Nippon Electric Glass Co., Ltd.

Trademark Trial and Appeal Board

Jun 2, 2016

No. 79137917 (T.T.A.B. Jun. 2, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Nippon Electric Glass Co., Ltd.
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Serial No. 79137917
_____

Sarah Voeller of Hamre, Schumann, Mueller & Larson PC,
for Nippon Electric Glass Co., Ltd.
Shannon Twohig, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
_____

Before Zervas, Wellington, and Masiello,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Nippon Electric Glass Co., Ltd. (“Applicant”) seeks registration on the Principal
Register of the standard character mark NIPPON ELECTRIC GLASS for various
goods in International Classes 1, 6, 7, 9, 10, 11, 17, 19, 20, 21, 22, 23 and 24.1 The

1 Application Serial No. 79137917, filed on February 4, 2013, is based on International
Registration No. 1180257 (reg. date February 4, 2013) under Section 66(a), 15 U.S.C. §
1141(f)(a). Due to the extensive nature of the identification of goods, we list them in
abbreviated form later in this decision.
Serial No. 79137917
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application, as amended, includes a claim of acquired distinctiveness as to the whole
mark under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based
on Applicant’s failure to comply with a requirement to disclaim the exclusive right to
use ELECTRIC, with respect to Classes 1, 11, 19, and 21, and GLASS, as to all classes
of goods, because these terms are generic, and thus unregistrable, components of the
mark.
Applicant appealed and requested reconsideration of the refusal. After the
Examining Attorney denied the request for reconsideration, the appeal was resumed,
and briefs, including a reply brief from Applicant, were filed.
I. Examining Attorney’s Untimely Brief
In its reply brief, Applicant objected to “the late filing of the Examining Attorney’s
Brief and requests that it be stricken from consideration as no reason was given for
its late submission.”2 The Board forwarded the application file to the Examining
Attorney on December 3, 2015 for filing a brief;3 the Examining Attorney’s brief was
therefore due on February 1, 2016, pursuant to Rule 2.142(b)(1) (“The examiner shall,
within sixty days after the brief of appellant is sent to the examiner, file with the
Trademark Trial and Appeal Board a written brief answering the brief of appellant

2 10 TTABVUE 2.
3 8 TTABVUE (Board’s December 3, 2015 order).
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and shall mail a copy of the brief to the appellant”); and the Examining Attorney’s
brief was filed late, by one day, on February 2, 2016.4
If an examining attorney’s brief is late-filed, the Board may exclude it in the
absence of an adequate explanation for the late filing. See TBMP Section 1203.02(b)
(2015). Here, the Examining Attorney has not provided an explanation as to why the
brief was not timely filed, albeit only one day after the due date, and did not respond
to Applicant’s objection. In view thereof, the objection is sustained and the Examining
Attorney’s brief is given no consideration. We hasten to add, however, that the fact
that we do not consider the Examining Attorney’s late brief does not necessarily
result in the reversal of the refusal; rather, we will decide this appeal without the
benefit of the brief. Id. Indeed, the record remains unchanged and we may consider
arguments set forth by the Examining Attorney in Office actions, including her denial
of the request for reconsideration.
II. Disclaimers and the Applicable Law
The Director of the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Trademark Act Section
6(a), 15 U.S.C. § 1056(a). A disclaimer is a statement that the applicant or registrant
does not claim the exclusive right to use a specified element or elements of the mark
in a trademark application or registration.
Generic words are considered unregistrable and, accordingly, an examining
attorney may require the disclaimer of these terms as components of otherwise

