Reprogrammed valve-body hardware for
Ford’s A10 automatic trans (to shorten
slippage time at the shift points)
rounds out the basic Dyno Tunes package.
“AutoWeek,” May 27, 1991
Dinan reprograms the shift points on the
automatic, raising the stall speed of
the torque converter to match the revs
where the turbos come on stream. The
result is virtual elimination of lag.
“AutoWeek,” January 7, 1991

4 Rather than burdening this opinion by listing all the NEXIS
excerpts which are of record we have reproduced only those
included in the Examining Attorney’s brief, on the assumption that
the Examining Attorney chose those which best supported her
position. We would add that none of the remaining NEXIS excerpts
provides any better support for the claim of genericness.
Serial Number 75/055,823
6
[U]sing GM internal parts and a Mr.
Gasket Tough Shift-3 kit to reprogram
the valve body. The kit allows you
three optional programs, from slightly
firm shifts to neck-snapping drag racing
performance.
“Hot Rod,” October 1984
In either mode, it feels like a drag
racer’s transmission, having been
reprogrammed so that upshifts are
snappier; in fact, from first to second
it’s a double snap--your head doesn’t
just snap back, it jerks forward first.
“AutoWeek,” September 16, 1996.
Although these articles indicate that transmissions or
transmission valves can be changed or reprogrammed to change
the shifting, they do not show that the parts which are used
to accomplish this purpose would be referred to as a
“reprogramming kit.” In fact, some of the references use
the term “reprogram” only as a synonym for the word
“change,” e.g., B&M added a “reprogrammed valve body,”
Ford’s transmission has “reprogrammed valve-body hardware,”
“Dinan reprograms the shift points.”
On the other hand, applicant has submitted declarations
from the president of an automotive transmission repair
business; a manufacturer of high performance automotive
transmission parts; and the operations manager of a
distributor of automotive transmission parts, all of whom
can be said to represent the views of the relevant public
Serial Number 75/055,823
7
for applicant’s identified goods. Each of these men stated
that the appropriate descriptive or generic terminology of
the goods purchased from applicant is “valve body kits,”
“transmission kits” and “transmission modification kits.”
Gilbert Younger, applicant’s president, has also provided a
declaration stating that, in addition to the foregoing
terms, “recalibration kit” is an appropriate descriptive or
generic term for applicant’s goods.
As for the dictionary evidence, the Examining Attorney
points to definitions of “kit” as meaning “a packaged set of
related materials” and of “program” as meaning “to insert,
or encode specific operating instructions into (a machine or
apparatus); We’ll program the bells to ring at ten-minute
intervals”5 The Examining Attorney asserts that the addition
of the prefix “re” to “program” simply means to program
again or anew.
Relying on In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987), the Examining Attorney argues
that REPROGRAMMING KIT is merely a combination of generic

5 Random House Unabridged Dictionary, 2d ed., © 1993. There are
several definitions provided for the word “program.” Although the
Examining Attorney did not allude to it in her brief, and
therefore we assume that she does not rely on it, in the Office
action making the dictionary listing of record she also
highlighted the following definition of “program”: to insert
(instructions) into a machine or apparatus; An automatic release
has been programmed into the lock as a safety feature.”
Serial Number 75/055,823
8
terms that has no separate or distinct commercial impression
apart from the meanings of the individual words. However,
the Federal Circuit recently had occasion to discuss the
import of Gould in In re The American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999), explaining that
Gould provides assistance in determining the genericness of
compound words only. The applied-for REPROGRAMMING KIT does
not appear to be a compound word, as “screenwipe” in the
Gould case was. Moreover, the Court stated in American
Fertility that one of the requirements of Gould was that the
PTO must prove “the public understands the individual terms
to be generic for a genus of goods and species.” The term
“kit” is clearly generic for applicant’s goods, as applicant
has in effect conceded by identifying its goods as a kit in
its application, and by the declarations of those in the
trade and applicant’s own president that the goods are
referred to as a kit. However, we cannot say, based on the
dictionary definition of “program,” with or without the
prefix “re,” that the PTO has proven that the public
understands REPROGRAMMING to be the generic term for
applicant’s goods.
We would also point out that Gould involved a newly
created product category, screenwipes, while applicant’s
Serial Number 75/055,823
9
product has been sold since 1970. As the Board stated in In
re Ferrero S.p.A., 24 USPQ2d 1155, 1157 (TTAB 1992):
Common sense leads us to conclude that
if a term is generic for a type of a
product that has been on the market for
decades, evidence of its use by others
in the marketplace should be available
and should be considered.
See also, In re Volvo White Truck Corp., 16 USPQ2d 1417
(TTAB 1990). However, despite the fact that applicant’s
REPROGRAMMING KIT product has been sold since 1970, the
Examining Attorney has been unable to discover any generic
uses of the term “reprogramming kit.” This, in fact, is a
troublesome issue even for the concurring judge: “Hence, I
struggle with the fact that although this type of product
has been available in the marketplace for almost thirty
years, the Trademark Examining Attorney was evidently unable
to find a single instance of third-party usage of this exact
phraseology.” p. 38.
As for the implication made in the concurring opinion
that the lack of third-party usage is due to applicant’s
threats of legal action, the idea that applicant’s
enforcement efforts should cut against applicant’s claim
that REPROGRAMMING KIT is its trademark is contrary to the
Serial Number 75/055,823
10
principles of trademark law, which encourages a party to
protect its mark.6
Moreover, those who write or report about automotive
matters and car enthusiasts who discuss high performance
transmission modifications on the World Wide Web would not
have the same fear of litigation that the concurring opinion
suggests may have deterred applicant’s competitors.7 Yet the
Examining Attorney has not submitted any evidence whatsoever
of a newspaper or magazine article showing the term
“reprogramming kit” used at all, let alone in a generic
manner. And the only evidence of cyberspace use is the web
site, discussed below, of applicant’s distributor. Given
that an Examining Attorney who has submitted evidence from
the NEXIS database and the web is presumed to have submitted
the best evidence available to him or her from the searches
of those media, In re Federated Dept. Stores, 3 USPQ2d 1541
(TTAB 1987), we must assume that such searches did not

