Hunter Engineering Company

Trademark Trial and Appeal Board

Sep 11, 2014

No. 85593757 (T.T.A.B. Sep. 11, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: September 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hunter Engineering Company
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Serial No. 85593757
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Lionel L. Lucchesi of Polster, Lieder, Woodruff & Lucchesi, L.C.,
for Hunter Engineer Company
Christopher Law, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Bucher, Zervas and Ritchie, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Hunter Engineering Company (“applicant”) seeks registration on the Principal
Register of ECAL (in standard characters) for “Automated systems, namely, micro-
processor based hardware and software used to monitor the status of and self-
calibrate equipment, namely, wheel balancers for balancing the wheels of land
vehicles,” in International Class 9.1

1 Application Serial No. 85593757 was filed on April 10, 2012, based on an
allegation of first use and first use in commerce of March 15, 2012.
Serial No. 85593757
2
The Trademark Examining Attorney has refused registration of applicant’s
proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
having determined that “ecal” describes a feature of Applicant’s goods.
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Evidentiary Issue
Before proceeding to the merits of the refusal, we address the Examining
Attorney’s evidentiary objections. Specifically, the Examining Attorney objects to
consideration of (i) Google search results for the term “ecal,” and (ii) a U.S. patent
application, both of which Applicant submitted with its brief. Trademark Rule
2.142(d) provides that the record should be complete prior to the filing of an appeal:
The record in the application should be complete prior to the
filing of an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed. After an appeal
is filed, if the appellant or the examiner desires to introduce additional
evidence, the appellant or the examiner may request the Board to
suspend the appeal and to remand the application for further
examination.

We will not treat the evidence attached to Applicant’s brief as being of record if
such evidence was not made of record during the prosecution of the application.
Because Applicant submitted the Google search results with its request for
reconsideration, the Examining Attorney’s objection to the search results is
overruled. With regard to the patent application, because it was first submitted
with Applicant’s brief, the Examining Attorney’s objection is well-taken and is
Serial No. 85593757
3
sustained. We have not considered the patent application and any arguments which
refer to the patent application. In addition, Applicant’s request that we take judicial
notice of the patent application is denied – the Board typically does not take judicial
notice of USPTO records. See Beech Aircraft Corp. v. Lightning Aircraft Co., 1
USPQ2d 1290, 1293 (TTAB 1986) (judicial notice not taken of files of applications
and/or registrations, where no copies thereof are filed, and where they are not the
subject of the proceeding); TBMP § 704.12(a) (June 2014).
Applicable Law
A term is merely descriptive if it immediately conveys knowledge of a significant
quality, characteristic, function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in relation to the goods for
which registration is sought and the context in which the term is used, not in the
abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, the issue is whether someone who knows what the goods are
will understand the mark to convey information about the goods. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services
Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp.,
226 UPSQ 365, 366 (TTAB 1985).
“On the other hand, if one must exercise mature thought or follow a multi-stage
reasoning process in order to determine what product or service characteristics the
Serial No. 85593757
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term indicates, the term is suggestive rather than merely descriptive.” In re Tennis
in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also, In re Shutts, 217
USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ
165, 166 (TTAB 1980).
Analysis
The Examining Attorney relies on the following evidence to show that ECAL is
merely descriptive of a feature of Applicant’s goods as an acronym for “electronic
calibration.”
• dictionary definitions of “ecal” as “electronic calibration,”
from Acronyms, Initialisms & Abbreviations Dictionary (33rd
ed. 2004); The American Heritage Abbreviations Dictionary
(2nd ed.); dictionary.com (referencing The American Heritage
Abbreviations Dictionary (3rd ed. 2005)); and all-
acronyms.com; and

• third-party uses of “ecal”, e.g.:

(a) In discussing the LeCroy SPARQ Signal Integrity
Network Analyzers for making “fully calibrated
measurements,” stating “[t]his enables
measurements to be made without multiple
connection steps and removes the need for
additional electronic calibration (ECAL) modules.”
Google cache of www.lecroy.com/sparq/;

(b) “Some of the technical innovations ATN brought to
the RF measurement would include invention of
Electronic Calibration (ECAL) for automatic
calibration of network analyzers.”
www.atesystems.com;

(c) “85062B 2-port MW Electronic Calibration (ECal)
Module, 1 to 26 GHz,” stating “The Agilent 85062B
MW electronic calibration module provides
repeatable, accurate measurements while bringing
convenience and simplicity to your daily calibration
routine.” www.home.agilent.com;
Serial No. 85593757
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(d) BX17 Weighting Indicator “designed for industrial
weighing applications,” “Features … Electronic
calibration (eCAL) ….” www.baykon.com;

(e) “The electronic calibration (ECal) modules consist of
connector-specific calibration standards that
measure the known devices of the system over the
frequency range of interest to detect systematic
errors.” Google cache of
http://abtechtest.com/calibration-services;

(f) “Use of electronic calibration (ECal) modules is the
simplest and fastest non-insertable calibration
method in existence and this is the recommended
calibration method.” http://www.skyworksinc.com;
and

(g) “Electronic Calibration (ECal) System. The electronic
calibration system consists of a control until and a
connector specific calibration module. ECal modules
are used as transfer standards. Electronic
calibrations have the fewest connections and least
operator interaction, while providing extremely
repeatable measurements.”
http://www.libertytest.com.

