Degussa GmbH

Trademark Trial and Appeal Board

Mar 4, 2008

No. 79022373 (T.T.A.B. Mar. 4, 2008)

Mailed:
March 4, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Degussa GmbH
________

Serial No. 79022373
_______

Scott D. Woldow of Smith Gambrell & Russell, LLP for
Degussa GmbH.

Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Bucher, Drost and Kuhlke, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark PERACLEAN (in standard character format) for
goods identified in the original application as follows:
“chemical products for industrial use, in
particular raw materials for chemical
syntheses” in International Class 1;

“bleaching agents” in International Class 3;

and

“disinfectants” in International Class 5. 1

1 Application Serial No. 79022373 was filed on March 17, 2006
based upon an International Registration under Section 66(a) of
the Trademark Act, 15 U.S.C. §1141f(a), and includes an
allegation of a bona fide intention to use the mark in commerce.
Applicant is also the owner of Registration No. 2424321 for
the mark PERACLEAN for “chemicals used in industry, namely,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79022373
- 2 -

In her initial Office action, the Trademark Examining
Attorney required clarifying amendments to the
identification of goods in International Classes 3 and 5 in
order to specify the intended purpose of the bleaching
agents and disinfectants. Eventually, applicant provided
acceptable identifications for these two classes of goods.2
The sole issue on appeal herein is the Trademark
Examining Attorney’s refusal to register the mark as to
International Class 1 based upon applicant’s failure to

compounds with active oxygen content for chemical synthesis,
particularly for oxidation and epoxidation reactions; chemicals
used in industry, namely, raw materials used in the manufacture
of disinfection and bleaching preparations namely, peracetic
acid, except for use in dishwhashing and in kitchens” in
International Class 1, issued on January 30, 2001; Section 8
affidavit (six-year) accepted.

2 The two acceptable classes of goods, as amended, are as
follows:

“bleaching agents for industrial cleaning purposes,
bleaching agents for use in laundry, bleaching agents for
use on hair, bleaching agents for use on fibres, bleaching
agents for use in the textile industry, bleaching agents
for use in the paper industry, but not including bleaching
agents for use in dish washing or in kitchens and not
including bleaching agents for use in the printing,
packaging and converting industries” in International Class
3; and

“all purpose disinfectants, disinfectants for industrial
use, disinfectants for household use, disinfectants for
medical instruments, disinfectants for the food and
beverage industry, disinfectants for the laundry industry,
disinfectants for the paper industry, disinfectants for
cooling water, disinfectants for waste water, disinfectants
for ballast water, disinfectants for vegetable washing
Serial No. 79022373
- 3 -
comply with the requirement of the Trademark Examining
Attorney to submit an amended identification of goods in
compliance with Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a).3
Applicant and the Trademark Examining Attorney have
submitted briefs. We affirm the refusal to register the
goods only in International Class 1, sending the mark on to
publication as to the remaining classes of goods.
The relevant prosecution history of this case reflects
much wrangling back and forth over various proposed
formulations of the amended identification of goods in
International Class 1. The several interim formulations
need not clutter this opinion. The following
identification of goods is applicant’s latest proposed
amendment, with highlighting added for that portion still
rejected by the Trademark Examining Attorney:
“chemicals used in industry, namely,
compounds with active oxygen content for
chemical synthesis, for oxidation and for
epoxidation reactions; chemicals used in
industry, namely, raw materials used in the

water, disinfectants for animal hygiene, disinfectants for
carcass washing” in International Class 5.
3 § 2.71 Amendments to correct informalities.
The applicant may amend the application during the course
of examination, when required by the Office or for other
reasons.
(a) The applicant may amend the application to
clarify or limit, but not to broaden, the
identification of goods and/or services.

Serial No. 79022373
- 4 -
manufacture of disinfection and bleaching
preparations; chemicals for use in industry,
namely, peracetic acid; chemicals for use in
industry; chemicals for use in industry and
science; chemical additives for use in the
manufacture of a wide variety of goods;
specialty chemicals, namely, chemical
additives for general industrial use in the
manufacture of a wide variety of goods;
catalysts for use in the manufacture of
industrial chemicals; catalysts for chemical
and biochemical processes; chemical
additives for fuel treatment; chemical
agents for chelating and sequestering” in
International Class 1.

