Horizonline, Inc.

Trademark Trial and Appeal Board

Dec 13, 2000

EX (T.T.A.B. Dec. 13, 2000)

Paper No. 14
GFR
9/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Horizonline, Inc.
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Serial No. 75/214,382
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Gunther J. Evanina of Price, Heneveld, Cooper, DeWitt &
Litton for Horizonline, Inc.
Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Bottorff, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Horizonline, Inc. has filed an application to register
"GEAR BOX" as a trademark for goods identified as "land
vehicles in the nature of automobiles."1 Registration has
been refused under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that, when used on or in

1 Serial No. 75/214,382, filed December 17, 1996, based upon an
allegation of a bona fide intention to use such term in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/214,382
2
connection with applicant's goods, the mark will be merely
descriptive of a significant component of the goods.
When the Examining Attorney made the refusal final,
applicant appealed. Briefs were filed, but an oral hearing
was not requested.
It is well settled that a term is considered merely
descriptive of goods, within the meaning of Section 2(e)(1)
of the Trademark Act, if it immediately describes an
ingredient, quality, characteristic or feature thereof, or
if it directly conveys information regarding the nature,
function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218
(CCPA 1978); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
It is not necessary that a term describe all of the
properties of the goods in order for it to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute. Moreover, whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods for which
registration is sought, the context in which it is being
used on or in connection with those goods, and the possible
significance that the term would have to the average
purchaser because of the manner of its use. See In re
Ser. No. 75/214,382
3
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Consequently, "[w]hether consumers could guess what the
product is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
The evidence of record establishes that "gearbox" or
"gear box" is a synonym for a vehicle transmission; and the
Examining Attorney's argument that a term must be refused
registration under Section 2(e)(1) when it immediately
identifies, for a prospective purchaser of the relevant
goods, a significant component thereof, is well-grounded in
the case law. See, e.g., Scanwell Laboratories, Inc. v.
Department of Transportation, Federal Aviation
Administration, 181 F.2d 1385, 179 U.S.P.Q. 238 (CCPA 1973)
[V-RING merely descriptive of directional antennas, the
primary components of which were shaped in the form of a
"v" and a "ring"]; In re Walker Manufacturing Co., 359 F.2d
474, 149 U.S.P.Q. 528 (CCPA 1966) [CHAMBERED PIPE merely
descriptive of an exhaust system consisting of a series of
small tuning chambers]; In re H.U.D.D.L.E., 216 U.S.P.Q.
358 (TTAB 1982) [TOOBS, the phonetic equivalent of the word
"tubes," merely descriptive of bathroom and kitchen
fixtures formed of tubes].
Ser. No. 75/214,382
4
Applicant readily concedes that "gearbox" is a synonym
for a "transmission" and does not contest that automobiles
utilize transmissions. Applicant does, however, argue that
a transmission, though essential, is not a significant
component of an automobile, and argues that merchants
"rarely, if ever, make any reference to the transmission of
the automobile in their advertisements or descriptions of
their vehicles." In addition, applicant argues that the
use of "gearbox" to refer to a transmission is "archaic"
and transmission itself is more routinely used. Applicant
also argues that its "mark is not in common usage in the
trade or elsewhere as a description of automobiles, or any
other vehicles," and since it seeks registration of "GEAR
BOX" for vehicles, it will not impede the ability of others
to use the term for transmissions. Finally, applicant
argues that its proposed mark presents a double entendre,
i.e., it can be perceived as meaning "transmission" or a
vehicle with a box for storing gear; and, because its
proposed mark is set forth as two words rather than one,
those viewing the mark will be more likely to think of the
second meaning.
We agree with the Examining Attorney that a
transmission is a significant component of an automobile,
and applicant's contention to the contrary has no support.
Ser. No. 75/214,382
5
Moreover, the Examining Attorney has made of record
numerous NEXIS references to "gear box" as a synonym for
"transmission." These counter both applicant's argument
regarding the significance of transmissions in automobiles
and applicant's entirely unsupported argument that
transmissions are rarely discussed in advertisements or
descriptions of automobiles.
The NEXIS evidence also counters applicant's argument
that "gearbox" is an archaic term; in fact, the term
appears in routine use. Finally, the NEXIS references
typically present the term in two-word form, thereby
negating applicant's argument that such presentation will
lead consumers to view "GEAR BOX" as more likely to mean a
box for storing gear.2
In regard to applicant's argument that it is not
seeking to register "GEAR BOX" for transmissions and that
"GEAR BOX" is not commonly used for vehicles, we note the
following apt passage from another Board decision:
This argument might have been relevant had the
refusal been that the term sought to be
registered was the generic name of the goods.
See, e.g., In re Wampole Ltd. 227 U.S.P.Q. 74
(TTAB 1985). Here, it is misplaced as genericness
is not the basis for refusal. A term need not be
generic of the goods to be held unregistrable

2 Moreover, since the descriptiveness of a proposed mark must be
determined by considering the mark in conjunction with the goods,
we find that the use of "GEAR BOX" in conjunction with
automobiles will most likely prompt thoughts of transmissions.
Ser. No. 75/214,382
6
under Section 2(e)(1). Sunbeam Corp. v. Conair
Corp., 220 U.S.P.Q. 748 (TTAB 1983); In re Wink
Corp., 218 U.S.P.Q. 739 (TTAB 1983).
In re Metcal Inc., 1 USPQ2d 1334, 1335-36 (TTAB 1986).
The Examining Attorney bears the burden of showing
that a mark is merely descriptive when used on or in
connection with the relevant goods. In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). We find the burden has been
met in this case, and we affirm the refusal of
registration.
Decision: The refusal of registration under Section
2(e)(1) of the Trademark Act is affirmed.
C. M. Bottorff
T. E. Holtzman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board