New Energy Technologies, Inc.

Trademark Trial and Appeal Board

Sep 10, 2014

No. 85673541 (T.T.A.B. Sep. 10, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: September 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re New Energy Technologies, Inc.
_____

Serial No. 85673541
_____

John J. Dresch of Dresch IP Law PLLC,
for New Energy Technologies, Inc.
Linda E. Blohm, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Bucher, Wolfson, and Masiello,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
New Energy Technologies, Inc. (“Applicant”) seeks registration on the Principal
Register of the stylized mark depicted below:

Serial No. 85673541
2

for “generators of electricity, namely, generators that generate electricity by
capturing and converting kinetic energy into electricity,” in International Class 7.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), having
determined that the applied-for mark merely describes the goods as “generators
[that] utilize MOTION as a source to generate POWER.”2 Registration was also
refused on the ground of res judicata, based on the Board’s earlier affirmance of the
refusal of the mark MOTIONPOWER (in standard characters) to Kinetic Energy
Corporation, one of Applicant’s wholly-owned subsidiaries, on the ground of mere
descriptiveness.3 Although in her Office Actions the Examining Attorney submitted
evidence supporting the Section 2(e)(1) refusal, in her appeal brief she contends that
the issue of descriptiveness of the literal portion of the applied-for mark has already
been adjudicated, making the “sole issue” on appeal “whether or not the stylization
of the applicant’s applied-for mark ‘MOTIONPOWER’ creates a commercial
impression that is separate and distinctive so as to overcome the descriptive nature

1 Application Serial No. 85673541 was filed on July 10, 2012, based on an allegation of
Applicant’s bona fide intent to use the mark in commerce under Trademark Act § 1(b).
There is a description of the mark that reads: “The mark consists of the word ‘Motion’ in
light colored letters on a dark background followed by the word ‘Power’ in dark letters on a
light background.” Color is not claimed as a feature of the mark.
2 Office Action November 7, 2012.
3 In re Kinetic Energy Corporation, Serial No. 77707733 (TTAB May 31, 2011). The
application in that case was for the following goods and services: “AC generators; electric
generators; electricity generators; generators of electricity” (in International Class 7); and
“energy recycling services, namely, capturing and conversion of wasted energy into
electricity and useful steam; generation of electricity; generation of energy; generation of
power; generation of power through operation of power generation equipment and facilities;
leasing of energy generating equipment” (in International Class 40).
Serial No. 85673541
3

of the mark itself.”4 Applicant, on the other hand, argues that the literal portion of
its mark is not merely descriptive, that the stylization of the mark is “enough to
overcome the Section 2(e)(1) refusal,”5 and that the doctrine of res judicata should
not be applied because the marks are not the same.
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.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
It is not necessary that a term describe all of the properties or functions of the goods
and/or services in order for it to be considered to be merely descriptive thereof;
rather, it is sufficient that the term describes one significant attribute, function or
property of the goods or services. In re Datapipe, Inc., 111 USPQ2d 1330, 1332
(TTAB 2014); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982). Determining
the descriptiveness of a mark is done in relation to an applicant’s goods and/or
services for which registration is sought, the context in which the mark is being
used, and the possible significance the mark would have to the average purchaser
because of the manner of its use or intended use. In re Bayer Aktiengesellschaft, 488

4 Examining Attorney’s Appeal Brief, 9 TTABVue 5.
5 Appeal Brief, p. 1, 7 TTABVue 3.
Serial No. 85673541
4

F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re MBNA America Bank N.A.,
340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
With respect to the Examining Attorney’s invocation of the doctrine of “res
judicata,” we note that, in the context of an ex parte proceeding, the more
appropriate consideration is the principle of “stare decisis.” This is because the
question before us is not whether the parties to an earlier case ought to be barred
from re-litigating a claim or issue based on whether it involves the same set of
transactional facts. Rather, it is whether Applicant should be precluded by an
adverse judicial determination of its right to registration in an ex parte proceeding
from seeking registration in a second application. Generally, an applicant is not so
precluded “if the applicant can show that facts or circumstances have changed since
the rendering of the adverse final decision in the first application.” In re Hotels.com
L.P., 87 USPQ2d 1100, 1103 (TTAB 2008) (newly submitted survey evidence
constituted a change in facts sufficient to avoid application of the doctrine).6 See
also In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988); In re Johanna Farms Inc.,
8 USPQ2d 1408, 1411 (TTAB 1988) (prior Board decision finding LA YOGURT for
yogurt incapable of distinguishing source did not preclude registration of LA
YOGURT under the doctrine of stare decisis; application of the doctrine “would be
inappropriate in view of the prima facie showing by applicant of changed facts