This appeal turns on the correctness of the Trademark
Examining Attorney’s interpretation of the conjunctive
adverb, “ … , in particular … ” within applicant’s original
identification of goods, as filed. Specifically, as noted
above, the goods in International Class 1 were filed as
follows: “chemical products for industrial use, in
particular raw materials for chemical syntheses.”
[emphasis supplied]. Despite agreement on the non-
highlighted balance of the verbiage in applicant proposed
amendment to the goods (immediately above), the current
stalemate is over the issue of whether or not the following
three phrases in applicant’s latest proposal exceed the
scope of the goods as filed:
• “chemicals for use in industry, namely, peracetic
acid,”
Serial No. 79022373
- 5 -
• “chemicals for use in industry,” and
• “chemicals for use in industry and science”
without the addition of the limiting language required by
the Trademark Examining Attorney, of “for chemical
syntheses” after this three-part listing of industrial
chemicals.
In order to place our resolution of this semantical
difference in the proper context, we note that applicant’s
original identification of goods in International Class 1
was not found to be indefinite. In fact, this was the only
class of goods that the Trademark Examining Attorney deemed
to be acceptable upon first reviewing the application for
informalities. The problem occurred when, in responding to
the Trademark Examining Attorney’s initial refusal of
indefiniteness as to classes 3 and 5, applicant proposed an
amendment of more than a hundred words to replace the
dozen-word listing contained in International Class 1 that
the Trademark Examining Attorney had deemed to be definite
and acceptable.
As the time this appeal was taken, applicant and the
Trademark Examining Attorney had reached agreement upon
appropriate wording for 85% of the class of goods.
However, inasmuch as no acceptable amendment to the
Serial No. 79022373
- 6 -
identification of goods in International Class 1 has been
accepted by the Office prior to this appeal, should we
determine that the Trademark Examining Attorney is correct,
applicant is left with a listing of goods that is still
indefinite, and hence the entire class would have to be
deemed unacceptable.
The concern of the Trademark Examining Attorney is
that the broad phrase common to all three of the rejected
goods (“chemicals for use in industry…”) exceeds the scope
of the original identification of goods, limited to “raw
materials for chemical syntheses.” She has taken the
position that this amendment, if permitted, could well
modify applicant’s channels of trade, and affect other
du Pont factors.4 Were the Office to permit applicant undue
latitude in changing the identification of goods or
recitation of services during the course of prosecuting an
application, it could well jeopardize the rights of a third
party (e.g., someone prepared to adopt a similar mark
sometime after March 2006 who had searched the records of
the United States Patent & Trademark Office and then made a

4 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362,
177 USPQ 563, 567-68 (CCPA 1973) sets forth the factors which, if
relevant, should be considered in determining likelihood of
confusion.

Serial No. 79022373
- 7 -
decision on potential instances of likelihood of
confusion). Such a party might well rely to its detriment
upon the scope of the original identification of goods –
that is, if reading this applicant’s initial identification
of goods with the perspective argued by the Trademark
Examining Attorney.
Section 7(c) of the Trademark Act, 15 U.S.C.
§ 1057(c), provides that filing an application for
registration on the Principal Register establishes
constructive use and nationwide priority, contingent upon
issuance of the registration. Therefore, the
identification of goods and services in an application
defines the scope of those rights established by the filing
of an application for the Principal Register.
The structure of the original intent-to-use rules
promulgated in 1989 as reflected in almost twenty years of
Office practice was calibrated to establish a reasonable
and pragmatic system for applicants, while taking into
consideration the important interests of third parties
operating in the marketplace.5

5 The Trademark Examining Operation is correct in
interpreting this rule with care. A primary objective of the
constructive use provisions of the intent-to-use system (§7(c) of
the Lanham Act as amended) was ensuring clear notice to third
parties, thereby providing greater certainty in the acquisition
of trademark rights. This principle that has been followed
Serial No. 79022373
- 8 -
In practical terms, the fundamental disagreement
between applicant and the Trademark Examining Attorney is
how to interpret the meaning of the transitional term
beginning with “ … , in particular ….” We turn then to the
language of the Trademark Manual of Examination Procedure:
1402.03(a) Inclusive Terminology

The identification should state common names
for goods or services, be as complete and
specific as possible and avoid indefinite
words and phrases. The terms “including,”
“comprising,” “such as,” “and the like,”
“and similar goods,” “products,” “concepts,”
“like services” and other indefinite terms
and phrases are almost always unacceptable.