The Examining Attorney finds that “the term ECAL describes electronic
calibration technology and is commonly used to describe products that incorporate
electronic calibration or ECAL technologies”; and that “Applicant uses the applied-
for mark with an automated system that uses hardware and software to self-
calibrate wheel balancers. Therefore, the goods, as described by applicant, consist of
wheel balancers that are calibrated through electronic components, i.e., hardware
and software. … The above cited evidence and applicant all offer a product that
Serial No. 85593757
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incorporates an electronic component to calibrate a specific piece of machinery.”2
Indeed, Applicant’s website submitted into the record with the final Office action
shows:

Applicant’s wheel balancer, depicted and described above, includes a feature that
electronically and automatically calibrates the wheel balancer, and Applicant touts
this feature on its webpage.
The Examining Attorney’s evidence indeed demonstrates that “ecal” is a
recognized abbreviation for “electronic calibration” and that a feature of Applicant’s
“micro-processor based hardware and software used to monitor the status of and

2 Brief unnumbered pp. 8-9.
Serial No. 85593757
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self-calibrate equipment, namely, wheel balancers for balancing the wheels of land
vehicles” is electronic self-calibration. Indeed, as stated on Applicant’s webpage,
Applicant’s balancer offers electronic calibration or ecal. Other electronic devices or
machines, such as weighing devices, offer the same. Thus, the Examining Attorney
has established prima facie case that a feature of Applicant’s goods is electronic
calibration or ecal, and that the proposed mark is merely descriptive.
Applicant argues that the evidence demonstrates “a plurality of meaning[s]” of
“ecal” and hence “does not ‘convey any immediate or precise significance’ with
respect to Applicant’s goods”;3 that the acronym must be “substantially
synonymous” with the merely descriptive wording it represents; and that without
additional evidence, Applicant’s use of “ecal” is not understood to be substantially
synonymous with the descriptive wording it represents. In addition, Applicant
maintains:
A Google search of the term ecal results in over a million hits for
the term, for subjects ranging from schools to calorimeters. It is
relatively impossible to determine to what the term ecal relates unless
one employs a highly selective choice not expected of a relevant
consumer of wheel balancing machines. Without some hindsight
knowledge of Applicant’s product, the mark does not “immediately
convey” knowledge of the “ingredients, qualities or other
characteristics of the goods in connection with which it is used.”4

As stated above, mere descriptiveness is determined in relation to the goods for
which registration is sought and the context in which the term is used. In re Abcor
Development Corp., 200 USPQ at 218; In re Remacle, 66 USPQ2d at 1224. “That a

3 Brief at 4.
4 Brief at 5.
Serial No. 85593757
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term may have other meanings in different contexts is not controlling.” In re
Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)). Thus, that there are over a
million hits in Google search results for “ecal” in subjects unrelated to Applicant’s
goods “is not controlling.”
Additionally, Applicant argues that some imagination, thought or perception is
required to reach a conclusion concerning the nature of Applicant’s goods. According
to Applicant, the mark “may suggest the general nature of Applicant’s goods, i.e.,
accomplishing something by means of a computer, it does not immediately describe
Applicant’s goods, and in fact is mis[]-descriptive of the actual process, i.e.,
automatic calibration employed in those goods.”5 (Emphasis in original.) We are not
persuaded by this argument for two reasons. First, even if another term may be
used to identify the feature of the goods which the Examining Attorney maintains is
described by the term sought to be registered, that other term may also be used in a
descriptive manner; multiple terms may be used to describe the same feature.
Second, Applicant’s webpage states that Applicant’s goods “electronically and
automatically calibrate[] the balancer without any input from the operator.”
Applicant essentially represents that the balancer has the capability to undertake
two functions - electronic calibration and automatic calibration. This belies
Applicant’s representation that the common term for “the actual process” is
automatic calibration. When considered with the other evidence of record, i.e., that

5 Brief at 8-9.
Serial No. 85593757
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the term “electronic calibration” or “ecal” is used to identify the calibration feature
of other electromechanical devices, Applicant’s argument that there is another term
to describe the calibration feature of Applicant’s invention, and that “ecal” hence
does not “immediately” describe this feature, is untenable.
Applicant’s remaining arguments regarding competitor need and competitor use
have been considered but are not persuasive. Further, Applicant’s admonition to
resolve doubts in its favor is not applicable here – we have no doubt that the
proposed mark is merely descriptive of a feature of Applicant’s goods.
Thus, we find no error in the Examining Attorney’s determination that the
proposed mark is merely descriptive of a feature of the identified goods, and that
Applicant has not overcome the Examining Attorney’s prima facie case of mere
descriptiveness.
Decision: The refusal to register the proposed mark under Section 2(e)(1) of the
Trademark Act is affirmed.