4 9 TTABVUE (Examining Attorney’s brief).
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registrable marks. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013).
A disclaimer of generic terms is appropriate where, as is the case here, Applicant
seeks registration of the entire mark under Section 2(f) (“acquired distinctiveness”).
In re Creative Goldsmiths Of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) (“it is
within the discretion of an Examining Attorney to require the disclaimer of an
unregistrable component (such as a common descriptive, or generic, name) of a
composite mark sought to be registered on the Principal Register under the provisions
of Section 2(f).”); see generally TMEP §1212.02(e) (2015). The examining attorney can
condition registration of the composite mark on an applicant’s providing a disclaimer
of the unregistrable portion. In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332,
116 USPQ2d 1262, 1264 (Fed. Cir. 2015). Failure to comply with such a disclaimer
requirement is a ground for refusing registration. See In re Slokevage, 441 F.3d 957,
78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d
1087 (Fed. Cir. 2005).
A term is generic if it refers to the class or category of goods or services on or in
connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. Int'l Ass'n of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”). The
test for determining whether a term is generic is based on its primary significance to
the relevant public. In re Am. Fertility Soc'y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed.
Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
1991); and Marvin Ginn, supra. Making this determination “involves a two-step
Serial No. 79137917
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inquiry: First, what is the genus of goods or services at issue? Second, is the term
sought to be registered ... understood by the relevant public primarily to refer to that
genus of goods or services?” Marvin Ginn, 228 USPQ at 530.
In the context of an ex parte appeal, such as this, it is the examining attorney who
bears the burden of establishing by clear evidence that the term is generic. In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987); In re Am. Fertility Soc'y, supra; and Magic Wand Inc., supra. “Doubt on
the issue of genericness is resolved in favor of the applicant.” In re DNI Holdings Ltd.,
77 USPQ2d 1435, 1437 (TTAB 2005).
Disclaimers of generic words should not be required if they may be considered an
integral part of a unitary term or phrase that, as a whole, has a meaning or
commercial impression that is not generic. See TMEP Section 1213.05 for a discussion
of the Office’s policy regarding disclaimers and the presence of unitary terms. In
particular and by way of an example, TMEP Section 1213.05(d) specifically
anticipates, “[i]f two or more terms are combined in a mark to create an incongruity
(e.g., URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMAR), the mark is
unitary and no disclaimer of nondistinctive individual elements is necessary,” with a
citation to TMEP Section 1209.01(a) discussing the “incongruity” concept.
In view thereof, the questions before us are: (1) does the combination of the
sequential words ELECTRIC and GLASS in Applicant’s mark create a unitary term
that is not generic and thus avoid the need for a disclaimer of the individual terms?
(2) if the answer to the first question is no, then are ELECTRIC and GLASS generic
Serial No. 79137917
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names for the application’s identified goods, with the former term being considered
only in the context of the identified goods in Classes 1, 11, 19, and 21?
III. The Evidence
The Examining Attorney has submitted the following materials that are relevant
to the genericness issue:
• Printouts from Applicant’s website, including a “corporate information”
page and a “products” page;5

• A definition of the term “glass”;6

• A definition of the term “electric”;7

• A definition of the term “electrical”;8

• A Wikipedia entry for Applicant;9 and

• A third-party “Polytronix” website printout involving “switchable privacy
glass” products.10

Applicant, too, submitted evidence; however, the bulk of this evidence goes
towards showing that its mark, as a whole, has acquired distinctiveness. The
Examining Attorney accepted Applicant’s showing of acquired distinctiveness and

5 Submitted with Office actions dated November 14, 2013 and August 20, 2015.
6 Id.
7 Submitted with Office action dated July 9, 2014.
8 Submitted with Office action dated December 11, 2014.
9 Submitted with Office action dated August 20, 2015.
10 Id. The Polytronix “switchable privacy glass” products are touted on the website
(www.polytronix.com) as “privacy and lighting at the flip of a switch” and described as
being based on technology that involves “light scattering power … adjustable through
applying an electric field.” Essentially, in an uncharged state the glass is in a translucent
state, i.e., creating privacy; when an electric field is applied, the glass becomes transparent.
Serial No. 79137917
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that issue is not before us. We have considered the entire record in making our
determination regarding the disclaimer requirement.
IV. Analysis
A. Is ELECTRIC GLASS a Unitary Term?
Applicant argues that the required disclaimers of ELECTRIC and GLASS,
individually, are improper because ELECTRIC GLASS constitutes a registrable
“unitary phrase” because it is incongruous.11 Applicant contends:
“Electric Glass” is incongruous as the average consumer fully understands
that glass is not electric. In fact, glass is a very poor conductor of electricity.
It is for this reason that glass makes a good insulator. A search for the term
“electric glass” generated no results in the Merriam Webster and Oxford
online dictionaries.12

Applicant further argues that consumers “have come to recognize ELECTRIC
GLASS as a unitary phrase,” relying on evidence it has submitted showing use of its
mark.13
The test for what constitutes a unitary phrase involves an inquiry into whether
the elements of a mark, or portion thereof, are so integrated or merged together that
they cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964,
966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). A focus is placed
on “how the average purchaser would encounter the mark under normal marketing
of such goods and also ... what the reaction of the average purchaser would be to this

11 7 TTABVUE 16-19.
12 Id. at 17. Applicant references online dictionary evidence submitted with its request for
reconsideration (4 TTABVUE).
13 Id. at 18-19.
Serial No. 79137917
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display of the mark.” Dena Corp. v. Belvedere International, Inc., 950 F.2d 1555, 21
USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Service, Inc., 184
USPQ 125, 126 (TTAB 1974)). The Court of Appeals for the Federal Circuit has set
forth the elements of a unitary mark:
A unitary mark has certain observable characteristics. Specifically, its
elements are inseparable. In a unitary mark, these observable
characteristics must combine to show that the mark has a distinct meaning
of its own independent of the meaning of its constituent elements. In other
words, a unitary mark must create a single and distinct commercial
impression.