6 In an analogous situation, the Court of Appeals for the Federal
Circuit criticized this Board for treating the fame of a mark as a
liability in assessing likelihood of confusion. Kenner Parker
Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
7 Even assuming that applicant were to write protest letters to
reporters about a perceived misuse of “reprogramming kit,” and
thereby deter future use of the term, the Examining Attorney has
not been able to show any initial uses which would even trigger
such a protest.
Serial Number 75/055,823
11
reveal any other references to the term “reprogramming kit”
per se.
The strongest evidence in support of the Examining
Attorney’s position is the material obtained from the web
site of one of applicant’s distributors. The information
sheet is headed “Transgo Transmission Re-Programming Kits,”8
below which is a statement, in relatively large letters,
that “TRANSGO Kits instantly re-program automatic
transmissions for high performance and durability,” followed
by the statement, “Unique kits re-calibrate the transmission
to shift far more efficiently.”
The informational material goes on to explain that
“Factory programming achieves comfort,” that “engineers have
been asked to program the shifting for smoothness and
comfort,” but that by doing so they have lessened efficiency
and durability. The advantages of applicant’s product is
then touted:
Trans-Go re-programming achieves
durability and performance.
So if you are willing to accept a faster
shift, which will subtract some comfort,
you can restore full performance and
durability. This is exactly what a
Trans-Go Re-Programming Kit does for
you. It makes each shift faster and

8 Although the applied-for mark is REPROGRAMMING KIT, the word
“reprogramming” is used in the web site materials with a hyphen,
i.e., “re-programming.”
Serial Number 75/055,823
12
more efficient. As a result, durability
of the transmission is immediately
doubled.
Re-Programming Goal: Make the shift
faster without losing precision.
The problem now becomes clear that what
we need is re-programming that will
precisely control the complicated chain
of events that occur during every shift
and do it in a far briefer span of time.
This is exactly what Trans-Go has
accomplished. Trans-Go kits….
The automatic with a re-programming kit
installed now shifts fast enough to take
advantage of inertial energy from
rotating mass….
The web site information goes on for a total of five
pages. In general applicant’s kits are referred to with
initial capital letters--Re-Programming Kits. Some of the
references capitalize only the word “Re-Programming
(“installing a Trans-Go Re-Programming kit”), and there is,
in the five pages, one reference in all lower case (“The
automatic with a re-programming kit installed…”). The
material also uses the term “re-programming” in a
descriptive manner to refer to the process of changing the
shifting, e.g.:
The problem now becomes clear that what
we need is re-programming that will
precisely control the complicated chain
of events that occur during every
shift….
Serial Number 75/055,823
13
Most kits offer Shift Command, a special
feature of our re-programming that
allows you to shift back to low at any
speed!
…the most important improvement that can
be made is to re-program the Control
Assemblies.
Although many of the uses of REPROGRAMMING KIT would be
frowned on by a trademark attorney, we do not think that
they are sufficient, even taken in conjunction with the
other evidence which is of record, to prove that
REPROGRAMMING KIT is a generic term. Obviously “kit” is
generic for the goods, as we have already stated, and the
fact that the web site materials sometimes depict this word
in lower case does not establish that the term REPROGRAMMING
KIT is generic. As for the one usage of “re-programming
kit” in a generic manner, we must recognize that this usage
occurs in the broader context of a web site in which
applicant’s product is most frequently referred to in a
trademark format. As a result, we think purchasers will not
view RE-PROGRAMMING KIT as a generic term, despite this
single lower case usage. Certainly these at-most mixed
usages do not establish that REPROGRAMMING KIT is a generic
term.
Accordingly, we find, based on the evidence of record,
that the Office has not met its burden of establishing by
Serial Number 75/055,823
14
clear evidence that REPROGRAMMING KIT is generic for the
identified goods. See In re Merrill Lynch, supra.
This brings us to the issue of whether REPROGRAMMING
KIT is merely descriptive and, if so, whether applicant has
shown that it has acquired distinctiveness as a trademark.
A term is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). The evidence of
record, much of which has been quoted above, clearly shows
that REPROGRAMMING KIT is not only merely descriptive, but
it is highly descriptive of applicant’s goods.
Specifically, as discussed above, KIT is a generic term for
applicant’s goods. The NEXIS excerpts, as well as the
descriptive uses of “re-program” in applicant’s
distributor’s web site, establish that the term “reprogram”
is used and recognized to refer to modification of
transmissions. When these terms are combined, the mark as a
whole, REPROGRAMMING KITS, describes a primary
characteristic of applicant’s goods, namely, that they are
kits used to “re-program automatic transmissions for high
performance and durability." Web site. Consumers, viewing
the mark in connection with applicant’s goods, will
immediately understand that these parts are sold in the form
Serial Number 75/055,823
15
of kits which are used to modify, or re-program,
transmissions.
Having determined that REPROGRAMMING KIT is descriptive
of applicant’s goods, we must now consider whether applicant
has met its burden of demonstrating that its mark has
acquired distinctiveness. That burden is measured by the
degree of descriptiveness of the mark; the greater the
descriptiveness of a mark, the greater the amount of
evidence necessary to prove acquired distinctiveness. See
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
Applicant has submitted four declarations, as discussed
above. Three, from those in the trade, state that their
companies have purchased high performance valve body kits
under the designation REPROGRAMMING KIT from applicant since
1970, in two cases, and since 1982 in the case of the third;
and that they regard REPROGRAMMING KIT as a trademark of
applicant’s. The fourth declaration, from applicant’s
president, originally executed in 1996 and supplemented in
July 1998, states that the mark REPROGRAMMING KIT has been
used by applicant on its identified goods continuously since
1970; that as of June 30, 1998 sales of such goods have
exceeded 820,000 units and $17.2 million in gross revenues,
with sales in the period between January 1, 1993 and June
Serial Number 75/055,823
16
30, 1998 exceeding $6.2 million in gross revenues and
220,000 units; and that applicant uses a “TM” symbol in
conjunction with the depiction of the mark on its goods.
Given the highly descriptive nature of applicant’s
marks, we find that applicant has not met its burden of
proving that it has acquired distinctiveness. Although
applicant has certainly used its mark for a substantial
amount of time, mere longevity of use is not always
sufficient to prove acquired distinctiveness. In this case,
applicant’s use of the mark is always with the trademark
TRANSGO, which appears in much more prominent letters and
type style. Moreover, the sale of 820,000 units over almost
30 years is not particularly significant in terms of the
exposure of the mark to the consuming public. See In re The
Boston Beer Company Limited Partnership, Case No. 99-1123,
__F.3d__, __USPQ2d__ (Fed. Cir. Dec. 7, 1999), in which use
since 1985, annual advertising expenditures in excess of $10
million and annual sales of $85 million were found
insufficient to establish acquired distinctiveness of THE
BEST BEER IN AMERICA.
Applicant has provided no information whatsoever about
its advertising of its product, from which we might
ascertain what public recognition it might have. The three
declarations of purchasers of applicant’s high performance
Serial Number 75/055,823
17
valve body kits--from the president of an automotive
transmission repair business in Fort Walton Beach, FL; the
president of a manufacturer of high performance automotive
transmission parts in Bartlett, TN; and the operations
manager of an automotive transmission parts distributor in
Oklahoma City, OK--are similarly unpersuasive.
Considering the highly descriptive nature of the term
REPROGRAMMING KIT, the evidence submitted by applicant is
simply insufficient for us to conclude that REPROGRAMMING
KIT has acquired distinctiveness among the relevant
consumers.
Decision: The refusal of registration on the ground of
genericness is reversed. The refusal of registration on the
ground that the mark is merely descriptive, and that
applicant has failed to establish acquired distinctiveness,
is affirmed.9
E. J. Seeherman
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board

