Parker Hannifin Customer Support Inc.

Trademark Trial and Appeal Board

Feb 14, 2001

No. 75568065 (T.T.A.B. Feb. 14, 2001)

2/14/01
Paper No. 7
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Parker Hannifin Customer Support Inc.
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Serial No. 75/568,065
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John A. Molnar, Jr., of Parker-Hannifin Corporation for
Parker Hannifin Customer Support Inc.
Tracy Cross, Trademark Examining Attorney, Law Office 103
(Michael A. Szoke, Managing Attorney).
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Before Seeherman, Hairston and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On September 22, 1998, applicant filed an intent-to-
use application for the mark MACHINESHOP (typed drawing)
for goods ultimately identified as “computer software for
use in managing machine control software applications in
the field of manufacturing.”1 The examining attorney
refused to register the mark on the grounds that the mark
1 Serial No. 75/568,065, filed September 22, 1998, based on an intention
to use the mark in commerce. The original applicant was identified as
Parker Intangibles Inc. Subsequently, a Certificate of Merger was
filed indicating that Parker Intangibles was merged into Parker
Hannifin Customer Support Inc. See Amendment and Response dated
November 3, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/568,065
2
when applied to the goods is merely descriptive of the
goods and, in the alternative, that if the mark is not
merely descriptive of the goods, it is deceptively
misdescriptive of the goods. 15 U.S.C. § 1052(e)(1).
After the refusal was made final, this appeal followed.
Applicant and the examining attorney have filed briefs. An
oral hearing was not requested.
Because we conclude that the mark MACHINESHOP is
merely descriptive when applied to computer software for
use in managing machine control software applications in
the field of manufacturing, we affirm the refusal of the
examining attorney to register the mark on the ground that
the mark is merely descriptive.2
A machine shop is defined as:
1. a factory, section of a factory, or workshop in
which machines are made or fixed.
2. a shop in which machine tools are used to shape
and cut materials, esp. metals.
See www.wordsmyth.net, Office Action dated February 14,
2000. Applicant’s software manages software that controls
machines in the manufacturing process. A machine shop uses
machines to make or manufacture machines and parts. See
2 We do not reach the misdescriptive refusal because the identification
of goods and evidence of record clearly supports the holding that the
mark is merely descriptive of the goods.
Ser No. 75/568,065
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britannica.com, Office Action dated February 14, 2000.
Therefore, applicant’s goods, as identified, would include
software for use in managing machine control applications
in machine shops. Applicant does not assert that its goods
are not intended for use in machine shop processes or in a
machine shop environment.
The evidence shows that software is used in, and
designed for, machine shops.
It’s called Factory Manager System and provides
factories and machine shops with the software tools to
help control virtually every department related to
manufacturing . . . .” Modern Machine Shop, Oct.
1997, p. 170.
Software and other technology for the machine shop at
the Center for Technical Education at Leominister High
School will be purchased . . . . . Worcester Telegram
& Gazette, April 11, 1999, p. 11.
JobBoss for Windows 3.1 is a 32-bit shop management
software that is optimized for use in machine shops
that serve the aerospace industry. Aviation Week and
Space Technology, February 23, 1998, p. 121.
With no hesitation, Hudspeth identifies area machine
shops as his salestargets [sic]. “This is the biggest
need right now . . . for the machine shops toacquire
[sic] the software so they can have the tools to work
smarter . . . .” Wichita Eagle, June 29, 1997, What’s
New Column.
What I was looking at was Mindbridge-developed
Software that is designed specifically for small
machine shops employing between 15 and 75 persons. It
is called Realtrac because it is a real-time, full-
featured shop floor management system for tracking
activity within the shop. Iron Age, September 5,
1986, p. 41.
Ser No. 75/568,065
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Additional evidence further emphasizes the common use
of the term “machine shop” to describe software designed
for machine shop environments. For example:
Armchair Machinist Software is described as “the
EASIEST to use Machine Shop Software available.”
http://www.ixpres.com/armchair/ (updated July 23,
1998).
Another article indicates that C&R Manufacturing
“offers . . . C&R custom-designed machine shop
software . . . .” Mid-America Commerce & Industry,
Feb. 1997, p. 20.
PC Depot’s Online Tech website has a page entitled
“Machine Shop Software” with the phrase “machine shop
software designed for the machinist or engineer.”