6 We note that in Hotels.com¸ the marks involved were quite different, yet the Board did not
rely on the differences in the marks in finding that stare decisis did not apply. In the first
case, applicant sought registration for the design mark, ; in the later-filed
case applicant applied to register the mark HOTELS.COM in typed format. The Board gave
no consideration to the differences in the marks, finding changed circumstances on the
basis of the survey evidence alone.
Serial No. 85673541
5

and/or circumstances” based on newly submitted evidence of consumer letters and a
survey dealing with purchaser perception of LA YOGURT); In re Bordo Products
Company, 188 USPQ 512, 514 (TTAB 1975) (applicant demonstrated change in
factual circumstances such that circumstances that existed at time of original
decision, twenty-five years earlier, had become so exacerbated that the decision “has
no viability at the present time”). In the case at hand, Applicant does not contend
that the circumstances have changed, except that it is now seeking registration of
its mark in a stylized form.
We find that the holding of the prior decision is stare decisis on the issue of
whether the wording MOTIONPOWER is merely descriptive, and that the minimal
stylization added to the term MOTIONPOWER in the subject mark does not
constitute a change in circumstances sufficient to avoid application of the doctrine
of stare decisis. In any case, because the evidence of record shows that
MOTIONPOWER is merely descriptive of Applicant’s goods, and inasmuch as the
stylization does not render the present mark registrable, we find the mark is merely
descriptive under Section 2(e)(1).
Applicant’s goods are “generators of electricity, namely, generators that generate
electricity by capturing and converting kinetic energy into electricity.” As stated on
its website, Applicant’s innovative technology “generates electricity from the motion
of vehicles.” Identified therein as “novel MotionPower™ energy harvesting
systems,” the products “generate sustainable electricity by capturing the excess
kinetic energy produced by moving cars, small trucks, and heavy commercial
Serial No. 85673541
6

vehicles.”7 A third-party website also describes Applicant’s technology as “roadway
systems for generating electricity by capturing the kinetic energy produced by
moving vehicles.”8 Applicant’s goods are generators that produce electricity by
capturing the surplus energy created from the motion of vehicles such as cars and
trucks. Considering the literal portion of Applicant’s mark, it is readily apparent
that it is a composite of two terms, “motion” and “power.” The word “motion” means
“the act or process of changing position or place.”9 The word “power” is defined as
“to provide something with the energy it needs to operate.”10 The evidence also
shows that, as a noun, “power” means “energy.”11 Applicant contends that because
each of the words “motion” and “power” has a variety of meanings, when considering
the mark as a whole, “imagination, reflection, or a ‘mental pause’ is required to
deduce a quality or characteristic of the goods.”12 Applicant further contends that
the mark is used in the manner of a trademark, is followed by the ™ symbol, and is
not in use by competitors to describe their similar products. None of these
arguments is persuasive. That the words comprising the mark may have other, non-
descriptive meanings does not erase the descriptive meaning it has vis-à-vis these
goods. The fact that Applicant uses the mark in the manner of a trademark and
follows it with a ™ symbol cannot convert an otherwise descriptive term into a