The terms “namely” and “consisting of” are
definite and are preferred whenever setting
forth an identification that requires
greater particularity. Vague terminology
should be replaced by “namely” and
“consisting of” whenever possible.

consistently – from the time the Trademark Review Commission
released its report, during the Congressional proceedings leading
to passage of the Trademark Law Revision Act of 1988, through
development of the Trademark Rules and the instructions contained
in the first intent-to-use examination guidelines that were later
reflected in the Trademark Manual of Examining Procedure (TMEP),
during all the Patent and Trademark Office lectures for trademark
practitioners and Trademark Examining Attorneys, as well as in
specific cases decided over the past fifteen-plus years by the
Commissioner [e.g., In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r
Pats. 1991) involving the mere addition of new items of clothing
beyond an interim amendment during prosecution], and by the
Trademark Trial and Appeal Board [e.g., In re Swen Sonic Corp.,
21 USPQ2d 1794 (TTAB 1991)]. By contrast, a looser
interpretation of these provisions would have the perverse effect
of creating much uncertainty.
Serial No. 79022373
- 9 -
This brief discussion of “inclusive terminology” in
TMEP § 1402.03(a) has as its conceptual underpinning the
contrast between transitional terms that are “definite” or
“close-ended” and those considered to be “indefinite” or
“open-ended.” The position of the Trademark Examining
Attorney is that applicant’s “in particular” should be
treated as a close-ended transitional term (e.g.,
“namely”). For example, if the identification of goods had
been filed as “chemical products for industrial use, namely
raw materials for chemical syntheses,” the entire scope of
the goods in applicant’s International Class 1 would have
been restricted to a clearly-defined subset of chemical
products that could not be broadened on the way to issuance
of a registration.
The word “namely” like the term “in particular” fits
into an awkward category known as “conjunctive adverbs.”
However, while “namely” is clearly a conjunctive adverb of
apposition, “in particular” is more of a conjunctive adverb
of reinforcement.
Specifically, there is no question but that what
follows “namely” in an identification of goods is a
definite, explanatory equivalent of what preceded it. Any
proposed amendment later to clarify the instant goods that
Serial No. 79022373
- 10 -
would have the effect of broadening the identification of
goods beyond the bounds of “raw materials for chemical
syntheses” would be impermissible under Rule 2.71(a).
The contrary argument presented by applicant is that
its original identifying language should be treated as a
vague or indefinite modifier (e.g., “including,” “such as,”
“and the like”). Furthermore, if this were the case, then
under long-standing Office practice, applicant argues that
its broad, indefinite identification of goods can be
replaced with a determinate listing of goods using definite
and specific terminology and with the transitional phrase
in the amendment consisting of a close-ended conjunctive
adverb like “namely.”6

6 We note in passing a different argument put forward by
applicant that seems to turn on an alternative attempt at
deconstruction of the syntactic relationship of the two involved
phrases. Specifically, applicant argues that given the
significance of the comma in the original identification of
goods, the two portions should be seen as presenting a
disjunctive. Under this interpretation, the lead-in phrase,
“chemical products for industrial use … ” is in no way limited by
the arguably disjointed phrase “ … raw materials for chemical
syntheses.”
Apart from the disputed meaning of the transitional term,
“in particular,” we disagree with applicant’s position that the
comma itself creates two separate and distinct subsets of goods
in International Class 1. The Office’s fine-honed identification
of goods practice, and especially the limitations of Rule
2.71(a), would come completely undone if a comma before a close-
ended transition like “namely,” for example, were to be
interpreted as a disjunctive.