http://pc-depot.com (updated October 10, 1998).
Therefore, not only is software in general widely used
in machine shops but there is evidence that certain
software is specifically referred to as “machine shop
software.” If a machinist, engineer, or factory manager
came across software with the term ‘machine shop” on
software designed to manage machine control software
applications in the filed of manufacturing, the term would
immediately convey to that potential purchaser a
characteristic of the goods, i.e., that the software was
designed to be used in a machine shop environment.
Applicant argues that its goods are a suite of
computer software programs that is used in managing
Ser No. 75/568,065
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software applications. The application software, in turn,
provides an interface through which an operator can setup,
operate, monitor, or otherwise control one or more machines
used in manufacturing environments. Applicant’s Amendment
and Response dated October 29, 1999, p. 2. While applicant
appears to be making the distinction that applicant’s
software manages the software that controls the machines,
it is apparent that this software is suited for use in a
machine shop. The term “machineshop” would accurately
describe a suite of software designed to manage the
software that controls the machinery used in a machine shop
regardless of whether applicant’s software is different
from software currently used in machine shops.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods. In re Quik-Print Copy Shops, Inc., 616 F.2d
523, 525, 205 USPQ 505, 507 (CCPA 1980); In re Gyulay, 820
F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). To
be “merely descriptive,” a term need only describe a single
quality or property of the goods. Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 807, 120 USPQ 293,
294 (CCPA 1959). Of course, the descriptiveness of a mark
is not considered in the abstract, but in relation to the
particular goods or services for which registration is
Ser No. 75/568,065
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sought. In re Abcor Development Corp., 588 F.2d 811, 814,
200 USPQ 215, 218 (CCPA 1978). The absence of a space
between “machine” and “shop” does not eliminate the
descriptive nature of the mark. Id. The term is
descriptive whether it is spelled as one word or two.
Here, a prospective purchaser encountering the term
“machineshop” on software would likely conclude that the
software was designed to be used in a machine shop. This
conclusion is fully supported by the evidence of record and
the term, therefore, would immediately convey to these
purchasers a characteristic of the goods, i.e., that they
are designed for use in machine shops.
Applicant argues that the term “machineshop” has a
non-descriptive meaning that would make its mark not merely
descriptive. See In re Colonial Stores, 394 F.2d 549, 157
USPQ 382 (CCPA 1968) (Phrase SUGAR & SPICE from nursery
rhyme not merely descriptive for bakery products).
Rather, the mark is in fact a play on the common
meaning of the term “machine shop.” That is, and as
the Examining Attorney has made of record, a “machine
shop” is a “factory, section of [a] factory, or
workshop where machines are made or fixed,” or “a shop
in which machine tools are used to shape and cut
materials, esp. metals.” Literally, at the first
level of definition, a shop where machines are used to
make or fix other machines or tools. The identified
goods, literally, function as a “machine shop” for
application software in that an operator will use
Applicant’s “MACHINESHOP” program to “fix” or manage
control application software.
Ser No. 75/568,065
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Applicant’s Brief on Appeal, pp. 4-5.
It is highly unlikely that prospective purchasers will
make the imperfect and subtle analogy that applicant draws
between a traditional machine shop and a suite of computer
programs. This is particularly true when it is apparent
that applicant’s goods can be used in a machine shop
environment and the term merely informs potential
purchasers of that fact. In re Wells Fargo & Co., 231 USPQ
95 (TTAB 1986) (Public unlikely to make the connection
between mark EXPRESSERVICE and Pony Express).
Also, applicant relies on Blisscraft of Hollywood v.
United Plastics Co., 294 F.2d 694, 700, 131 USPQ 55, 60 (2d
Cir. 1961) (POLY PITCHER not descriptive for plastic
pitcher). However, our primary reviewing court, the Court
of Appeals for the Federal Circuit, has held that an
applicant did not benefit from the Blisscraft ruling when
its mark was not coined or fanciful. Gyulay, 3 USPQ2d at
1010 (APPLE PIE held to be descriptive of potpourri).
Here, not only is applicant’s mark not coined or fanciful,
it is term used in the industry to refer to software
employed in machine shops.
Ser No. 75/568,065
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Decision: The refusal to register on the ground that
the mark MACHINESHOP is merely descriptive of the goods is
affirmed.
Ser No. 75/568,065
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