7 At http://www.newenergytechnologiesinc.com, dated 2006, attached to Office Action dated
November 7, 2012.
8 At http://investorshub.advfn.com, attached to Office Action dated November 7, 2012.
9 At http://education.yahoo.com, attached to Office Action dated November 7, 2012.
10 At http://dictionary.cambridge.org, attached to Office Action dated November 7, 2012.
11 Id.
12 Appeal Brief, p. 11, 7 TTABVue 12.
Serial No. 85673541
7

trademark. And while competitive need can be a relevant factor in a descriptiveness
analysis, here it has not been shown to have any impact.
In view of the evidence submitted by the Examining Attorney, we find that the
individual terms “motion” and “power” have descriptive significance as used in
connection with the identified goods. We further find that the combination of these
two descriptive terms, i.e., the composite term “MotionPower,” is still merely
descriptive of the goods and would still be perceived by prospective purchasers as
describing the power that Applicant’s generators produce from vehicles in motion.
Because each component retains its merely descriptive significance in relation to
the goods or services, the result is a composite that is itself merely descriptive. See,
e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004) (PATENTS.COM held merely descriptive of computer database management
software); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER
held merely descriptive of commercial and industrial cooling towers); In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer programs); In re Gagliardi, Bros., Inc., 218 USPQ 181, 184
(TTAB 1983) (BEEFLAKES for frozen thinly sliced beef merely descriptive).
Thus we come to the question of whether the stylization forming the composite
mark, as shown above, creates a separate and inherently distinctive commercial
impression, apart from the wording, such that the mark as a whole is not merely
descriptive. The stylization must be sufficiently distinctive so as to “create an
impression on purchasers separate and apart from the impression made by the
Serial N

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41
.” In re Am
, 1753 (T
485 (TTA
orcycle se
ssion); In
mark
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ctive in ch
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hat the s
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hat the d
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does no
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mark
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entirety
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whether
descript
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Brief, p. 11
41
ot persuad
therefore
g Attorne
ovement in
ssion tha
rd “motion
suggests
appearan
commer
rds. Cf., I
ubmitted b
function
e disclaim
to disting
holding of
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ive, and b

-12.
ed that c
reach the
y that the
the direc
t is separ
” itself, or
the feeling
ce of the e
cial impre
n re Miller
y applica
as a trad
ed word ‘L
uish appli
the Board
of Applic
nection wi
tances suf
rd confirm
ecause th
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onsumers
conclusion
stylization
tion that
ate or di
that the s
of power
ntire comp
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nt was su
emark alt
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cant’s ma
’s prior dec
ant’s mar
th Applica
ficient to a
s that the
e stylizati
will stop a
that App
of the wor
the letters
fferent th
tylization
beyond th
osite mar
rent from
Co., 226 U
fficient to
hough “th
ot of such
rk sought
ision is sta
k, i.e., “M
nt’s goods
void appli
literal po
on does no
nd analyz
licant ass
d “motion
slant, doe
an that c
of the wor
at conveye
k
that con
SPQ 666,
show tha
e features
nature th
to be reg
re decisis
otionPow
, and the s
cation of t
rtion of Ap
t create a
e the mar
erts. We a
,” to the ex
s not crea
reated by
d “power”
d by the w
veyed by
669-70 (T
t the
of applica
at they w
istered in
on the issu
er,” is me
tylization
he doctrin
plicant’s m
separate
k in
gree
tent
te a
the
is so
ord
the
TAB
nt’s
ould
its
e of
rely
does
e. In
ark
and
Serial N

inheren
POWER
register
is affirm
Masiello
I agr
merely
Howeve
decisis w
of the m
evidenc
portions
the prin
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tly distinc
, such tha
applicant
ed.
, Adminis
ee with th
descriptiv
r, I believe
ith respe
ark as a w
e of record
of the ma
ciple of sta
41
tive comm
t the mar
’s mark
trative Tra
e Board’s
e of Appl
it was un
ct to the li
hole fully
relating
rk. In my
re decisis.
ercial im
k as a wh
demark J
determina
icant’s goo
necessary
teral porti
considered
to its sign
view this a

10
pression
ole is not
- o O o -
udge, conc
tion that A
ds within
for the Bo
on of the m
the litera
ificance) t
nalysis re
apart fro
merely d
under
urring in t
pplicant’s
the mea
ard to rely
ark at iss
l portion o
ogether w
ndered sup
m the wo
escriptive,
Trademark
he result.
mark, in
ning of S
on the pr
ue. The B
f the mark
ith the sty
erfluous a
rds MOT
the refusa
Act § 2(
its entiret
ection 2(e
inciple of s
oard’s ana
(including
le and de
ny recour
ION
l to
e)(1)
y, is
)(1).
tare
lysis
the
sign
se to