Mica Lamp Co.

Trademark Trial and Appeal Board

Dec 6, 2000

No. 75163499 (T.T.A.B. Dec. 6, 2000)

Paper No. 20
rls/em
12/6/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mica Lamp Company
________
Serial No. 75/163,499
_______
John W. Hazard, Jr. of Webster, Chamberlain & Bean for Mica Lamp
Company.
David H. Stine, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Simms, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Mica Lamp Company (applicant), a California corporation,
has appealed from the final refusal of the Trademark Examining
Attorney to register the asserted mark MICA LAMP COMPANY for
electric lamps and lamp fixtures, namely, lamp shades and lamp
reflectors.1 The Examining Attorney has refused registration on
the Principal Register and on the Supplemental Register on the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/163,499
2
basis that applicant’s mark is generic for applicant’s goods.2
Applicant and the Examining Attorney have submitted briefs but
no oral hearing was requested.
We affirm.
It is the Examining Attorney’s position that applicant’s
mark MICA LAMP COMPANY consists of the name of a type of lamp
with a lamp shade made of the mineral mica, with the addition of
the entity designation "COMPANY."3 Based upon dictionary
definitions and excerpts from the Nexis computer database, some
of which are reproduced below, the Examining Attorney argues
that applicant’s mark is generic and, therefore, incapable of
distinguishing applicant’s goods from those of others, and is
not registrable on either register. With respect to applicant’s
evidence of acquired distinctiveness, more fully discussed
below, the Examining Attorney argues that generic terms cannot
be registered pursuant to the provisions of Section 2(f), and
that no amount of evidence of acquired distinctiveness can

1 Application Serial No. 75/163,499, filed September 10, 1998, based
upon allegations of use and use in commerce since January 1, 1992.
2 Pursuant to applicant’s request, applicant has sought registration on
the Principal Register under Section 2(f) of the Act, 15 USC §1052(f),
and on the Supplemental Register. See TMEP §1212.02(c), which permits
this practice.
3 Among other words, the Examining Attorney has made of record a
definition of the term "mica":
any member of a group of minerals, hydrous
silicates of aluminum with other bases, chiefly
potassium, magnesium, iron, and lithium, that
separate readily into thin, tough, often transparent,
and usually elastic laminae; isinglass.
Ser. No. 75/163,499
3
render a generic term registrable. Even if applicant’s evidence
establishes some recognition of the asserted mark, the Examining
Attorney contends that such recognition is de facto recognition
or de facto secondary meaning.4 Some of the excerpts relied upon
by the Examining Attorney are quoted below:
... in a floor model. But the company has ventured beyond
its high tech and contemporary roots with arts-and-crafts-
style mica lamps, transitional Scabo glass and iron styles.
HFN The Weekly Newspaper for the Home Furnishing Network,
October 11, 1999
* * * * * *
... In addition to new sculpture, mosaic glass lamps and
accents, mica lamps and fixtures, and Tiffany-style and
reverse-painted shades, Dale will present a new
Architectural Glass collection...
HFN The Weekly Newspaper for the Home Furnishing Network,
October 11, 1999
* * * * * *
The mica lamp category is getting another shot in the arm
with the most recent Pottery Barn national print
advertising campaign, running currently in Architectural
Digest, Metropolitan Home and other prominent shelter
magazines. The campaign spotlights a single mica lamp,
an adjustable-height design with a subtly tinted bronze
base produced by J. Hunt & Co. of Bono, ...
HFN The Weekly Newspaper for the Home Furnishing Network,
August 30, 1999
* * * * * *
Each of four consecutive right-hand pages showcases one
product, including a mica lamp.

