Jose J. Granada

Trademark Trial and Appeal Board

May 2, 2005

No. 76317292 (T.T.A.B. May. 2, 2005)

5/2/2005

THIS OPINION IS NOT CITABLE
AS PRECENDENT OF
THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
____________

In re Jose J. Granada
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Serial No. 76317292
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Bernhard Kreten for Jose J. Granada.

Brian J. Pino, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
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Before Hanak, Quinn and Drost, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Jose J. Granada (applicant) seeks to register in typed
drawing form BONDGRAPH for “computer software programs in
the fields of engineering and computer science, namely,
computer software programs for use in the modeling and
simulation of dynamic systems that are comprised of
interrelated modules.” The application was filed on
September 9, 2001 with a claimed first use date of December
14, 1982.
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The Examining Attorney has refused registration on two
grounds. First, citing Section 2(e)(1) of the Trademark
Act, the Examining Attorney contends that applicant’s mark
is merely descriptive of applicant’s goods. In addition,
the Examining Attorney contends that applicant’s showing of
acquired distinctiveness for its mark pursuant to Section
2(f) is insufficient. Second, the Examining Attorney
contends that “applicant’s identification of goods is not
acceptable because it does not accurately describe the
goods and uses terminology that will not be understood by
the average person.” (Examining Attorney’s brief page 8).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
A mark is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of the relevant goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986).
Of course, it need hardly be said that the mere
descriptiveness of a mark is judged not in the abstract,
but rather is judged in relationship to the goods or
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3
services for which the mark is sought to be registered. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 216
(CCPA 1978) Finally, when goods or services are marketed
to professionals as opposed to the general public, it is
the views of the professionals who purchase or use the
goods or services that determines whether a mark is
descriptive or generic. Magic Wand, Inc. v. RDB, Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991).
We find that based upon this record, the evidence is
overwhelming that applicant’s mark is, at a very minimum,
extremely highly descriptive of its goods. Moreover, we
find that applicant’s rather meager showing of acquired
distinctiveness pursuant to Section 2(f) of the Trademark
Act does not begin to demonstrate that this highly
descriptive (if not generic) term BONDGRAPH has acquired a
secondary meaning indicating that the particular goods
emanate only from applicant.
The Examining Attorney has literally made of record
hundreds of stories taken from the Internet and other data
bases wherein the term “bond graph” is used to describe or
indeed name applicant’s goods, that is, computer software
programs for use in modeling and simulation of dynamic
systems. This evidence demonstrates there are numerous web
sites that deal specifically with bond graphs. One web
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site is named “BondGraphs.com.” Another is named “The
Bond Graph Compendium.” Moreover, a journal is published
entitled The Bond Graph Digest. In addition, the Examining
Attorney has made of record pages from the Internet showing
that there are conferences on the subject of bond graphs.
Indeed, one web site is specifically entitled “Bond Graph
Modeling Conferences.” Moreover, universities and other
institutions teach courses that are devoted to the subject
of bond graphs. In this regard, there is a web site
entitled “Bond Graph Modeling Courses and Teaching
Materials.”
One of the articles on the “BondGraphs.com” website
has a discussion about the founder of bond graphs. It
reads, in part, as follows: “It is with great sorrow that
on Friday, June 14, 2002, the inventor of bond graphs,
Henry M. Paynter, died suddenly. … In 1959 he published the
first book on bond graphs ever published. Until death, he
was a Professor of Mechanical Engineering Emeritus at MIT”
and a winner of the Nobel Prize. Another article found on
yet a different edition of “Bond Graphs.com” speaks of
another pioneer in the field of bond graphs in the
following manner: “It is with great sorrow that on Sunday,
March 25, 2001 one of the bond graph pioneers, Jan van
Dixhoorn, suddenly died. … One of his early contributions
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to the field of modeling and simulation was he realized in
the late sixties that simple process computers could be
used as an easy to use tool for the simulation of the
simple dynamic models that control engineers use. … After
he encountered bond graphs, Jan realized that a casual bond
graph is just a compressed block diagram, so he proposed to
add input facilities that made the first bond graph
software that was able to deal with nonlinear models.”
These two articles demonstrate that Professor Paynter
published a book on bond graphs as early as 1959, and that
by the 1970’s, Mr. Dixhoorn had developed bond graph
software for modeling, the very type of goods for which
applicant seeks to register its purported mark BONDGRAPH, a
mark which applicant acknowledges he did not even allegedly
use until 1982.
As noted earlier, the Examining Attorney has made of
record literally hundreds of Internet articles and other
articles showing that today there are websites dealing
specifically with bond graphs, that there are journals
specifically devoted to bond graphs, that there are
conferences on bond graphs and that there are courses that
teach how to use and develop bond graphs. In light of this
massive evidentiary showing, we have no doubt that the term
“bond graphs” is, at an absolute minimum, extremely highly
Ser. No. 76317292
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descriptive of applicant’s goods, namely, computer software
programs for use in the modeling and simulation of dynamic
systems. Indeed, the record strongly suggests that the
term “bond graphs” is a generic term for applicant’s goods.
In arguing that his mark is not merely descriptive,
applicant states at page 3 of his brief that “the ‘average’
person has a miniscule chance of comprehending the goods of
the present mark … [and] it is incomprehensible that the
description of such goods could be specific enough to
explain to the ‘average person’ what the function of the
software is.” Applicant’s argument is misplaced. As noted
earlier in this opinion, when one deals with goods directed
to professionals as opposed to the average consuming
public, then the mere descriptiveness or genericness of the
mark is judged from the standpoint of that relevant
professional public.
As for applicant’s showing of acquired distinctiveness
pursuant to Section 2(f), suffice it to say that it is
woefully lacking. Beyond pointing out that applicant has
continuously used his mark for over five years, applicant’s
attorney merely argues, without any evidentiary support,
that applicant’s “aggregate sales are in the six-figure
range, and its advertising expenditures are in the five-
figure range.” (Applicant’s brief page 3). We have two
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problems with applicant’s “evidence.” First, it is not
evidence at all because it was not submitted in the form of
a declaration or affidavit by one who would have knowledge
of the facts. Rather, said sales and advertising figures
were merely put forth by applicant’s attorney who did not
explain how he obtained the knowledge of applicant’s sales
and advertising figures. Second, even if we were to assume
that applicant’s total sales figures are in the six-figure
range and that applicant’s total advertising figures are in
the five-figure range, this merely means that since 1982
applicant has sold at least $100,000 of its BONDGRAPH
products and that it has spent at least $10,000 in
advertising such products. It is well established that as
a mark’s descriptiveness increases, a significantly greater
showing of acquired distinctiveness is required in order to
prove that the mark has now acquired secondary meaning in
that it indicates primarily applicant as a source of the
goods. Yamaha International Corp. v. Hoshino Gakki Co.,
840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). Given the
highly descriptive nature of applicant’s mark, we find that
applicant’s sales and advertising figures, even if properly
proven, would still be inadequate to establish secondary
meaning. Moreover, the mere fact that applicant has used
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its mark for five years is of no avail because the mark is
so highly descriptive.
Given the fact that the refusal to register
applicant’s mark on the basis that it is highly descriptive
and that applicant’s Section 2(f) showing is inadequate is
so well founded, we elect not to consider whether
applicant’s description of his goods is adequate.
Decision: The refusal to register is affirmed solely
on the basis that applicant’s mark is merely descriptive of
applicant’s goods, and applicant has failed to establish
that its mark has acquired distinctiveness pursuant to
Section 2(f) of the Trademark Act.