Erretre S.R.L.

Trademark Trial and Appeal Board

Dec 22, 2000

No. 75324462 (T.T.A.B. Dec. 22, 2000)

Hearing:
July 6, 2000
UNITED STATES P
Trademark T
In re
Seria
Joseph J. Orlando of Buck
Jennifer Stiver Chicoski,
Office 115 (Tomas V. Vlce
_
Before Simms, Cissel and
Judges.
Opinion by Walters, Admin
Erretre S.R.L. has f
register the mark CHEMICA
below.1
Chemical preparation
leather, in Internat
Colorants for use in
International Class
Greases for use in t
International Class

1 Serial No. 75/324,462, in In
respectively, filed July 14, 1
alleging first use and use in
classes.
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.12/22/00Paper No. 18
CEW
ATENT AND TRADEMARK OFFICE
___________
rial and Appeal Board
___________
Erretre S.R.L.
___________
l No. 75/324,462
___________
nam and Archer for applicant.
Trademark Examining Attorney, Law
k, Managing Attorney).
___________
Walters, Administrative Trademark
istrative Trademark Judge:
iled a trademark application to
L MILLING for goods identified
s for use in the processing of
ional Class 1;
the processing of leather, in
2;
he processing of leather, in
4;
ternational Class 1, 2, 4, 7, 9 and 18,
997, based on use of the mark in commerce,
commerce as of October 1994 in all
Serial No. 75/324,462
2
Machines, namely, combination milling, upgrading,
and finishing with special effects machines, for
use in the dry processing of leather, in
International Class 7;
Climatic controls to control the microclimate
inside machines for the processing of leather, in
International Class 9;
Leather sold in bulk, in International Class 18.
The Trademark Examining Attorney has finally refused
registration, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. We affirm the refusal to register.
Applicant does not contest the Examining Attorney’s
characterization of its identified goods as “a variety of
goods involved in the processing of leather as well as
finished bulk leather … [and these goods] are all for use in
the milling of leather utilizing chemicals in the process or
are finished leather pieces that have undergone such a
process.” Applicant acknowledges that the milling of
leather “is a term of art in the industry wherein leathers
are placed in a special drum which rotates to render the
leather soft.”
The Examining Attorney contends that CHEMICAL MILLING
is merely descriptive of applicant’s goods because the
milling of leather is a component of the process of
Serial No. 75/324,462
3
processing leather; applicant’s goods “include chemical
preparations for use in the processing of leather”;
applicant’s goods include “finished bulk leather that has
undergone this process”; and, therefore, CHEMICAL MILLING
“tell[s] exactly what the goods do, namely, mill bulk
leather using chemicals, and how the finished goods have
been treated.”
In support of her position, the Examining Attorney has
submitted a dictionary definition of the phrase “chemical
milling” as “the process of producing metal parts to
predetermined dimensions by removing metal from the surface
with chemicals”; and various excerpts of articles from the
LEXIS/NEXIS database demonstrating use of the phrase
“chemical milling” in the context of metal production. The
Examining Attorney has also submitted an excerpt from
applicant’s web site which includes the following
statements:
Finishing and Upgrading while Milling
All the advantages of Chemical Milling technology.
Chemical Milling is an extraordinary new reality
in tanning. It is the technology of finishing
during milling – a real revolution in the
finishing field and Erretre is among the leaders
in it.
The Erretre 3000 stainless steel machines allow
you to finish and upgrade the skins directly
during the milling phase. In practice, it is like
having several machines in one, with the advantage
of not having to go through several production
passages. In short, it provides good savings in
time and resources.
Serial No. 75/324,462
4
Applicant contends that that its goods involve no
“chemical milling” as that term is defined in the context of
metal production; and that, while the individual terms
“chemical” and “milling” are “descriptive of some products
utilized in the [leather finishing] process and an element
of the process, … the composite term is incongruous with
respect to applicant’s process and is not merely
descriptive.” Applicant argues that the phrase “chemical
milling” has a “known meaning or connotation unrelated to
applicant’s goods or process” for tanning or finishing
leather; and that applicant’s customers in the leather
processing industry “would be familiar with the definition
of ‘chemical milling’ as noted above and recognize the
incongruity of applicant’s adoption and use of the mark
CHEMICAL MILLING.”2 Applicant states that “the term
CHEMICAL MILLING” as used by applicant is the name of the
novel process and products used therein as developed by
applicant and although possibly sometimes inadvertently used
incorrectly, it is not intended to define the process.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,

2 In support of its argument, applicant submitted the results, in brief,
of a search of the Internet. The mere listing of search results is of
no probative value and has not been considered. Applicant also
submitted a paper in Italian, with no translation into English, which
is, similarly, of no probative value.
Serial No. 75/324,462
5
ingredient, attribute or feature of the product or service
in connection with which it is used, or intended to be used.
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986);
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods or
services, only that it describe a single, significant
quality, feature, etc. In re Venture Lending Associates,
226 USPQ 285 (TTAB 1985). Further, it is well-established
that the determination of mere descriptiveness must be made
not in the abstract or on the basis of guesswork, but in
relation to the goods or services for which registration is
sought, the context in which the mark is used, and the
impact that it is likely to make on the average purchaser of
such goods or services. In re Recovery, 196 USPQ 830 (TTAB
1977).
We agree with the Examining Attorney that applicant’s
mark is merely descriptive in connection with its identified
goods. The fact that the phrase “chemical milling” is a
term of art in the field of metal production is not relevant
because it is a definition in a field unrelated to
applicant’s goods. Thus, this fact does not lend an
incongruity to the phrase in the context of applicant’s
goods. Similarly, the fact that applicant may be the first
or only user of the phrase in the leather finishing industry
Serial No. 75/324,462
6
does not necessarily mean that the phrase is not merely
descriptive. As stated above, we must look at the record as
a whole and consider the phrase in the context of
applicant’s goods.
It is clear that applicant’s goods, excluding its bulk
leather, are used in the processing of leather; that
“milling” is one part of leather processing; and that
applicant’s mark is used in connection with a chemical form
of leather processing that combines several leather
finishing processes into one process that occurs during the
milling phase. Further, relevant purchasers are likely to
view applicant’s bulk leather products as having been
finished using applicant’s process. In the present case, it
is our view that, when applied to applicant’s goods, the
term CHEMICAL MILLING immediately describes, without
conjecture or speculation, a significant feature or function
of applicant’s goods, as described herein. Nothing requires
the exercise of imagination, cogitation, mental processing
or gathering of further information in order for purchasers
of and prospective customers for applicant’s services to
readily perceive the merely descriptive significance of the
term CHEMICAL MILLING as it pertains to applicant’s
identified goods.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.