Dena Corp., 21 USPQ2d at 1052.
In this case, based on the record before us, we find that ELECTRIC GLASS is not
a unitary term in the context of the identified goods. Applicant’s unsupported
assertion that “the average consumer fully understands that glass is not electric” does
not establish an incongruity. There is no evidence in the record showing that
consumers would view the terms as being so incompatible in meaning or their
combination as so bizarre or counterintuitive as to create the impression of a
noticeable incongruity. Likewise, applicant’s argument that there is no dictionary
definition of “electric glass” is not particularly persuasive because there is no
requirement that a particular combination of words be defined in order for a
disclaimer requirement to be appropriate.
Because we find that ELECTRIC GLASS is not a unitary term, at least on the
record before us, the component words may individually be subject to disclaimer
requirements.
B. The Genus (or Genera) of Applicant's Goods
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We now consider whether either of the words ELECTRIC, or GLASS, is generic.
Under Marvin Ginn, we must first determine the genus of Applicant's goods.
Generally “a proper genericness inquiry focuses on the description of [goods or]
services set forth in the [application or] certificate of registration.” Magic Wand, 19
USPQ2d at 1552, citing Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d
937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The application’s identification of goods, abbreviated in certain classes, reads as
follows:14
Chemicals for use in industry; Chemicals containing glass for use in
industry; Chemicals of silicate composition for use in industry; Chemicals
used for forming dielectric layers on electric and electronic components,
forming ribs for pixels located inside of a display panel, forming coated
layers, binding metallic powder, binding or powdery coating; Chemicals in
powder or paste form, used for forming dielectric layers on electric parts
and electronic parts, forming ribs for pixels located inside of a display
panel, forming coated layers, binding metallic powder, binding or powdery
coating; Chemicals containing glass or ceramics, for use in the
manufacture of circuit boards; Chemicals containing glass or ceramics, in
powder or paste form, for use in the manufacture of circuit boards;
Chemicals for forming coated layers on printed boards, circuit boards,
semiconductors, semiconductor devices and other electronic components;
Chemicals in powder or paste form, for forming coated layers on printed
boards, circuit boards, semiconductors, semiconductor devices and other
electronic components; Chemicals for hermetic sealing of display panels,
ceramics, semiconductors or tungsten; Chemicals for binding, for use in the
manufacture of electric and electronic components; Binding chemicals of
silicate composition for use in industry; Chemicals in powder or paste form,
for hermetic sealing of display panels, ceramics, semiconductors or
tungsten; Adhesives, not for stationery or household purposes; Chemicals
in powder form, for industrial purposes; Chemicals in paste form, for
industrial purposes in International Class 1;

14 In view of its extensive nature, the identification has been abbreviated in several classes
to delete goods that are either superfluous in the context of glass-related products or have
no electrical relevance.

Serial No. 79137917
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Loading and unloading pallets of metal for use in the manufacture of
glassware; Loading and unloading pallets of metal and parts therefore,
namely, turntables for load handling and traversers for load handling in
International Class 6;

Glassware manufacturing machines and apparatus; Glass working
machines and apparatus; Glass cutting machine and apparatus; Glass
grinding machines and apparatus; Glass abrasive machines and
apparatus; Glass drilling machines and apparatus; … in International
Class 7;