9 Should our decision that applicant’s mark is merely
descriptive, and has not acquired distinctiveness, be overturned,
applicant must still submit a disclaimer of the generic term KIT
before a registration may issue.
Serial Number 75/055,823
18
Bucher, Administrative Trademark Judge, concurring:
I agree with my colleagues that based upon this record,
applicant should not be issued a federal trademark
registration. On the other hand, I disagree with that part
of the majority’s decision finding that the term
“reprogramming kit” has not been shown to be generic for
these products. This case presents the Board with a fact
situation where we should merely apply common sense to the
usage of these two ordinary, English-language words. Taking
the plain meaning of the term “reprogramming kit” in the
real-world context of applicant’s after-market goods, we
should readily affirm the refusal of the Trademark Examining
Attorney to register this matter on the ground that the
applied-for term is generic for these automotive
transmission valve body components.
My colleagues in the majority conclude: “Consumers,
viewing the mark in connection with applicant’s goods, will
immediately understand that these goods are sold in the form
of kits which are used to modify, or re-program,
transmissions.” Indeed, they find the term to be highly
descriptive. Yet the majority also agrees with the
contention of the applicant that the Examining Attorney has
failed to meet her burden of proof on the issue of
Serial Number 75/055,823
19
genericness. I disagree with this holding, and I would
affirm the refusal to register based upon the showing of
genericness contained within the file.
Dissent only as to “Genericness” Issue
Of the several issues on appeal in this case, the only
conclusion on which I part ways with my colleagues in the
majority has to do with whether the term “Reprogramming Kit”
is generic for applicant's goods.
As to this critical issue, by maintaining her position
that this matter is indeed a generic designation, the
Trademark Examining Attorney must prove genericness with
“clear evidence.” See, In re Merrill Lynch, Pierce, Fenner
& Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). She must demonstrate that the primary significance
of this term to the relevant public is as a type of product.
The “primary significance” test was first enunciated by
Judge Learned Hand in Bayer Co., Inc. v. United Drug Co.,
272 F. 505, 509 (S.D.N.Y. 1921): “The single question, as I
view it, in all these cases, is merely one of fact: What do
the buyers understand by the word whose use the parties are
contending?” See also, Kellogg Co. v. National Biscuit Co.,
305 U.S. 111, 83 L.Ed. 73, 39 USPQ 296 (1938) [“Shredded
Wheat” is generic because it “is the term by which the
Serial Number 75/055,823
20
biscuit in pillow-shaped form is generally known by the
public].
As the Examining Attorney points out, evidence of the
relevant public’s perception of a term may be acquired from
any competent source, including newspapers, magazines,
dictionaries, catalogs and other publications. In re
Leatherman Tool Group Inc., 32 USPQ2d 1443, 1449 (TTAB
1994), citing to In re Northland Aluminum Products, Inc.,
777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985). Under
the test articulated by our reviewing court in H. Marvin
Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782
F.2d. 987, 228 USPQ 528 (Fed. Cir. 1986):
Determining whether a mark is generic … 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?
Evidence of Record:
Web site: The Examining Attorney submitted for the
record several pages (containing pictures, drawings, and
text) from a World Wide Web site. In reviewing this
critical material taken from the Internet,10 I have

10 Transmission Exchange Co. of Portland, OR, made this Internet
site available on the World Wide Web. Transmission Exchange is a
distributor of applicant’s goods, and was the most authoritative
source the Trademark Examining Attorney found on the Internet
promoting applicant’s goods. The site is found at
Serial Number 75/055,823
21
reproduced the text in full (with the size/style of the web
page fonts but without the images):
TransGo Transmission Re-Programming
Kits
TRANSGO Kits instantly re-program automatic
transmissions for high performance and
durability.
Unique kits re-calibrate the transmission to shift far more efficiently.
In terms of performance and durability for an automatic transmission, the most
important improvement that can be made is to re-program the Control Assemblies.
These assemblies regulate the functions of the entire transmission; 95% of shift
performance comes from programming. Installing a Trans-Go Re-programming Kit
will instantly improve the whole personality of your GM, FORD and CHRYSLER
transmissions.
Factory programming achieves comfort.
The automatic transmissions coming off the assembly lines in Detroit are truly
masterpieces of engineering. But engineers have been asked to program the shifting
for smoothness and comfort. Also, consumer attitude surveys show that drivers
believe a soft, smooth shift is easier on the transmission. Actually, just the reverse is
true.
To add comfort, Detroit designers have had to subtract a considerable amount of efficiency
and durability. They have achieved comfort by extending the time duration of every shift.
Not only does power slip away during this extended shift, but all friction surfaces receive
excessive wear because they are asked to work overtime.
The stock automatic takes longer to complete each shift. [Reference to Figure 1 not
shown herein]. During this period only a partial power condition exists because the
friction elements are slipping.
This extended slipping time prevents the inertial energy from being efficiently utilized. It
is lost in the form of heat on the clutches and bands, instead of being utilized for forward
motion. Continually operating a stock automatic at full throttle will cause early friction
element failure.

