Manhattan Scientifics, Inc.

Trademark Trial and Appeal Board

Apr 3, 2001

EX (T.T.A.B. Apr. 3, 2001)

04/03/01 Paper No. 23
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Manhattan Scientifics, Inc.
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Serial No. 75/478,091
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Request for Reconsideration
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James C. Wray for Manhattan Scientifics, Inc.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
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Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On February 12, 2001, Manhattan Scientifics, Inc.
filed a request for reconsideration of the Board’s
January 12, 2001 decision affirming, inter alia, the
Examining Attorney’s refusal of registration of GREEN CELL
on the ground that it is merely descriptive of applicant’s
identified goods. Applicant asserts that the Board
incorrectly dissected the two words of the mark in reaching
its decision that the mark is merely descriptive.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/478,091
2
As the Board pointed out in its January 12, 2001
decision, the evidence of record shows that the word GREEN
indicates that a product is environmentally friendly.
Moreover, at the oral hearing applicant’s attorney conceded
that the two individual words of the mark are descriptive,
green meaning “environmentally friendly” and “cell” being
an equivalent term for a fuel cell.
Despite this, applicant took the position during the
prosecution of its application, and continues to assert in
its request for reconsideration, that the mark as a whole
is not merely descriptive. As we previously stated in our
January 12, 2001 decision, we are not persuaded by this
argument. “The two words, combined as the mark GREEN CELL,
immediately tell consumers that the product is an
environmentally friendly (GREEN) fuel cell.” Slip opinion,
p. 10. Contrary to applicant’s contention, we have not
dissected the mark into its two separate words, determined
that each is individually descriptive, and based our
finding of descriptiveness on the individual words alone.
Rather, it is the combination, GREEN CELL, which we have
found to immediately convey to purchasers that the fuel
cell with which the mark is used is an environmentally
friendly cell. As such, the mark GREEN CELL is merely
descriptive of the goods.
Ser. No. 75/478,091
3
We would also point out that Estate of P.D. Beckwith
Inc. v. Commissioner of Patents, 252 US 538, 40 S. Ct. 414
(1920), upon which applicant relies, made the statements
that “the commercial impression of a trade-mark is derived
from it as a whole” and “it should be considered in its
entirety” in the context of whether it was appropriate to
require an applicant to delete a descriptive phrase
(MOISTAIR HEATING SYSTEM) from a composite mark rather than
simply requiring a disclaimer of it. This case, which was
decided in 1920, involved an interpretation of Patent
Office policies under the 1905 Trademark Act. In any
event, as we have already stated, our determination that
GREEN CELL is merely descriptive is based on a
consideration of the mark as a whole.
The request for reconsideration is denied.
It is also noted that on February 12, 2001 applicant
filed a petition to the Commission to reopen prosecution of
the application. The application file is hereby forwarded
to the Commissioner for appropriate action.1
1 It is noted that applicant has not submitted the requisite fee for
filing a petition to the Commissioner.