Ultraviolet-ray transmitting glass, not for building; Infrared-ray absorbing
glass, not for building; Lens glass of semi-finished material not for
building; Processed glass, namely, strengthened glass used for displays of
smart phones, tablet PC's and other portable electronic devices; Processed
glass, namely, crystallized glass for measuring or testing machines and
instruments; Processed glass, namely, crystallized glass for optical
apparatus and instruments; Conduction glass, not for building; Heat-
resistant glass for measuring or testing machines and instruments; Heat-
resistant glass used for optical apparatus and instruments; Processed
glass, not for building, namely, heat-resistant glass; Optical glass; Optical
glass for optical communication devices; Glass for pressing optical pickups
and optical lenses; Glass for liquid crystal displays, plasma displays, field-
emission displays, organic electroluminescence displays, inorganic
electroluminescence displays, flat-panel displays and other panel displays;
Glass for liquid-crystal projectors; Optical glass for liquid-crystal
projectors; Processed glass, namely, glass tubes used for the encapsulation
of semiconductors; Infrared-ray absorbing glass tubes, not for building;
Processed glass, namely, sealing glass tubes for tungsten; Processed glass,
namely, glass substrates, glass tubes, glass for exhaust tubes, and sealing
glass, all for liquid crystal displays, plasma displays, field-emission
displays, organic electroluminescence displays, inorganic
electroluminescence displays, flat-panel displays and other panel displays;
Glass parts for providing stable gap of liquid crystal cells of liquid crystal
displays, plasma displays, field-emission displays, organic
electroluminescence displays, inorganic electroluminescence displays, flat-
panel displays and other panel displays; Glass substrates, namely, glass
substrates used for lighting; Glass substrates used for lighting of organic
electroluminescence displays; Glass substrates for solar power generation
panels; Glass substrates for lithium-ion secondary batteries; Optical
communication apparatus, namely, temperature compensation substrates
for fiber bragg grating; Processed glass, namely, glass tubes for industrial
purposes used for connection of optical fibers; Lenses for laser diodes and
Serial No. 79137917
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other optical communication devices; Collective lenses for optical sensors;
Collective lenses for bar-code readers; Lenses for optical pickups; Optical
fiber cables; Ferrules used for connection of optical fibers; Optical fiber
connectors; Prisms for optics purposes; Optical fiber coupler cases of glass;
Glass defocus parts of projectors; Liquid-crystal projectors; Electronic
machines, apparatus and parts therefor, namely, cover glass for image
sensors, communication glass capillaries, collimator lenses, green sheets
for LTCC, optical network modules, glass ferrules for fiber optic
connectors, micro prisms, coupler housing, ball lens units, glass for diodes,
glass for laser diodes, glass for aspherical lenses, powder, glass, glass tubes
for reed switches for electronic devices; Ceramic substrates for electronic
components; Liquid crystal lenses; Optical imaging devices to form a 3-
dimensional image in space, and their light control panels and optical
reflectors; Glass lenses for optical apparatus and instruments; Optical
lenses; Scales for linear encoder in International Class 9;

Optical lenses for medical endoscopes; Syringe barrels for medical
purposes; Glass syringes for medical purposes; Radioisotope therapy
apparatus and instruments; Surgical lighting apparatus, namely, surgical
lamps; Cover glass for surgical lighting apparatus; Medical X-ray
apparatus; X-ray protective glass windows sold as a part of medical X-ray
apparatus; X-ray protective goggles and X-ray protective glass that fit on
the user's face in the manner of eyeglasses, sold as a unit with X-ray
apparatus for medical purposes; Single-leaf screens using radiation shield
glass, for medical purposes; Partitions using radiation shield glass, for
medical purposes in International Class 10;

Glass fusing furnace, melting furnaces, calcining kilns and industrial
furnaces; Glass access openings of glass fusing furnace, melting furnaces,
calcining kilns and other industrial furnaces; Glass access openings of
nuclear reactors; Fittings of calcining kilns and other industrial furnaces,
namely, glass ceramic supports; Glass ceramic supports, to be used in kilns
for burning panel display substrates; Fittings of calcining kilns and other
industrial furnaces, namely, kiln furniture supports; Lamp chimneys;
Electric lamps; . . . Glass top plates for electromagnetic induction cookers
for industrial and household purposes; Glass top plates for microwave
ovens, electric cooking ovens, gas cooking ovens and other cooking ovens
for industrial and household purposes; Glass top plates for cooking
apparatus and installations for industrial and household purposes; Glass
bottom plates of microwave ovens, electric cooking ovens, gas cooking ovens
and other cooking ovens for industrial and household purposes; Glass
turntables of microwave ovens, electric cooking ovens, gas cooking ovens
and other cooking ovens for industrial and household purposes; Glass
protective tubes for Nichrome wire for use in electric toasters, electric
Serial No. 79137917
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cooking ovens or microwave ovens; Crystallized glass top plates of cooking
apparatus and installations for industrial and household purposes; Heat-
resistant glass for top boards of cooking apparatus and installations for
industrial and household purposes; Glass covers for electric heaters;
Chimneys for oil or gas heaters; Fireplaces, domestic; Glass windows sold
as a part of stoves; glass portholes of domestic fireplaces, namely, heat
exchangers, solid fuel burners, stoves in International Class 11;