http://www.teleport.com/~txchange/transgo.htm , and will be
discussed in more detail, infra.
Serial Number 75/055,823
22
To get high performance and improved durability in an automatic, we must improve the
way it executes every shift.
Trans-Go re-programming achieves durability and performance.
So if you are willing to accept a faster shift, which will subtract some comfort, you
can restore full performance and durability. This is exactly what a Trans-Go Re-
Programming Kit does for you. It makes each shift faster and more efficient. As a
result, durability of the transmission is immediately doubled.
Re-Programming Goal: Make the shift faster without losing precision.
The problem now becomes clear that what we need is re-programming that will
precisely control the complicated chain of events that occur during every shift and do
it in a far briefer span of time.
This is exactly what Trans-Go has accomplished. Trans-Go kits cut slipping time by more
than 70% (even more in the Competition version) and at the same time improve the quality
of the shifting action itself. [Ref to Figs 1 and 2 not shown herein]
The automatic with a re-programming kit installed now shifts fast enough to take
advantage of inertial energy from rotating mass, including the inertial energy from
the transmission itself. Notice also the higher speed recorded (C) as the curve leaves
the chart. In driving this conversion at full throttle a sudden forward lurch can be
felt when it shifts, very similar to a power-shifted 4-speed.
You get better control and back to low at any speed.
Trans-Go kits give you more complete gear control of your transmission. Most kits
offer Shift Command, a special feature of our re-programming that allows at any
speed! Trans-Go kits also retain fully automatic shifting in the “D” Position.
As the elapsed time of shifting is decreased, the life of the transmission friction
materials is increased.
Installing a Trans-Go Re-Programming kit will at least double the life of the friction
materials in the transmission. In many heavy-duty applications, a Trans-Go kit has made
the difference between a few months service without repair and several years.
The shorter shift time allows the friction elements and gears far less time to wear
themselves out. The useful life of the friction elements in a transmission is directly related
to the amount of slipping that is allowed to occur during shifts.
Slipping converts useful energy to heat on the surface of the clutches and bands. This heat
transforms the friction material to ash, which polishes its mating element, causing further
slipping, heat and deterioration of the friction elements.
The gears receive less wear, too. A slow shift causes them to be partially engaged for a
longer period during the gear changing process, resulting in unnecessary heat, wear and
power loss.
Serial Number 75/055,823
23
ARE QUICK SHIFTS ALL THAT MATTER?
Not by a long way. We have seen what can be gained in durability and performance
with quicker shifts. Overlap is also extremely important. Overlap is a condition
caused by applying a gear before the previous gear has been released.
Excessive overlap as seen in the Fig. 3 converts engine horsepower into damaging
heat and causes clutch wear, band wear, shift delays, short oil life, and increased
gasoline usage.
Factory programming includes an excessive amount of overlap.
This is done purely for smoothness. Overlap causes delayed shifts. Overlap is the
main cause of shift delay, or hesitation when shifting manually.
Excessive Overlap is eliminated with Trans-Go Re-Programming. The difference is felt
immediately and there are substantial increases in performance, durability and fuel
economy. 11
Applicant’s patent: Given the importance to this
factual determination of understanding the underlying
technology, the Examining Attorney has made of record a
patent supporting applicant’s “Reprogramming Kit,”
summarized in one section of the patent as follows:
DESCRIPTION OF THE BEST MODES FOR CARRYING OUT THE
INVENTION
The present invention is directed to improvements and
modifications to existing “factory installed” automotive
transmissions, and in particular the transmissions known
as General Motors Corporation 700-2 and 700-3. The
objects of the present invention include modification of
the structure, hydraulic circuitry, interrelationship of
structure and fluid flow patterns through the hydraulic
circuitry of the original automotive transmissions for
the purpose of 1). enabling driver of the vehicle to
select any available ratio at any time, and 2). to
control the fluid flow through the hydraulic circuitry in
order to produce quick “apply and releases.” The

11 Applicant has not tried to distance itself from these uses by
one of its distributors. In fact, applicant has used this
material in support of its own position of non-genericness.
Serial Number 75/055,823
24
modifications to the original operation and hydraulic
circuitry of the "factory installed" automotive
transmissions are made by removing structure including
original valves, adding structure including new valves,
adding new hydraulic circuits to the overall circuitry,
discontinuing use of existing circuits by plugging; and
modifying the flow through existing hydraulic circuitry
by enlarging or reducing the size of fluid flow orifices
and adjusting existing spring and pressure values.
U.S. Patent No. 5,540,628, issued to Gilbert Younger,
Applicant’s President, on July 30, 1996.12
Summary of relevant technology: One learns from
the above web site, the entire text of the above
referenced patent, and the specimens of record in this
trademark application file, that applicant’s
“reprogramming kit” actually has two purposes: one is
to permit the driver to control more precisely the gear
ratios on a manual transmission, and the second is to
modify the operation of an automatic transmission.
However, much of the record emphasizes this latter
function -– as applied solely to automatic
transmissions.
Specifically, one learns from the record that
automatic transmissions have transmission fluid pumped
through a series of passages under pressures up to 300

12 Unlike some of the other evidentiary submissions herein, I find
this patent to be most helpful in understanding the nature of
applicant’s improvements directed to valve body kits. Hence, it
is of no moment that the patent specifications carefully avoid
Serial Number 75/055,823
25
psi and directed via valves and solenoids to activate
various clutches and bands on planetary gear-sets. The
gear-sets are engaged and disengaged to provide various
ratios that multiply the input torque passed to the
transmission through a torque converter, designed to
turn the drive-shaft and hence to move the vehicle.
Accordingly, as seen in the claims of the patented
device, which is of record, applicant’s kit is designed
to permit the automobile mechanic to modify the
factory-installed transmission of certain automobiles
using the after-market parts listed in the
identification of goods.
One learns that the automatic transmission for an
automobile, as originally designed and shipped from the
factory, is set up to shift smoothly from one gear to
the next. According to applicant’s patent, this is
done with excessive amounts of “overlap.” Overlap
refers to a design ensuring that the transmission
begins to apply the new gear before the previous gear
has been released. In a sense, as designed at the
factory, the stock transmission has been “programmed”
to shift in this manner for maximum comfort.

