Corning Tropel Corp.

Trademark Trial and Appeal Board

May 13, 2003

No. 76224870 (T.T.A.B. May. 13, 2003)

Mailed: May 13, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Corning Tropel Corporation
________
Serial No. 76/224,870
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Paul R. A. Burke for Corning Tropel Corporation.
Susan Stiglitz, Trademark Examining Attorney, Law Office
103 (Dan Vavonese, Acting Managing Attorney).
_______
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Corning Tropel Corporation seeks to register the mark
shown below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/224,870
2
for “catadioptric micro-objective lenses using deep UV
radiation and having submicrometer resolution and high
numerical apertures for microlithography.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark,
when used in connection with applicant’s goods, is merely
descriptive thereof. When the refusal was made final,
applicant appealed. Applicant and the Examining Attorney
have filed briefs on the case.
The Examining Attorney contends that “the [mark] is
merely descriptive of the applicant’s goods because its
component parts refer immediately to characteristics of the
goods, which are that the goods consist of catadioptric
micro-objective lenses used in microlithography. (Brief,
p. 2). The Examining Attorney maintains that applicant has
conceded the descriptiveness of the mark by virtue of the
following statement on page 1 of applicant’s application:
The mark consists of the Greek letter µ (Mu)
together with the word CAT, but will probably
be recognized and pronounced by those to whom
the products will be sold as “MICRO CAT”.
1 Application Serial No. 76/224,870, filed March 16, 2001,
alleging first use anywhere and first use in commerce as least as
early as June 30, 2000.
Ser No. 76/224,870
3
In support of the refusal, the Examining Attorney submitted
an excerpt from The Random House Webster’s Unabridged
Dictionary (2001) which defines “mu” as: “1. the 12th letter
of the Greek alphabet”, and “3. micron”; an Internet
printout of “Metric prefixes” which lists “(mu)” as: “micro
(Latin micro or Greek mikros, ‘small’)”; and an excerpt
from the Academic Press Dictionary of Science and
Technology wherein “catadioptric” is defined as:
Optics, describing an optical system that
operates by both reflection and refraction,
used to reduce aberrations in telescopes.
Thus, catadioptric telescopes, catadioptric
imaging system.
Further, the Examining Attorney made of record several
Internet printouts and an excerpt from the NEXIS database
which show use of the term “cat” to refer to catadioptric
lenses in telescopes and shooting scopes. The following
are examples:
The scopes using mirrors are often referred to
as catadioptric scopes (“cat” for short) and they
tend to be shorter and thicker in diameter than
scopes using prisms. You will see cat scopes
toted by a handful of birders.
(The Boston Globe, April 17, 1997); and
Most of the mirror scopes you will see in the
field are actually compound telescopes,
catadioptrics (Cats for short), which use a
combination of lenses and mirrors to form the
image.
(http://betterviewdesired.com/Cats.html)
Ser No. 76/224,870
4
Finally, with her appeal brief, the Examining Attorney
submitted two additional definitions. The first is an
excerpt from Merriam-Webster Dictionary wherein
“catadioptric” is defined as “belonging to, provided by, or
involving both the reflection and refraction of light;” and
the second is an excerpt from The American Heritage
Dictionary of the English Language (4th ed. 2000) wherein
“catadioptric” is defined as: “Of or relating to an optical
system that uses both reflective and refractive optical
devices.”2
Applicant, in urging reversal of the refusal to
register, argues that “[a]pplicant will agree that the
combined term µCAT is suggestive of certain aspects of its
goods including both its applicability for microlithography
and the micro-objective feature of the goods, however,
because the mark suggests certain aspects [of applicant’s
goods] that does not mean it is merely descriptive of the
goods.” (Brief, p. 6). According to applicant, at most,
“the mark implies a catadioptric lens and a small
dimension,” however, “[t]his is far too little to describe
to an interested person the nature or purpose of the lens.”
2 We take judicial notice of these definitions as requested by
the Examining Attorney. See University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc. 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 76/224,870
5
(Response, p. 2.) Finally, applicant argues that the
Examining Attorney’s evidence shows that CAT is recognized
as an abbreviation for the word “catadioptric” as applied
to telescopes, but the evidence does not show that CAT has
any meaning or is used in the microlithography trade.
Applicant acknowledges that persons with a background in
optics would possibly recognize a “crossover from
terminology in the field of telescopes to cameras to
applications in microlithography,” but argues that the
Examining Attorney has not demonstrated any such crossover
or recognition by persons in applicant’s field which
involves the inspection process used in the manufacturing
of semiconductor/electronic components.3
A mark is merely descriptive if it “forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods.” Abercrombie & Fitch Company
v. Hunting World, Incorporated, 537 F.2d 4, 189 USPQ 759,
765 (2nd Circuit 1976) (emphasis added). See also, In re
Abcor Development Corporation, 616 F.2d 525, 200 USPQ 215
(CCPA 1978). Moreover, in order to be merely descriptive,
the mark must immediately convey information as to the
3 We note that applicant offered to disclaim the term CAT apart
from the mark as shown, but the Examining Attorney found that
such a disclaimer was inappropriate because the mark is unitary
in nature.
Ser No. 76/224,870
6
ingredients, qualities or characteristics of the goods or
services with a “degree of particularity.” See In re TMS
Corporation of the Americas, 200 USPQ 57, 59 (TTAB 1978).
Further, it is well established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
In this case, we find the Examining Attorney has not
established that, when applied to applicant’s goods, µCAT
immediately describes, without conjecture or speculation,
significant characteristics of the goods. We believe that
Ser No. 76/224,870
7
some cogitation or mental processing would be required for
prospective customers of applicant’s goods to readily
perceive the significance of µCAT as it pertains to
catadioptric micro-objective lenses using deep UV radiation
and having submicrometer resolution and high numerical
apertures for microlithography. With respect to the
Examining Attorney’s contention that applicant has conceded
that the mark is merely descriptive, we disagree.
Although, as applicant acknowledges, persons encountering
the µCAT mark may well “recognize” or pronounce it as MICRO
CAT, this does not mean they would immediately understand
the precise nature of applicant’s lenses.
Also, as noted by applicant, absent from this record
is any evidence of use of the term CAT by others to refer
to lenses in the microlithography field.
Finally, we recognize that we must resolve whatever
doubt we may have regarding the merely descriptive
character of the mark in favor of applicant and the mark
should be published for opposition. See In re Rank
Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases
cited therein.
Decision: The refusal to register under Section
2(e)(1) of the Act is reversed.