Serial No. 79022373
- 11 -
In short, we are faced with the question of whether
applicant’s choice of “in particular” is to be treated like
“including” or like “namely.”
“In particular”
Applicant argues from an assortment of dictionary
entries – and primarily from definitions that the Trademark
Examining Attorney placed into the record – that the weight
of the evidence supports applicant’s position. The
following is generally the order in which applicant
discussed these entries in its brief.
12. Logic. Particular an individual or a specific group within a
general class. 7
10. Particular an individual or distinct part, as an item of a list
or enumeration.8
3. Particular distinguished or different from others or from the
ordinary; noteworthy; marked; unusual: She sang with
particular warmth at last evening's concert.9
4. Particular exceptional or especial: Take particular pains with
this job. 10

7 Dictionary.com Unabridged (v 1.1) Based on the Random House
Unabridged Dictionary, © Random House, Inc. 2006.

8 Id.

9 Id.

10 Id.

Serial No. 79022373
- 12 -
8. Logic. Particular
a. not general; referring to an indefinite part of a whole
class. 11
par·tic·u·lar (pər-tĭk'yə-lər, pə-tĭk'-) adj. Logic
Encompassing some but not all of the members of a class
or group. Used of a proposition.12
3. Particular Worthy of note; exceptional: a piano performance
of particular depth and fluidity. 13
2. Particular Separate and distinct from others of the same
group, category, or nature: made an exception in this
particular case. 14
—Idiom 13. in particular, particularly; specifically; especially:
There is one book in particular that may help you. 15
in particular adverb specifically or especially distinguished
from others; "loves Bach, particularly his partitas";
"recommended one book in particular"; "trace major
population movements for the Pueblo groups in
particular" [syn: particularly] 16
in particular especially; … 17

11 Id.

12 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE, Fourth
Edition

13 Id.

14 Id.

15 Dictionary.com Unabridged (v 1.1) Based on the RANDOM HOUSE
UNABRIDGED DICTIONARY, © Random House, Inc. 2006.

16 WordNet® 3.0, © 2006 by Princeton University.

17 The American Heritage Dictionary of Idioms, Christine
Ammer.

Serial No. 79022373
- 13 -
in particular more than others 18
— in particular : in distinction from others : SPECIFICALLY19

In its brief at 7 – 11, in support of its position
herein, applicant highlighted the following amalgam of
related concepts drawn from these entries: “especially, or
‘to a great extent’”; one item, out of many, that has added
importance but is not exclusive of all others; “raw
materials for chemical syntheses” are but one item in a
list; “raw materials for chemical syntheses” are a specific
and significant part of the group, however, the
identification of goods should not be limited to only these
goods; there are other “chemical products for industrial
use” in this class that can and should be specifically
identified; the goods are “chemical products for industrial
use” and the other unnamed items should be allowed to be
identified as well; “in particular” is not limiting in
nature; the “raw materials for chemical syntheses” are
notable and important but are not the only goods
encompassed by the preceding language “chemical products
for industrial use”; applicant seeks to remedy an
indefinite part of International Class 1 by designating the

18 Kernerman English Multilingual Dictionary, K.Dictionaries
Ltd.

Serial No. 79022373
- 14 -
other specific “chemical products for industrial use”; the
“raw materials for chemical syntheses” are an important
part of a group of chemical products for industrial use but
are not the only items and thus, applicant should be
allowed to specify the other items in the group; “raw
materials for chemical syntheses” are worthy of particular
attention and are exceptional but are by no means the only
items of the large group; “raw materials for chemical
syntheses” are “separate and distinct from others of the
same group”; definition emphasizes one thing and how it is
distinguished from others; definitions indicate that one
item stands out among many and so applicant should not be
limited to one item but should be allowed to add other
items as long as the additional items are types of
“chemical products for industrial use”; note that part of
the definition is “distinction from others.”
Of course, it was the Trademark Examining Attorney who
placed these many dictionary entries into the record.
Accordingly, she argues vehemently that these same
dictionary entries (e.g., “in distinction from others:
specifically”; “particularly; specifically, especially”)
support her position herein. In the arguments in her