Electrical insulating materials; fiberglass for insulation; glass fiber
materials for insulation; glass wool for insulation; electrical insulating
materials of glass, in powder, paste, film or tape form; electrical insulating
materials containing glass; fiberglass fabrics for insulation; fiberglass felts
and fiberglass non-woven fabrics, for insulation in International Class 17;

Tiles, blocks, bricks, panels, boards, of ceramic, linoleum, plastic,
synthetic, asphalt, rubber, lime, plaster, stone, artificial stone, glass, glass
ceramic or fiberglass materials, all for building not of metal; Building
materials of ceramic, linoleum, plastic, synthetic, asphalt, rubber, lime,
plaster, stone, artificial stone, glass, glass ceramic or fiberglass, namely,
those for external walls, internal walls, floors, ceilings, posts or poles;
Construction materials, namely, tiles, blocks, bricks, panels and boards of
asphalt, rubber, lime, plaster, glass, glass ceramic or fiberglass; Building
glass; Building glass in the form of rods, tubes, spheres and boards;
Building glass, namely, laminated flat glass, luminous glass, decorative
glass, radiation shield glass, heat-resistant glass, strengthen glass, opal
glass and crystallized glass; . . . Building glass used for internal walls of
electric furnaces for burning electronic component in International Class
19;

Handling pallets, not of metal; Furniture using radiation shield glass,
namely, single-leaf screens, folding screens and partitions in International
Class 20;

Glass, unworked or semi-worked, except building glass; Glass, unworked
or semi-worked, except building glass, in the form of powders, tablets,
pastes, rods, tubes, spheres, boards, films, ribbons or tapes; Radiation
shield glass, not for building; Crystallized glass, not for building; Heat-
resistant glass, unworked or semi-worked, except building glass;
Photosensitive sheet glass, not for building; Strengthen glass, not for
building; Luminous glass, not for building; Glass for chemical laboratory
glassware not for scientific use; Opal glass, not for building; Glass used for
electric wires and cables; . . . Glass, unworked or semi-worked, for
electronic components; . . . Glass tubes, unworked or semi-worked, for
sealing tungsten electrodes; . . . Glass, unworked or semi-worked, namely,
Serial No. 79137917
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glass substrates, glass tubes, glass for exhaust tubes, and sealing glass, all
for liquid crystal displays, plasma displays, field-emission displays, organic
electroluminescence displays, inorganic electroluminescence displays, flat-
panel displays and other panel displays; . . . Glass in paste or powder form,
unworked or semi-worked, not for building, used for forming dielectric
layers on electric parts and electronic parts, forming ribs for pixels located
inside of a display panel, forming coated layers, binding metallic powder,
binding ceramic derivatives, coating or hermetic sealing; Glass, unworked
or semi-worked, not for building, used for forming dielectric layers on
electric parts and electronic parts, forming ribs for pixels located inside of
a display panel, forming coated layers, binding metallic powder, binding
ceramic derivatives, coating or hermetic sealing; Glass in paste or powder
form, unworked or semi-worked, not for building, for forming coated layers
of printed boards, circuit boards, semiconductors, semiconductor devices
and other electronic components; Glass, unworked or semi-worked, not for
building, for forming coated layers of printed boards, circuit boards,
semiconductors, semiconductor devices and other electronic components . .
. in International Class 21;

Glass fibers for textile use; Inorganic, namely, synthetic fibers for textile
use, not including asbestos fibers; Raw textile fibers; Glass fiber netting in
International Class 22;

Fiberglass thread and yarn, for textile use; Inorganic-fiber thread and yarn
for textile use, other than asbestos fiber yarn; Thread and yarn, for textile
use; Fiberglass thread and yarn, for textile use, namely, fiberglass rovings
in International Class 23; and

Fiberglass fabrics, for textile use; Inorganic, namely, synthetic fiber fabrics
other than asbestos fiber fabrics; Woven fabrics; Fiberglass felts and non-
woven fabrics in International Class 24.

[“Electr-” formative terms in classes where the Examining Attorney is requiring a
disclaimer of ELECTRIC are underlined for ease of reference.]

