Bridgestone Corporation

Trademark Trial and Appeal Board

Aug 19, 2009

No. 79045242 (T.T.A.B. Aug. 19, 2009)

Mailed: August 19, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bridgestone Corporation
________

Serial No. 79045242
_______

Cynthia C. Weber of Sughrue Mion, PLLC for Bridgestone
Corporation.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Hairston and Ritchie, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Bridgestone Corporation filed an application to
register the mark COOLING FIN (in standard character form)
for “vehicle tires and tubes, namely, tires for passenger
cars, tires for trucks, tires for buses, tires for racing
cars, tires for automobiles, inner tubes for passenger
cars, inner tubes for trucks, inner tubes for buses, inner
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79045242
2
tubes for racing cars and inner tubes for automobiles” in
International Class 12.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of the
identified goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
The examining attorney maintains that the mark COOLING
FIN is merely descriptive of applicant’s goods because “it
conveys to consumers that the goods feature a fin with a
cooling feature or purpose.” (12/20/2007 Office action, p.
2). In support of the refusal, the examining attorney
submitted the following dictionary definitions:
cooling: n. 1. the action of making or becoming
less warm or hot; adj. 2a. that makes cool or
cooler. Oxford English Dictionary Online

fin: 2. something resembling a fin in shape or
function, as: a. a fixed or movable airfoil used
to stabilize an aircraft, missile, or projectile
in flight. b. a thin, usually curved projection
attached to the rear bottom of a surfboard for
stability. c. a projecting vane used for
cooling, as on a radiator or an engine cylinder.
The American Heritage Dictionary of the English
Language (Fourth Edition 2000)

1 Serial No. 79045242, filed on March 19, 2007 under the Madrid
Protocol, Section 66(a) of the Trademark Act, 15 U.S.C. §1141(f),
based on International Registration No. 0940954.
Serial No. 79045242
3
In addition, the examining attorney points to a news
release at applicant’s website which states, in pertinent
part:
Bridgestone Develops New “COOLING FIN” Technology
for Runflat Tires

Tokyo (Aug. 1, 2007) – Bridgestone Corporation
has developed new ‘COOLING FIN’ technology that
expands the vehicle application potential for
runflat tires. Runflat tires enable the driver
to drive up to a specified distance at a
specified speed (80 km at 80 kph) following a
loss of air pressure.
The challenge facing runflat technology was to
devise a way to minimize the heat caused by
deformation of the sidewall when driving on a
sidewall-reinforced type runflat tire that has
lost air. COOLING FIN technology is a new
paradigm that uses disturbances in the airflow
created by protrusions on the surface of the tire
sidewall – that face in towards the center of the
wheel – to cool the tire sidewall.
This advancement allows the development of
runflat tires for certain SUVs, CUVs, minivans
and large passenger cars where the high tire
cross-section causes a significant amount of heat
to be generated on the sidewall when driving with
low air pressure. (footnotes omitted).

Applicant, on the other hand, contends that the mark
COOLING FIN does not immediately or directly describe
applicant’s vehicles tires and tubes. Rather, according to
applicant, consumers must exercise some thought or
imagination to arrive at an understanding of the nature of
applicant’s goods. Applicant maintains that “[t]he use of
fins in connection with heat transfers in the context of
vehicle tires and tubes is not common, nor readily
Serial No. 79045242
4
associated with vehicle tires and tubes.” (Brief, p. 4).
In this regard, applicant submitted a “Wikipedia” entry for
“Fin (extended surface)” which discusses “Fin Uses”: “Fins
are most commonly used in heat exchanging devices such as
radiators in cars and heat exchangers in power plants.
They are also used in newer technology hydrogen cells.”
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used or is intended to be used on or in connection
Serial No. 79045242
5
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use; that a
term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When the applied-for mark is considered in relation to
applicant’s goods, COOLING FIN immediately informs
prospective purchasers that applicant’s vehicle tires
feature fins on the tire sidewall that cool the sidewall,
i.e., “cooling fins.” It is clear that this is a
significant feature of applicant’s goods since applicant’s
press release indicates that “[t]he challenge facing
runflat technology was to devise a way to minimize heat
caused by deformation of the sidewall when driving on a
sidewall-reinforced type runflat tire that has lost air.
COOLING FIN technology is a new paradigm that uses
disturbances in the airflow created by protrusions on the
Serial No. 79045242
6
surface of the tire sidewall – that face in towards the
center of the wheel – to cool the tire sidewall.”
We do not take issue with applicant’s contention that
the use of fins in connection with heat transfers in the
context of vehicle tires is not common. Indeed, the
“Wikipedia” entry submitted by applicant states that
“[f]ins are most commonly used in heat exchanging devices
such as radiators in cars and heat exchangers in power
plants.” Nonetheless, this entry also states that “[i]n
the study of heat transfer, a fin is a surface that extends
from an object to increase the rate of heat transfer to or
from the environment by increasing convection.” (emphasis
in original). Also, the definition of “fin” as “something
resembling a fin in shape or function” such as “a
projecting vane used for cooling,” clearly encompasses a
fin-like protrusion on a tire sidewall that is used for
cooling the sidewall, as unusual as that may be.
We recognize that there is no evidence of third-party
uses of the term “cooling fin” in connection with vehicle
tires. However, it is not necessary that a designation be
in common usage in the particular industry in order for it
to be merely descriptive. In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983). The absence,
therefore, on this record of any third-party uses of the
Serial No. 79045242
7
term does mean that competitors of applicant would not need
to use such term to describe their vehicle tires if they
were to adopt a similar feature to that of applicant’s
vehicle tires.
When considered in connection with applicant’s goods,
the term COOLING FIN immediately describes, without
conjecture or speculation, a significant feature of
applicant’s vehicle tires. Nothing requires the exercise
of imagination or mental processing in order for purchasers
of and prospective customers for applicant’s goods to
readily perceive the merely descriptive significance of the
term COOLING FIN as it pertains to applicant’s goods.
Decision: The refusal to register is affirmed.