usage of the terms “reprogramming” or “reprogramming kit” in a
generic manner.
Serial Number 75/055,823
26
By eliminating excessive overlap, applicant’s kit
provides for a quicker shift while reducing damaging
heat. The biggest concern for high performance
transmissions is building up too much heat in the
transmission fluid, which can considerably reduce the
life of a transmission. This invention is designed to
change the pre-existing hydraulic circuits by modifying
the flow of transmission fluid. Hence, in the same
sense that the factory transmission has been
“programmed,” with this shift modification kit, the
stock transmission has now been “reprogrammed.”
The target audience for these goods is made up of
those drivers who want to improve the performance of
their automotive transmissions. Hence, applicant is
competing in the area of after-market components for
one’s automatic transmission, which components are
designed to reduce the transmission’s operating
temperature, change shift points, reduce engine wear,
and improve the performance of the vehicle when it is
being used hard.

Serial Number 75/055,823
27
Applicant provides heavy-duty transmission parts
for the person towing heavy loads.13 For example, when
a truck is towing a recreational vehicle up a long
hill, it can cause extreme slippage in the truck
transmission, which in turn causes high transmission
fluid temperatures. Eventually, prolonged stress could
damage the transmission. Similarly, performance
enthusiasts and those driving police cars or taxicabs
are willing to sacrifice smoothness by installing a kit
promising a quicker, more solid shift.
Because applicant’s product changes the route of
transmission fluid through the transmission, it requires the
services of an experienced mechanic14 who must pull the
“trans” apart before installing these exacting components.
Since the time of the introduction of the automatic
transmission until recent years, such a complicated valve
body modification was the route the person towing heavy
loads, the car enthusiast, or those in the taxi industry,
for example, would have pursued. Certainly, when applicant

13 The specimens of record show outline designs of eight vehicles,
titled “competition,” “service vehicle,” “police,” “taxi,” “muscle
cars,” “towing,” “campers,” and “rough duty.”
14 From the specimens of record: “This is a racing product for
professional installation ONLY. It is not a “do-it-your-self”
product. It’s for the experienced, full-time, professional
transmission mechanic who is already completely familiar with 700
trans repair.”
Serial Number 75/055,823
28
began using this designation in 1970, automatic
transmissions were not electronically controlled and shift
modifications were totally mechanical. On the other hand,
the record herein speaks to the mechanical complexity of
automatic transmissions. In fact, automatic transmissions
may be thought of as being hydraulically-activated, gear-
selection “computers.”
Articles of general circulation: The Trademark
Examining Attorney has placed various entries from the
LEXIS/NEXIS data base into the record, excerpts of which are
reproduced below (emphasis supplied):
“…using GM internal parts and a Mr. Gasket Tough Shift-3™
kit to reprogram the valve body. The kit allows you
three optional programs, from slightly firm shifts to
neck-snapping drag racing performance.” (Hot Rod,
October 1984).
“Dinan reprograms the shift points on the automatic,
raising the stall speed of the torque converter to match
the revs where the turbos come on stream. The result is
virtual elimination of lag.” (AutoWeek, January 7,
1991).
“Reprogrammed valve-body hardware for Ford's A10
automatic trans (to shorten slippage time at the shift
points) rounds out the basic Dyno Tunes package.”
(AutoWeek, May 27, 1991).
“First, B&M added a larger 30-spline input shaft, a
reprogrammed valve body for crisper shifts, a Corvette
servo assembly, a superior 2-4 band, a heavy-duty
overdrive sprag assembly …” (Hot Rod, December 1995).
“In either mode, it feels like a drag racer’s
transmission, having been reprogrammed so that upshifts
are snappier; in fact, from first to second it’s a double
snap – your head doesn’t just snap back, it jerks forward
first…” (AutoWeek, p. 18, September 16, 1996).
Serial Number 75/055,823
29
“The transmission has been reprogrammed to upshift less
readily while driving up and down mountain roads…” (The
Washington Times, p. E3, October 10, 1997).
“Either a five speed manual or four-speed automatic
transmission is available, with the automatic
reprogrammed for smoother shifts.” (Bergen County
Record, p. C12, November 1, 1997).
“… The four-speed automatic gains a fluid cooler, which
allows the engineers to reprogram it for quicker shifts.
Average shift time has been halved from a lethargic 1.6
seconds to 0.8. Shifts are smoother too, …” (The
Toronto Star, p. G8, November 15, 1997).
Note that while the last four LEXIS/NEXIS entries above
continued to use the terminology of “reprogramming”
automatic transmissions in a broad (or “generic”) sense,
they no longer mention valve body hardware modifications.
In fact, in the following LEXIS/NEXIS stories, the excerpts
explicitly reflect the fact that today's automatic
transmissions are at least partially electronically
controlled:
“…The four speed automatic transmission optimizes the
engine’s power, electronically reprogramming the shift
points for uphill and downhill driving.” (Fresno Bee, p.
D2, November 26, 1994).
“…BMW’s 5-speed transmission, meanwhile, has been
reprogrammed for 1996 and uses an array of electronics
that ensure swift, precise shifts as the V-8 engine in
the 540i accelerates or de-accelerates.” (Chicago
Tribune, Transportation, p. 1, April 28, 1996).
“The electronically operated, four-speed automatic
transmission has been reprogrammed for cleaner, faster
shifts, though I miss the old gated shifter that seemed
to invite an aggressive hand on the lever.” (The
Spokesman-Review, p. D1, April 26, 1997).
“…Using sensors, including the lateral acceleration
sensor in StabiliTrak, it can reprogram the transmission
Serial Number 75/055,823
30
to react like a manual gear box if the car is driven
hard.” (Automotive Industries, No. 9, Vol. 177, p. 82,
September 1997).
In reviewing these entries from the LEXIS/NEXIS
database, one may note that advances in automobile
technologies have changed much of the “transmission
reprogramming” scenario of the sixties and seventies, but
interestingly, the same terminology has continued.
Discussion of Genericness
The word “Reprogramming”: Applicant argues that the
Trademark Examining Attorney has failed to present evidence
that the primary significance of the word “reprogramming”
would be recognized by the relevant consuming public as the
“most pertinent and individually generic” term applicable to
applicant's goods. However, I agree with the Examining
Attorney that the most compelling evidence that the word
“reprogramming” is generic when used in conjunction with the
applicant's goods comes from the applicant itself.15 The
information about applicant's goods posted on the Internet
demonstrates generic uses of the following terminology
throughout: “program,” “programming,” “re-program,” “re-
programmed” and “re-programming.” The reader of this site
is told right up front that TRANSGO “Kits instantly re-