In making our determination in the following section regarding the meaning and
the public’s understanding of the terms ELECTRIC and GLASS, our analysis is
focused on the above identification of goods. However, given the extensive description
of goods in certain classes, we must consider the possibility of multiple genera or
categories of goods within a single class. We note, in particular, that the Examining
Serial No. 79137917
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Attorney has identified particular goods within each class that she believes are
relevant for purposes of showing that either ELECTRIC or GLASS is generic. In this
regard, we further note that for the disclaimer requirement to be affirmed,
ELECTRIC or GLASS need only refer to any one genus of goods within a given class.
Cf., In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd, 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished) (registration is properly
refused if the mark is generic with respect to any one of the services for which
registration is sought in a given International Class).
C. The Relevant Public’s Understanding of the Term ELECTRIC
We now consider whether the relevant public, which consists of consumers of the
identified goods, will understand the term ELECTRIC primarily to refer to any genus
of goods in the relevant classes.15 As is evident by the description of the record, the
evidence of third-party use of this term in connection with any of the identified goods
consists of webpages from a single website involving electrically-charged “privacy
glass” (see footnote 10 supra). Nevertheless, “electric” is a broad term, defined as

15 The Examining Attorney argues that “the relevant public comprises ordinary consumers
who purchase applicant’s goods, because there are no restrictions or limitations to the
channels of trade or classes of consumers” in the identification of goods. 5 TTABVUE 4.
Applicant takes a slightly broader approach to the class of consumers, arguing that a showing
has not been made that “the general public understands the word ‘electric’ to be the generic
term for the essence of the goods.” 7 TTABVUE 13. We agree that our analysis should be
focused on the understanding of consumers of the identified goods and, with regard to certain
goods, such as electric lamps or cooking ovens, this will include the general public. With
respect to goods that are not obviously offered to the general public, there is no showing what
type of entities actually purchase these goods, whether it be factories, scientists, engineers,
etc.
Serial No. 79137917
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“working by electricity … used for carrying electricity … relating to electricity,”16 and
we must consider Applicant’s own description of its goods. We cannot ignore what
may be plainly obvious – a term may be found to be generic if, by its very definition,
it will be primarily understood as a reference to a genus or subgenus of any of the
identified goods. In re Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987)
(compound word SCREENWIPE held generic based on the dictionary definition of the
individual terms).
Because the Examining Attorney’s disclaimer requirement for ELECTRIC is
limited to Classes 1, 11, 19, and 21, we consider the term’s significance in the context
of the goods identified in each of these classes, with a focus on the goods that the
Examining Attorney has identified as being relevant.
Class 1
The Examining Attorney has not shown that ELECTRIC is understood by the
relevant public primarily as a reference to any genus of goods in this class. A review
of the goods in this class reveals that they may be best classified in general terms as
chemicals used in the production of electrical components. To wit, the Examining
Attorney specifically references the following:
Chemicals used for forming dielectric layers on electric and electronic
components, forming ribs for pixels located inside of a display panel,
forming coated layers, binding metallic powder, binding or powdery
coating.

16 Taken from MacMillan Dictionary (www.macmillandictionary.com), submitted by the
Examining Attorney with Office action dated July 9, 2014.
Serial No. 79137917
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These are not, as the Examining Attorney suggests, “goods that are electric
or for use with electric goods.”17 On the record before us, we find that ELECTRIC
is not generic for the goods identified in Class 1 and a disclaimer is not
warranted.
Class 11
Applicant’s goods in Class 11 include “electrical lamps.” Inasmuch as the genus of
for these goods may be classified as “electric(al) lamps” or “electric lighting fixtures,”
the term ELECTRIC is generic for these goods. The expression “generic name for the
goods or services” is not limited to noun forms but also includes “generic adjectives,”
that is, adjectives which refer to a genus or species, category or class, of goods or
services. See, e.g., In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389
(TTAB) 1991). Accordingly, we agree with and affirm the Examining Attorney’s
requirement of a disclaimer of the term for Class 11.
Class 19
The Examining Attorney has not shown that ELECTRIC is understood by the
relevant public primarily as a reference to any genus of goods in Class 19. The goods
in this class are building materials, none of which may be classified as “electric(al)”
in nature. The Examining Attorney specifically references the identified “building
glass used for internal walls of electric furnaces for burning electronic component,”
as being relevant for purposes of our genericness; however, it is clear that these are
not “electric goods,” but merely building materials used in a section of electric