19 Mirriam-Webster Online Dictionary.
Serial No. 79022373
- 15 -
brief, she follows up the connotations of the synonym
“specifically” (an adverb) with reference to the adjective,
“specific” (from Latin species 1 a: constituting or
falling into a specifiable category b: sharing or being
those properties of something that allow it to be referred
to a particular category 2 a: restricted to a particular
individual, situation, relation, or effect … b: exerting a
distinctive influence … 3: free from ambiguity: accurate
... 4: of, relating to, or constituting a species and
especially a biological species… synonyms see “special,”
“explicit”…).
When we examine the noun form of the word
“particular,” a close synonym is “item.” This connotes the
concreteness of a detail or item. When we look to the
adjective form of the word, there is a feeling of
“definiteness” contained within the term. But certainly
whenever one moves to the adverb form of the term “in
particular,” the parallel is an even stronger term,
“particularly.” Even accepting applicant’s arguments, its
chosen transitional term focuses on what follows as being:
notable; to a distinctly greater extent or degree than is
common; specifically or especially distinguished from
others; peculiarly: uniquely or characteristically which
Serial No. 79022373
- 16 -
leaves the reader with a clear sense of limitations on the
scope of the goods.
We find that an identification of goods or services
that follows a general introduction with a more detailed
explanation is acceptable when it transitions with a
“close-ended” conjunctive adverb like “namely.” Such
transitional terms share the following characteristics:
specific, definite, a full enumeration that is detailed,
limited, clearly-defined, restricted, exact, precisely-
expressed, unambiguous, or separate and distinct.
Based upon the gestalt of all the dictionary entries
reviewed above, we might add terms like notable, worth-
mentioning, exceptional, specifiable, explicit, or
accurate.20
By contrast, an unacceptable identification of goods
has a transitional term in the form of an “close-ended”.
Historically, one of the most frequent “informalities”
corrected during the initial examination of trademark
applications is requiring that the indefinite term
“including” be amended to the definite word “namely.”
Transitional terms like “including,” “and the like” and

20 Clearly, this is not intended to suggest specific
transitional terms, but simply to capture the essence of close-
endedness.
Serial No. 79022373
- 17 -
“such as” share the following characteristics: general,
indefinite, universal, broad, unlimited, vague, or partial.
Based upon the dictionary entries reviewed above, we
might add the following antonyms: for example, of no
particular significance, just a for-instance, among others,
by-the-by, or inter alia.
The similarity is that both close-ended and open-ended
transitions may suggest that the listing is not exhaustive.
However, with the close-ended conjunctive adverb, what
follows is important – as contrasted with the more matter-
of-fact listing suggested by the open-ended transition.
Applicant complains that the Trademark Examining
Attorney is responsible for the limits placed on its
attempts to clarify its original identification of goods.
However, we find that applicant, at the least,
inadvertently limited the scope of goods with its own
choice of transitional terms in the original application.
The TMEP discussion of inclusive terminology
(§ 1402.03(a)) quoted above does not purport to offer up
for trademark applicants or for the Trademark Examining
Operations an exhaustive listing of English-language
transitions for use in identifying goods or reciting
services. We suspect that the TMEP does not include a
Serial No. 79022373
- 18 -
listing of “in particular,” “especially” or “particularly”
because applicants seldom use these particular transitional
terms. While we do not underestimate the intricacies and
challenges of this particular formalities practice
presented to trademark counsel and to Trademark Examining
Attorneys alike, we do find that the ready availability of
free, online resources to assist with this task provided by
the Trademark Office is unprecedented.21
In summary, we find that “in particular” is equivalent
to “namely” for purposes of determining the scope of an
identification of goods, and therefore, we conclude that
applicant’s rights would be restricted by the follow-on
language limiting the goods at the time of filing to one
use in particular.
Decision: The refusal to register is affirmed as to
International Class 1. The application for the trademark
PERACLEAN in connection with the goods contained in
International Classes 3 and 5 will be sent on to
publication, and further processing consistent with
Section 66 of the Lanham Act.

21 For example, http://www.uspto.gov/main/trademarks.htm
includes easy access to THE US ACCEPTABLE IDENTIFICATION OF GOODS AND
SERVICES MANUAL.