15 Trademark Examining Attorney’s brief, p. 6, referring to
Transmission Exchange’s Internet site, shown supra.
Serial Number 75/055,823
31
program automatic transmissions…” One is taught that “the
most important improvement that can be made is to re-program
the Control Assemblies…” inasmuch as “…95% of shift
performance comes from programming.” While “Factory
programming achieves comfort…” because factory “…engineers
have been asked to program the shifting for smoothness and
comfort…,” “Trans-Go re-programming achieves durability and
performance.” Hence, Transgo helps the car owner to achieve
his “Re-Programming Goal.” The person visiting this web
site is told about the advantages of the “…automatic with a
re-programming kit installed…” In fact, “[m]ost kits offer
Shift Command, a special feature of our re-programming…”
Later on, one learns that “[f]actory programming includes an
excessive amount of overlap… ,” but fortunately “[e]xcessive
Overlap is eliminated with Trans-Go Re-Programming.”
The majority notes correctly that at various points
throughout this text, the term “re-program” seems to be used
interchangeably with the terms “re-calibrate” or “modify.”
To the extent applicant concedes that “shift recalibration
kit” or “modification kit” is generic, it seems to follow
logically from this web page that “reprogramming kit” is
equally generic.

Serial Number 75/055,823
32
I also find that the LEXIS/NEXIS entries (spanning
more than a dozen years) demonstrate that the general
media has indeed used the “reprogramming” term to refer
to this type of modification to automatic
transmissions. The earliest stories refer specifically
to mechanical changes in hard parts of the valve body.
By contrast, the most recent stories clearly reference
electronic modifications. However, whether this is
achieved through a modification to the hard parts of
the transmission or through after-market changes in the
electronic controls, all have much the same result for
the driver –- faster shifts, longer wear, added
performance and/or improved heavy-duty driving.
Furthermore, any of these changes are understood by
those knowledgeable about automobiles as a
“reprogramming” of the transmission.
Finally, one should not be confused by the recent
intersection of computer technology and automatic
transmissions. Specifically, the fact that the concept
of “programming” or “re-programming” may well fit
another meaning (i.e., of modifying computer software
generally, or even specifically modifying the computer
software running the transmission electronic control
Serial Number 75/055,823
33
units on late model cars) reflects parallel but
slightly different uses of the same terminology.16
The word “Kit”: The applicant's identification of
goods states that its goods include “valve body kits.” The
identification of goods confirms that several of its
products are “sold as a unit.” The web pages and the
specimens of record demonstrate the prevalence of “kits” for
such complex after-market items (e.g., “valve body kits,”
“valve Body repair kits,” “transmission modification kits,”
“valve body rebuilding kits,” “valve body calibration (or
recalibration) kits,” “transmission reprogramming kits,”
“valve body reprogramming kits”). The Trademark Examining
Attorney has shown from a dictionary definition that a “Kit”
is “a packaged set of related materials.” Indeed, the
majority seems to agree that there is no more apt, generic
designation for these products than the word “kit” or
“kits.”
The combined term “Reprogramming Kit”: Citing to In re
Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987), the
Trademark Examining Attorney takes the position that

16 Viz. applicant’s request for reconsideration submitted
January 13, 1997: “[T]he mark REPROGRAMMING KIT was adopted by
applicant in 1970 … to provide … [a] general connotation and
association between applicant’s goods and “high tech” or “computer
technology” (which was then at its early stages of development).
Automotive systems, including transmissions [in 1970], were not
controlled by computers…”
Serial Number 75/055,823
34
“reprogramming kit” is merely a combination of generic terms
that has no separate or distinct commercial impression apart
from what one who understands the individual meanings of the
terms would expect. As such, she argues that the proposed
mark is incapable of serving as a source identifier and is
itself generic.17 Applicant argues in turn that none of the
evidence made of record by the Examining Attorney shows the
use of the exact phraseology “Reprogramming Kit” in
conjunction with automotive transmission valve body kits,
that these excerpts do not support the conclusions the
Trademark Examining Attorney derives from them, and that
unlike the facts in Gould, this combination of generic terms
results in a new, protectable, composite mark.
However, I agree once again with the Trademark
Examining Attorney. The above uses from the web page
and those excerpts from the LEXIS/NEXIS stories are
highly persuasive evidence of the genericness of the
matter sought to be registered. In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). As the Trademark Examining Attorney contends:
… in Gould Paper, the Court of Appeals for the Federal
Circuit held that ‘the PTO has satisfied its evidentiary
burden if … it produces evidence including dictionary
definitions that the separate words joined to form a
compound have a meaning identical to the meaning common