17 5 TTABVUE 3.
Serial No. 79137917
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furnaces. The term ELECTRIC does not refer to the genus of these goods, or any other
goods identified in Class 19, and a disclaimer is not warranted.
Class 21
The Examining Attorney has not shown that ELECTRIC is understood by the
relevant public primarily as a reference to any genus of goods in Class 21. The goods
in this class are types of glass, none of which may be classified as “electric(al)” in
nature. The Examining Attorney references the following goods as particularly
relevant: “glass used for electric wires and cables”; however, it is clear that these are
not “electric goods,” but merely to be used with or in electric or electronic goods. The
term ELECTRIC does not refer to the genus of these goods, or any other goods
identified in Class 21, and a disclaimer is not warranted.
D. The Public’s Understanding of the Term GLASS
We now consider the term GLASS and whether it may be understood by the
relevant public primarily to refer to any genus of goods in each of application’s classes
of goods. Again, we have reviewed the entire identification of goods, but place
emphasis on the goods that the Examining Attorney has identified as being relevant
and address the disclaimer requirement on a class-by-class basis.
We further note that the term “glass” is used frequently in several of the classes
to describe an ingredient or feature of the goods. In this regard, the Board has long
held that a term may be generic if it serves to identify a principal ingredient or key
characteristic of the goods. See In re Demos, 172 USPQ 408, 409 (TTAB 1971)
(CHAMPAGNE “merely names the principal ingredient of (applicant's) salad
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dressing and to that extent … forms part of the normal nomenclature therefor, i.e.,
champagne salad dressing” and therefore “is deemed unregistrable”); and In re Hask
Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA ‘N'PLACENTA for hair
conditioner, “designation accurately describes the two key elements of the product to
which applied, invests these generic terms with no special or new significance or
different commercial impression to support a finding of trademark ‘capability”’). See
also, In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (ATTIC
“directly names the most important or central aspect or purpose of applicant's goods,
that the sprinklers are used in attics, this term is generic and should be freely
available for use by competitors”). In a similar vein, the Federal Circuit considered
whether a type of cooked meat was generic for restaurant services:
a term can be generic for a genus of goods or services if the relevant public
. . . understands the term to refer to a key aspect of that genus—e.g., a key
good that characterizes a particular genus of retail services. “A generic
name of goods may also be a generic name of the service of selling or
designing those goods.” We have held that “[t]he test is not only whether
the relevant public would itself use the term to describe the genus, but also
whether the relevant public would understand the term to be generic. Any
term that the relevant public understands to refer to the genus ... is
generic.” (Internal citations omitted).

In re Cordua, United States Court of Appeals for the Federal Circuit, May 13, 2016,
__ F.3d __ (2016 WL 2786364). In Cordua, the Federal Circuit found “churrascos” (a
meat dish) generic for restaurant services based on “substantial evidence in the
record that ‘churrascos’ refers to a key aspect of a class of restaurants because those
restaurants are commonly referred to as ‘churrasco restaurants.’” Id.
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Thus, if the evidence establishes that the relevant public understands the term
as identifying a principal ingredient or key aspect of the goods, the term may be
generic. We reiterate, though, the scarcity of evidence of third-party use of the term
in connection with similar goods or evidence reflecting consumer perception of the
term in connection with the relevant goods.
Classes 9, 11, 17, 19, 21, 22, 23 and 24
We find that the term GLASS is generic for, at a minimum, the following goods:
“Infrared-ray absorbing glass, not for building” in International Class 009; “Glass
windows sold as a part of stoves” in International Class 011; “Fiberglass for
insulation” in International Class 017; “Building glass” in International Class 019;
“Glass, unworked or semi-worked, namely, glass substrates, glass tubes . . .” in
International Class 021; “Glass fibers for textile use” in International Class 022;
“Fiberglass thread and yarn, for textile use” in International Class 023; and
“Fiberglass felts and non-woven fabrics” in International Class 024. As a result,
Applicant must disclaim exclusive use of the term in these classes.
In Classes 9, 19, 21, and 22, the goods are various types of glass and the term
GLASS is thus clearly generic for these goods. Specifically, the glass identified in
these classes is classified and described by its intended purposes or characteristics,
i.e., glass that is “infrared-ray absorbing” (Class 9), glass used for “building” (Class
19), “unworked and worked” glass in various forms such as “substrates” and “tubes”
(Class 21) and glass fibers “for textile use” (Class 22). Simply put, the aforementioned
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goods can be placed in the genus of “glass” or various subgenera based on their
intended purpose.
As to Class 11, we noted that Applicant’s website identifies a segment of its
“business and main products” as “glass for electronic devices,”18 and this would
include the “glass windows sold as a part of stoves.”
Finally, with respect to Classes 17, 23 and 24, the goods include fiberglass for
insulation (Class 17) or fiberglass in different forms -- thread and yarn (Class 23) or
felts and non-woven fabric (Class 24). The term “fiberglass” is defined as “(1) glass in
fibrous form used in making various products (as glass wool for insulation); (2) a
composite structural material of plastic and fiberglass.”19 Based on one of its defined
meanings, fiberglass is merely glass in fibrous form and Applicant’s fiberglass goods
are, in essence, types of glass.
Classes 1, 6, 7, 10 and 20
The Examining Attorney has not demonstrated that the term GLASS is generic
for any of the goods in Classes 1, 6, 7, 10 and 20. Although the term “glass” is used in
these classes to describe the goods, it is not readily apparent from the identification
nor does the evidence show that glass is a key feature or primary ingredient and the

