Hella KGaA Hueck & Co.

Trademark Trial and Appeal Board

Oct 30, 2008

No. 79018209 (T.T.A.B. Oct. 30, 2008)

Mailed:October 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hella KGaA Hueck & Co.
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Serial No. 79018209
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Robert C. Haldiman of Husch Blackwell Sanders LLP, for
Hella KGaA Hueck & Co.

Daniel Capshaw, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
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Before Seeherman, Taylor, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Hella KGaA Hueck & Co., applicant herein, seeks
registration on the Principal Register of the mark “BI-
XENON,” in standard character format, for “lighting devices
for motor vehicles, namely, headlamps, lamps and
switchgears thereof,” in International Class 11.1 The
trademark examining attorney refused registration on the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79018209
2
ground that applicant’s mark is merely descriptive of the
identified goods under Trademark Act Section 2(e)(1), 15
U.S.C. §1052(e)(1). Applicant appealed the final refusal.
Both applicant and the examining attorney filed briefs.
After careful consideration of all of the arguments and
evidence of record, we affirm the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of 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). 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 on or in connection 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, 593

1 Serial No. 79018209, filed on September 15, 2005, under
Trademark Act Section 66(a), 15 U.S.C. §1141f(a).
Ser. No. 79018209
3
(TTAB 1979). Moreover, 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);
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
The examining attorney submitted evidence of dozens of
Internet articles, advertisements, and car reviews showing
that the term “bi-xenon” is used to describe a type of
headlamp for motor vehicles. A sampling of this evidence
includes the following web excerpts:
“Glossary – Bi-Xenon: Bi-xenon headlamps use a single
xenon lamp to produce both the high beam and the low beam.
The full light output is used to produce the high beam,
while the low beam is formed by moving a shutter between
the bulb and the lens, thus blocking off a portion of the
light.” Land Rover Glossary.
“Bi-xenon headlamps: Xenon headlamps use xenon gas and
metallic salts to create light. An electrically generated
arc replaces the filament used in conventional light bulbs
Ser. No. 79018209
4
. . . This technology produces twice the light output of a
halogen bulb . . .” Carlist.com Glossary.
“Development of the bi-xenon lights: Saab worked
closely with lamp supplier Valeo to develop the necessary
performance required by a Saab engineer.” The Saab
Network, www.saabnet.com.
“HID Xenon Headlamp Conversion Kits BIXENON LOW and
HIGH BEAM for H4 bulbs” ucables.com.
“Mercedes E-class sedan just feels right: . . . Active
Curve bi-xenon headlights (a $900 option) improve
illumination by as much as 90 percent, compared to fixed
halogen lights, . . .” The San Diego Union Tribune,
October 22, 2005.
Applicant argues that the examining attorney’s
evidence is inapposite. In particular, applicant submitted
a declaration from its Chief Intellectual Property Counsel,
Juergen Meyer, asserting that applicant has licensed its
mark to auto makers Porsche, Land Rover, and Saab.
Apparently applicant takes the position that the uses of
“bi-xenon” in the web excerpts refer to its own products.
However, whether or not the references are to applicant’s
goods (and we note that the declaration makes no mention of
a license to the maker of Mercedes, described in a review
as having “bi-xenon headlights”), the manner in which the
Ser. No. 79018209
5
term in used is not as a trademark, but as a description of
a type of headlamp.
We find that applicant’s arguments and evidence do
nothing to rebut the evidence submitted by the examining
attorney that the relevant public understands the term “BI-
XENON” to refer to a feature or characteristic of
applicant’s goods. See In re Gyulay, 3 USPQ2d at 1009; In
re Abcor Development Corp., 200 USPQ at 217-18. In
particular, no imaginative step is required for consumers
to understand “bi-xenon” as descriptive of a type of
headlamp, i.e., “a single xenon lamp to produce both the
high beam and the low beam,” as described by applicant’s
own licensee.
In sum, it is clear that a consumer would understand
“BI-XENON” used in connection with applicant's goods as
conveying information about them. Therefore we find that
the mark is merely descriptive of the identified goods.2
See In re Tower Tech Inc., 64 USPQ2d at 1316-17.
Accordingly, we affirm the refusal to register.

2 We note that applicant has argued that people recognize the
term “BI-XENON” as referring to its products. Such an argument
would be appropriate to a claim that the mark has acquired
distinctiveness. However, applicant has not sought registration
pursuant to the provisions of Section 2(f) of the Trademark Act,
and therefore such arguments, or evidence in connection
therewith, have no relevance to our determination herein.
Ser. No. 79018209
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Decision: The refusal to register under Trademark Act
Section 2(e)(1) is affirmed.