4 In his brief, the Examining Attorney states that, in the event that
applicant’s mark is determined not to be generic, the evidence of
record is considered by the Examining Attorney to be sufficient
evidence to establish "a de facto showing of acquired distinctiveness
in the term ‘MICA LAMP COMPANY.’" Brief, 4. Therefore, the issue of
acquired distinctiveness is not before us.
Ser. No. 75/163,499
4
Advertising Age, August 16, 1999
* * * * * *
... Co was founded in Manhattan in 1922 by Mario Russo, an
Italian immigrant with expertise in manufacturing mica
lamp shades. Mario Manufacturing became a leading
supplier of specialty lighting made of mica, for use in
railroad...
He later joined the Crucet Manufacturing Co., where
he made decorative baskets, a line of decorative floor
lamps and torchieres, and mica lamp shades (mica is a
thin, translucent material that emits a soft glow when
light is shined through).
Business and Industry, June 14, 1999
* * * * * *
... The company entered new product segments, and was one
of the first suppliers to offer mica lamps at affordable
prices.
HFN The Weekly Newspaper for the Home Furnishing Network,
December 21, 1998
* * * * * *
... Young carries reproductions or accessories items such
as copper pieces or mica lamps. Young says wall stencils
and wallpaper representing the arts and crafts era can be
special-ordered through the store...
Arkansas Business, October 19, 1998
* * * * * *
... In one section of the center, Mission-style leather
sofas and chairs, mica lamps, and oak tables create a
sense of home...
Buildings, September 1998
* * * * * *
In a timely manner, the retailer just brought in mica
lamps in two styles, for $69 and $89 and they are doing
very well," said the buyer.
HFN Weekly Newspaper for the Home Furnishing Network, June
1, 1998
* * * * * *
Ser. No. 75/163,499
5
... ADAMS, owner of Aurora studios, shows off one of his
copper lighting creations, which he calls a Van Erp styled
mica lamp...
Syracuse Herald American, January 25, 1998
* * * * * *
... She cited a Dirk Van Erp early 20th-century copper and
mica lamp she’d appraised at $15,000.
The Press-Enterprise, March 5, 1997
* * * * * *
Wrought-iron and mica lamps hang from the ceiling,
lighting the 12-foot-square, intricately designed tile
floor...
The Ledger, December 20, 1996
* * * * * *
... van Erp Shop produced a variety of hand-hammered bowls
and trays but was best known for its copper-and-mica
lamps (for more on these, see Antiques Across America,
"Arts & Crafts Lighting," in our February 1994 issue)...
Country Living, February 1996
In addition, one of applicant’s specimens of record, a
portion of which is reproduced below,
Ser. No. 75/163,499
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proclaim "The Copper Lamp With The Unique Mica Shade," and show
the following uses of the term "mica."
Our Mica shade panels are the same natural
materials used by the Arts & Crafts master
lampmakers. Mineral mica flakes, combined with
organic shellac, make each mica shade unique
with its variations of mineral deposit patterns
and color tones.
Dirk Van Erp was the master coppersmith of the
American Arts and Crafts movement. In 1910, at
his San Francisco workshop, he discovered the
warmth of copper, combined with the magical
translusence [sic] of crystallized mica mineral.
While arguing that its mark is at most suggestive (brief,
14), applicant nevertheless contends that, even if its mark were
considered merely descriptive, the mark MICA LAMP COMPANY has
achieved secondary meaning. In support of its showing of
acquired distinctiveness under Section 2(f) of the Act,
applicant has submitted statements from industry representatives
such as owners of lamp and furniture showrooms, as well as from
Ser. No. 75/163,499
7
retail consumers, attesting that the name "Mica Lamp Company"
identifies only one manufacturer, applicant, of Glendale,
California. Applicant indicates that these statements are
submitted from those most familiar with the lamp industry and
consumers who have purchased lamps from applicant. Applicant’s
attorney has also provided advertising and promotional
expenditures in the hundreds of thousands of dollars.
Accordingly, it is applicant’s position that members of the
relevant public use or understand the term sought to be
registered to refer to applicant and not to a class of goods.
Further, applicant maintains that the Examining Attorney has not
provided evidence from the relevant public of the significance
of the mark (MICA LAMP COMPANY) sought to be registered.
Applicant notes that most of the stories deal with the term
"mica lamps" and not the mark sought to be registered. Other
stories refer to "copper and mica lamps" or "wrought iron and