18 Office action dated November 14, 2013. TSDR pages 26-28.
19 “Fiberglass." Merriam-Webster.com. Merriam-Webster, 24 May 2016. The Merriam-
Webster Online Dictionary is based on the print version of Merriam-Webster's Collegiate
Dictionary, Eleventh Edition. The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist
in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).
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relevant consumer will understand “glass” as a reference to a genus of any of the
goods in these classes. To wit, the Examining Attorney specified “Chemicals
containing glass for use in industry” in International Class 001 as being relevant;
however, we cannot infer from this identification that glass is the primary ingredient
of these chemicals or that consumers would necessarily recognize “glass” as referring
to a category of such chemicals. In contrast to Cordua and similar decisions, cited
infra, there is no evidentiary basis for us to conclude that consumers are aware of
chemicals with glass as a genre of che micals.
As to the “loading and unloading pallets of metal for use in the manufacture of
glassware” in International Class 006, even if these pallets are used in the
manufacture of glass, the stated relationship between these pallets and glass is
tangential and it has not been shown that GLASS is a generic name for this category
of pallets.
The genus of goods in Class 7 is “conveyors used in factories” and there is no
evidence showing that GLASS refers to a category of such conveyors. While the stated
purpose of Applicant’s conveyors is “to be used in the manufacture or processing” of
glass, we cannot conclude that there is a class or category of conveyors having the
primary purpose of manufacturing or processing glass.
Finally, with respect to the “glass syringes for medical purposes” in Class 10 and
“furniture using radiation shield glass, namely, single-leaf screens, folding screens
and partitions” in Class 020, even if these are goods composed, in part or entirely, of
glass, the genera of goods are syringes and furniture screens and there is no evidence
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that their composition plays a sufficiently important role in the description or
characterization of the goods to be considered generic.
V. Conclusion
We affirm the Examining Attorney’s requirement for disclaimer of the term
ELECTRIC in International Class 11 and the requirement for a disclaimer of GLASS
in International Classes 9, 11, 17, 19, 21, 22, 23 and 24. The disclaimer requirement
is otherwise reversed.
We have carefully considered all arguments of record, including those that are not
specifically addressed above. We make our decisions herein keeping in mind, as
Applicant correctly pointed out, that we must resolve doubt in favor of Applicant
when making determinations of genericness. We also are mindful that the Examining
Attorney bears the burden of proof and must present clear and convincing evidence
of the term’s generic meaning to the relevant consumer.
Decision: The refusal to register Applicant’s mark based on the requirement,
made under Trademark Act § 6(a), for a disclaimer of the terms ELECTRIC and
GLASS is affirmed, in part, and reversed, in part.
The portion of this decision that affirms the refusal will be set aside if Applicant
submits the required disclaimers to the Board within thirty days from the date of this
decision. Trademark Rule 2.142(g), 37 CFR § 2.142(g). In order to comply with our
decision, a properly worded disclaimer should be as follows:20

20 See TMEP §1213.08(a)(i).
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No claim is made to the exclusive right to use ELECTRIC apart from the
mark as shown for the goods in International Classes 11.
No claim is made to the exclusive right to use GLASS apart from the mark
as shown for the goods in International Classes 9, 11, 17, 19, 21, 22, 23
and 24.
Applicant is allowed 30 days to file the required disclaimer, failing which, the
application will be abandoned, in due course, with respect to the classes of goods
where we have affirmed the refusal, namely, Classes 9, 11, 17, 19, 21, 22, 23,
and 24. The remaining classes, Classes 1, 6, 7, 10, and 20, will move on to
publication.