Arcturus Engineering, Inc.

Trademark Trial and Appeal Board

Sep 20, 2000

No. 75393168 (T.T.A.B. Sep. 20, 2000)

Paper No. 14
JQ
9/20/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Arcturus Engineering, Inc.
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Serial No. 75/393,168
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Linda G. Alvarez and Andrew P. Bridges of Wilson Sonsini
Goodrich & Rosati for applicant.
Glenn G. Clark, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Hanak, Quinn and McLeod, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Arcturus Engineering,
Inc. to register the mark CAPSURE for “scientific and
laboratory instruments, namely, transfer film carriers for
use in laser capture microdissection” (in International
Class 9) and “medical instruments, namely, transfer film
carriers for use in laser capture microdissection” (in
International Class 10).1

1 Application Serial No. 75/393,168, filed November 19, 1997,
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/393,168
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, when applied to
applicant’s goods, is merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
The Examining Attorney maintains that the applied-for
mark is the phonetic equivalent of the term “capture”
and/or a deliberate misspelling thereof. The Examining
Attorney argues that the term, as applied to applicant’s
goods used in laser capture microdissection, merely
describes a function or feature of them. In support of the
refusal, the Examining Attorney submitted dictionary
listings of the term “capture” and an excerpt retrieved
from applicant’s Web page.
Applicant contends that the mark is just suggestive
and that the Examining Attorney has not satisfied his
burden to show mere descriptiveness. More specifically,
applicant argues that its mark is not the phonetic
equivalent of the term “capture,” but rather is an
inventive triple entendre which merely suggests an indirect
connection between applicant’s goods and the process with
which they are used. Applicant submitted informational
Ser No. 75/393,168
3
literature on its goods, as well as two articles from trade
publications.
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods.
In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). A mark is
descriptive if it "forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the
goods." Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976) (emphasis
added). See also: In re Abcor Development Corp., 616 F.2d
525, 200 USPQ 215 (CCPA 1978). Moreover, in order to be
descriptive, the mark must immediately convey information
as to the ingredients, qualities or characteristics of the
goods with a "degree of particularity." Plus Products v.
Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-
1205 (TTAB 1981). See also: In re Diet Tabs, Inc., 231
USPQ 587, 588 (TTAB 1986); Holiday Inns, Inc. v. Monolith
Enterprises, 212 USPQ 949, 952 (TTAB 1981); and In re TMS
Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978).
Given the descriptiveness refusal and the highly
technical function of applicant’s goods, it is important to
understand the nature of these goods in order to reach an
informed decision. The printed materials of record
Ser No. 75/393,168
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corroborate the following explanation set forth by
applicant:
Laser capture microdissection (LCM) is
a revolutionary technology which allows
researchers to isolate a single cell or
particular cells from a specimen
containing perhaps hundreds of
different types of cells. The
researcher identifies particular cells
of interest in a specimen through a
specialized microscope which is
equipped with a video camera and a
laser mechanism. Once the cell or
cells which are of interest are
identified, the researcher directs the
laser at the desired cells within the
specimen. The laser melts a highly
focused portion of a clear plastic film
to which the targeted cells become
attached, leaving the remainder of the
tissue specimen behind. The plastic
film is situated on the underside of a
cap which fits directly onto the
laboratory tubes which will allow for
the subsequent analysis of the cell or
cells, resulting in a lesser degree of
handling of the targeted cells and a
diminished risk of contamination of the
specimen. The goods identified by the
CAPSURE mark are the combination film
carrier-Eppendorf tube cap which allow
the transfer of the selected cells to
cell digestion reagents with minimal
handling and lapse of time.
Applicant contends that the word “capture”
communicates only vague information about the goods. We
agree with applicant, in any event, that its mark is not
likely to be viewed as the phonetic equivalent of the term
“capture.” We recognize that one of the dictionaries
Ser No. 75/393,168
5
relied upon by the Examining Attorney shows the
pronunciation as “kàp-cher” only, while a listing in
another dictionary does show two pronunciations, namely
“kap-cher” and “kap-sher.” In this connection, however, we
note that the applied-for mark, as actually used by
applicant, appears as “CapSure.” This actual use, which is
how purchasers and potential purchasers will encounter the
mark, serves to visually and phonetically distinguish the
mark from the commonly understood word “capture.”
Another significant factor in reaching our decision is
the way the mark plays on the respective meanings of “cap,”
“sure” and “capture.” Applicant’s argument, which we find
persuasive, is as follows:
Applicant’s mark, CAPSURE, creates a
distinctive triple entendre, playing on
the respective meanings of “cap.”
“sure” and “capture.” The “cap”
portion of the mark suggests the unique
shape of the Applicant’s product which
enables it to be fitted over the
opening of a test tube. The “sure”
portion of the mark suggests the idea
that one is certain to transfer an
uncontaminated sample. Together, the
“cap” and “sure” elements create a
coined word which, indirectly, conjures
up the verb “capture.” It does not,
however, convey an “immediate idea of
[the] ingredients, qualities or
characteristics of the goods.”
[citation omitted] The similarity in
sound between CAPSURE and “capture,” if
anything, suggests an indirect
connection between the Applicant’s
Ser No. 75/393,168
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transfer film carriers and the process
with which they are used--laser capture
microdissection.
In sum, applicant’s mark will not be perceived, as the
Examining Attorney suggests, as just a misspelled word.
Given the meanings pointed to above, applicant’s mark has a
different commercial impression or connotation from that
conveyed by a misspelling of the word “capture.” In view
of the inventive nature of the mark, being a play on the
words “cap,” “sure” and “capture,” we believe that the
meaning or commercial impression of applicant’s mark will
be more than that simply of the word “capture.” See: In
re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974
(TTAB 1994)[MUFFUNS is not merely descriptive of baked
muffins]. As applicant points out, registration of the
involved mark will not preclude others from making ordinary
descriptive use of the term “capture” in connection with
other products in the field of laser capture
microdissection.
Ser No. 75/393,168
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Decision: The refusal to register is reversed.
E. W. Hanak
T. J. Quinn
L. K. McLeod
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/393,168
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