17 Trademark Examining Attorney’s brief, p. 4.
Serial Number 75/055,823
35
usage would ascribe to those words as a compound.’ The
evidence of record satisfies that evidentiary burden.
A “KIT” is “a packaged set of related materials.” See
the excerpt from Webster’s II New Riverside University
Dictionary (1994 ed.) attached to the August 5, 1996
Office action. The applicant's identification of goods
affirmatively states that its goods include “valve body
kits,” and that several of its goods are “sold as a
unit.”
To “PROGRAM” something means “to insert, or encode
specific operating instructions into (a machine or
apparatus).” See the excerpt from the Random House
Unabridged Dictionary (2d ed. 1993) attached to the May
22, 1997 Office action. The addition of the prefix “RE”
to “PROGRAM” simply means to program again or anew.
Moreover, “REPROGRAMMING” has meaning in the
applicant's industry. Attached to the August 5, 1996 and
the February 10, 1998 Office actions are representative
article excerpts from the examining attorney's search of
the NEXIS computerized database which show the
significance of “REPROGRAMMING” when used in conjunction
with the applicant's goods - namely, that the applicant's
goods are used to “reprogram” the valve bodies contained
in a vehicle's transmission. (Trademark Examining
Attorney’s brief, pp. 4 - 5).
While the dictionary definitions alone would not meet
the rather heavy burden placed on the Patent and Trademark
Office to demonstrate genericness, I find that when they are
combined with the balance of the evidence in the file, they
are certainly supportive of this interpretation.
Turning to the usage by applicant on its specimens of
record, I note the contention of the Trademark Examining
Attorney as follows:
Moreover, the use of the proposed mark on the
specimens of record is such that the relevant public
would perceive “TRANSGO” as a trademark for the
applicant's product and view REPROGRAMMING KIT™" as
identifying what the goods are. In re Leatherman Tool
Serial Number 75/055,823
36
Group, supra, at 1450. The applicant’s use of the
trademark symbol (the “”) with REPROGRAMMING KIT cannot
make an otherwise unregistrable term a trademark.
(Trademark Examining Attorney’s brief, p. 7).
Applicant counters with the following argument:
[T]he Examining Attorney concludes that although the
term “REPROGRAMMING KIT” is designated with the informal
trademark notice “” in the specimens of use filed by
Applicant in the present trademark application, the
relevant public would perceive Applicant's registered
trademark “TRANSGO” as the trademark for Applicant's
product and view the “REPROGRAMMING KIT” as identifying
what the goods are… [I]t is well established that a
product can be designated with more than a single
trademark, and there is no prohibition against Applicant
using both of its trademarks "TRANSGO" and "REPROGRAMMING
KIT" to designate the source of origin of its goods.
(Applicant’s reply brief, p. 8).
Applicant is correct in that a single product can bear
more than one trademark (e.g., many consumer items may carry
both a house mark and a product mark). However, in
reviewing the specimens of record, I again find the
arguments of the Trademark Examining Attorney most
compelling.
In fact, the specimens reinforce the reality of the
marketplace for high performance, after-market goods. I
would posit the notion that automobile mechanics as well as
grown boys having their grown-up toys are fairly
sophisticated about their trademarks. Just as an auto
enthusiast might readily disclose that the vehicle sports a
Hard Dog® roll bar, that it accelerates quickly due to its
Jackson Racing® supercharger and high-flow K&N® air filter,
Serial Number 75/055,823
37
and it corners nicely with Koni® adjustable shocks and
Michelin® tires, he would refer to this particular
performance product as a Transgo® reprogramming kit. The
specimens, like the web page, only reinforce this usage of a
manufacturer’s house mark followed by the product
designation, or generic name.
H. Marvin Ginn Question #1: In the language of H.
Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., supra, what is the precise genus of applicant’s
transmission components? In the course of reviewing the
evidence of this file, we have seen usage of a variety of
terms such as “valve body kit,” “valve body rebuilding kit,”
“valve body repair kit,” “transmission modification kit,”
“valve body calibration (or re-calibration) kit,” and it
seems, “transmission (or valve body) reprogramming kit.”
As the Trademark Examining Attorney points out:
The applicant also argues that “REPROGRAMMING KIT”
is not a generic name for its goods because other
terminology is accepted as the generic/descriptive
name(s) for the goods. "There is usually no one, single
and exclusive generic name for a product. Any product
may have many generic designations. Any one of those is
incapable of trademark significance." 2 J. Thomas
McCarthy, Trademarks and Unfair Competition. §12:9 (4th
ed. 1996). The fact that the applicant’s goods are also
called “valve body kits,” “transmission modification
kits,” and “recalibration kits” does not preclude the
term “REPROGRAMMING KITS” from also being a generic name
for the applicant's goods.
"All of the generic names for a product belong in
the public domain." In re Sun Oil Company, 426 F.2d 401,
Serial Number 75/055,823
38
165 USPQ 718, 719 (CCPA 1970) [emphasis in original].
(Trademark Examining Attorney’s brief, p. 7).
H. Marvin Ginn Question #2: When reviewing the listing
above of the variety of generic names for these goods, one
will note that it actually answers the second H. Marvin Ginn
question in the affirmative: Yes, the term sought to be
registered, transmission (or valve body) “reprogramming
kit,” is readily understood by the relevant public primarily
to refer to that genus of goods.
No evidence of third-party usage: The record shows
that this product is clearly not a recent entry into the
world of after-market automotive kits. Hence, I struggle
with the fact that although this type of product has been
available in the marketplace for almost thirty years, the
Trademark Examining Attorney was evidently unable to find a
single instance of third-party usage of this exact
phraseology.18 However, the record does reflect the fact

18 Other than the previously-noted web site (see footnote 10), the
record shows no reliance on other information from the Internet.
As anyone who surfs the Web must acknowledge, the Internet
contains a wealth of information of varying reliability and
transience. However, this information could be valuable in
determining the registrability of a mark, and Examining Attorneys
would be remiss in not utilizing this economical and efficient
resource in appropriate ways. Especially in a case such as this
one, knowing exactly how auto parts vendors, transmission
specialists, car enthusiasts, et al., use a term like
“reprogramming kit,” would be most helpful to this tribunal.
Additionally, unlike the prohibitiveness of conducting a formal
survey prior to an ex parte appeal, an Internet search in a case
such as this one is certainly within the constraints imposed upon
the Examining Attorneys. Hence, I anticipate we will see an
Serial Number 75/055,823
39
that applicant has threatened legal action against
competitors who have used this generic (or according to the
majority, “non-distinctive” and “highly descriptive”)
terminology.19 The factors cited above may well explain why
smaller competitors have chosen to avoid using the
designation “Reprogramming Kit.” Nonetheless, given that
the Trademark Examining Attorney has established that
applicant’s “kit” is designed for the “reprogramming” of an
automatic transmission, I conclude that “reprogramming kit”
is one of the terms the car enthusiasts would use to refer
to this product, irrespective of its source. Similarly,
competitors should also be able to use this generic
terminology.
As to the Trademark Examining Attorney’s failure to
find third-party uses, it has also long been held that a
generic term may not be exclusively appropriated as a
trademark, regardless of how long applicant fortuitously may