mica lamps" and not the asserted mark. Further, applicant
argues:
The great majority of the evidence cited by
the Examiner does not show the mark MICA LAMPS
or the mark MICA LAMP COMPANY in common usage,
but rather, unconventional or careless usage, as
where a consumer orders a "coke" instead of a
"Coca Cola."
Applicant’s brief, 9-10.
A term is generic if it names the class of goods or
services to which it is applied. H. Marvin Ginn Corp. v.
Ser. No. 75/163,499
8
International Association of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528 (Fed. Cir. 1986) and In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
The test for determining whether a term is generic is its
primary significance to the relevant public; that is, whether
the term is used or understood, by purchasers or potential
purchasers of the goods or services at issue, primarily to refer
to the class of such goods or services. Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re
Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra; and In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994).
Evidence of the relevant public’s understanding of a term may be
obtained from any competent source, including direct testimony
of consumers, consumer surveys, newspapers, magazines,
dictionaries, catalogs and other publications. In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., supra, and In re
Northland Aluminum Products, Inc., supra. The Office has the
burden of proving genericness with clear evidence. In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., supra.
After careful consideration of this record, we believe that
the Examining Attorney has established that applicant’s mark is
generic. The term "mica lamps," according to the evidence of
Ser. No. 75/163,499
9
record, is used, at least by the trade press, and, in our view,
by applicant on its promotional literature, to refer to a type
or category of lamp, that is, a lamp with a lamp shade made in
part or entirely of the mineral mica. To this expression,
applicant has simply added the word "COMPANY." This entity
designation cannot convert an otherwise generic term into a
proprietary one. We have in the past held that the entity
designation "CO." attached to a generic term does not make the
mark registrable. See In re Paint Products Co., 8 USPQ2d 1863,
1865 (TTAB 1988) ("PAINT PRODUCTS CO." held generic for various
paints and coatings) and In re Phone Co., Inc., 218 USPQ 1027
(TTAB 1983) ("THE PHONE COMPANY" held merely descriptive).
Similarly, we have on a number of occasions held the entity
designation "Inc." to have no trademark or service mark
significance. See, for example, In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re
Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984)
(INDUSTRIAL RELATIONS COUNSELORS, INC. incapable of functioning
as a mark for conducting seminars and research in the field of
industrial relations, the Board attaching no trademark
significance to the corporate identifier "Inc."); In re E.I.
Kane, Inc., 221 USPQ 1203 (TTAB 1984) (OFFICE MOVERS, INC.
incapable of functioning as a mark for moving services; addition
of the term "Inc." does not add any trademark significance to
Ser. No. 75/163,499
10
the matter sought to be registered); and In re Packaging
Specialists, Inc., 221 USPQ 917 (TTAB 1984) (PACKAGING
SPECIALISTS, INC. merely descriptive of contract packaging
services, etc.; the term "Inc." is recognized, in trademark
evaluation, as having no source-indicating or distinguishing
capacity).
With respect to applicant’s showing of acquired
distinctiveness, we have considered that evidence in our
decision. However, while there may be some indication of source
as a result of applicant’s use of designation MICA LAMP COMPANY,
we believe that that recognition is what the law categorizes as
"de facto secondary meaning"--that is, secondary meaning to
which the law attaches no legal significance. Because we
believe that applicant’s mark consists of the generic entity
designator "COMPANY" coupled with a term which is understood by
the relevant public primarily to refer to a type of product, we
affirm the Examining Attorney’s refusal to register applicant’s
mark on the Principal and the Supplemental Registers. See In re
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed.
Cir. 1999) ("The Best Beer in America" found to be "so
highly..descriptive of the qualities of its product that the
slogan does not and could not function as a trademark to
distinguish Boston Beer’s goods and serve as an indication of
origin.").
Ser. No. 75/163,499
11
Decision: The refusal of registration is affirmed.
R. L. Simms
C. E. Walters
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board