accelerated usage of this resource. In this regard, it may be
appropriate to expect future guidelines from the policy-makers
within the Office, to ensure that Trademark Examining Attorneys
using the Internet to support refusals during ex parte examination
are providing applicants with adequate information to locate the
documents retrieved and to show the details of the search as
conducted.
19 Applicant has identified for the record several past incidents
in which competitors have ceased their use of this matter in
response to applicant’s demands that they cease and desist such
usage.
Serial Number 75/055,823
40
have enjoyed the exclusive use thereof in trade. See
Kellogg Company v. National Biscuit Co., 305 U.S. 111, 83
L.Ed. 73, 39 USPQ 296 (1938) [“Shredded Wheat” is generic];
and Schulmerich Electronics, Inc. v. J. C. Deagan, Inc., 202
F2d 772, 97 USPQ 141 (CCPA 1953) [“Carillonic Bells” is
generic for “electrically-operated carillons or chimes”].
What is left of Gould after American Fertility Society?
To the extent that the majority questions the Trademark
Examining Attorney’s reliance on the logic of In re Gould,20
I conclude that the instant case still falls within the
factual parameters of In re Gould –- even though this
“compound” is not one where the two words are physically
joined. The Trademark Examining Attorney has demonstrated
that the relevant public understands the individual terms to
be generic for this type of product and that the relevant
public understands the joining of the individual terms into
one compound word (or term) to lend no additional meaning to
the term. Hence, given the facts of this case, the
Examining Attorney has demonstrated that the relevant public
would understand this “compound term” to refer primarily to
the genus of goods or services described by the individual
terms.
Serial Number 75/055,823
41
I am indeed aware of the recent decision of the Court
of Appeals for the Federal Circuit in the case of In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999).21 The Court held that the Board (in its
earlier decision affirming a disclaimer requirement for the
allegedly generic phrase “SOCIETY FOR REPRODUCTIVE
MEDICINE”) had misapplied the “correct legal test for
genericness of phrases, as set forth in H. Marvin Ginn…”
The American Fertility Society Court explained that the
legal test from Gould22 is applicable only to marks comprised
of “compound terms” such as “screenwipe.” The Court in
American Fertility Society stated: “Gould is limited, on
its facts, language, and holding, to compound terms formed
by the union of words. It is legally erroneous to attempt
to apply the [Gould test] to phrases consisting of multiple

20 And of course, the Trademark Examining Attorney’s brief of
January 19, 1999 preceded the issuance of the Court’s decision in
American Fertility Society.
21 The entire mark for which registration was sought in American
Fertility Society was “AMERICAN SOCIETY FOR REPRODUCTIVE
MEDICINE.” The appeal was over whether the lesser phrase “SOCIETY
FOR REPRODUCTIVE MEDICINE” must be disclaimed as generic.
Although the individual terms “SOCIETY” and “REPRODUCTIVE
MEDICINE” were each conceded to be generic, the Court found that
the phrase “SOCIETY FOR REPRODUCTIVE MEDICINE” was not generic].
22 That is, permitting the Office to satisfy its evidentiary
burden demonstrating genericness by producing “…evidence including
dictionary definitions that the separate words joined to form a
compound have a meaning [to the relevant public] identical to the
meaning common usage would ascribe to those words as a compound…
Gould, supra, 5 USPQ2d at 1111-12.
Serial Number 75/055,823
42
terms, which are not ‘joined’ in any sense other than
appearing as a phrase.” In re American Fertility, 51 USPQ2d
at 1837. The Court remanded the case to the Board for
…evidence of ‘the genus of goods or services at issue’
and the understanding by the general public that the mark
refers primarily to ‘that genus of goods or services.’ …
The Board must now apply the Marvin Ginn test to the
phrase as a whole, and not focus only on the individual
terms. Id.
However, the phrase at issue in the case of In re
American Fertility Society involved “multiple” terms –
certainly more than two words. In its discussion of the
proper tests to be used in determining genericness, the
American Fertility Society Court distinguishes between
“phrase” marks23 and “compound” word (or “term”) marks.
Arguably, the holding and analysis of that case is not
readily applicable in the context of determining the
genericness of a term consisting of merely two words.
Hence, my genericness finding in this case is consistent
with the Court’s teaching of In re American Fertility
Society. As between a “phrase” mark (e.g., “Society For
Reproductive Medicine”) and a “compound” mark (e.g.,

23 Note that four words at issue in this case comprise the phrase
“SOCIETY FOR REPRODUCTIVE MEDICINE.” The admittedly generic terms
“society” and “reproductive medicine” are separated by the
preposition, “for.” As contrasted with “SCREENWIPE” or the matter
in the instant case, this distinction in syntax seems to be a
significant factor in the Court’s decision in American Fertility
Society.
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“screenwipe” or the Gould Court’s hypothetical, “screen
wipe” 24), the term “reprogramming kit” is more akin to the
“compound” mark. “Reprogramming kit” consists of two
generic, constituent elements, joined to form a new term.
Clearly, the Gould Court demonstrates that the results under
the Lanham Act in such a case should not turn on whether
this “combined” form does (“reprogramming kit,” or “screen
wipe”) or does not (“screenwipe”) have a space separating
the operative terms or words. Therefore, in attempting to
establish that a combination of two words into a new term is
generic under the two-part test of Ginn, supra, the Office
should be entitled to the “additional assistance” provided
by Gould in cases involving these “compound marks,” and
should not be required to present evidence that the compound
term, per se, has been used generically by others.
To the extent that In re American Fertility Society,
supra, explicitly restricts the fact patterns under which
the “additional assistance” of the Gould Court’s logic can
be invoked by a Trademark Examining Attorney, or a Judge of
this Board, I find that applicant’s mark should still be

24 The Gould Court explicitly states that the same result would
follow if that mark had been presented as two words (e.g., “SCREEN
WIPE) inasmuch as the presence or absence of a space between the
words was not determinative of its status as a “compound word.”
See Gould, 5 USPQ2d at 1112.
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44
deemed to be generic under the analysis set forth in that
case.
For all of these reasons, I would affirm the refusal of
the Examining Attorney on the issue of genericness.
D. E. Bucher
Administrative Trademark
Judge, Trademark Trial and
Appeal Board