IdaTech, LLC

Trademark Trial and Appeal Board

Apr 19, 2004

No. 76369815 (T.T.A.B. Apr. 19, 2004)

Mailed: April 19, 2004
Paper No. 13
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re IdaTech, LLC
________
Serial No. 76369815
_______
David S. D’Ascenzo of Kolisch Hartwell, P.C. for IdaTech,
LLC.
Carolyn Pendleton Cataldo, Trademark Examining Attorney,
Law Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On February 11, 2002, IdaTech, LLC (an Oregon limited
liability company, located in Bend, Oregon) filed an
application to register the mark ADVANCED FUEL CELL
SOLUTIONS on the Principal Register for the following goods
(as amended), and services:
“electrical power generation equipment,
namely, fuel cells, proton exchange
membrane fuel cells, fuel cell stacks,
fuel cell conversion components, fuel
cell integrators, and electrical power
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76369815
2
management modules, namely, power
inverters, power converters, power
conditioners, power controllers and load
regulators; fuel cell systems and
components for stationery and portable
electric power generation comprised of
fuel cell stacks, fuel processors, fuel
cell integrators and electrical power
management modules, namely, power
inverters, power converters, power
conditioners, power controllers and load
regulators” in International Class 9;
“hydrogen-generation equipment and
components, namely, hydrogen generators,
hydrogen purifiers, hydrogen
purification membranes, fuel processors,
and steam reformers” in International
Class 11;
“custom manufacture of hydrogen-
generation and electrical-power-
generation products and equipment,
namely, fuel processors, steam
reformers, fuel cells, fuel cell stacks,
hydrogen generators, hydrogen purifiers,
hydrogen purification membranes,
electrical power management modules,
namely, power inverters, power
converters, power conditioners, power
controllers and load regulators” in
International Class 40; and
“design for others of hydrogen-
generation and electrical-power-
generation products and equipment,
namely, fuel processors, steam
reformers, fuel cells, fuel cell stacks,
hydrogen generators, hydrogen purifiers,
hydrogen purification membranes,
electrical power management modules,
namely, power inverters, power
conditioners, power converters, power
controllers and load regulators;
scientific research, design and product
development for others” in International
Class 42.
Ser. No. 76369815
3
The application is based on applicant’s assertion of a
bona fide intention to use the mark in commerce on or in
connection with the identified goods and services.
Applicant has offered a disclaimer of the words “fuel
cell,” but this has been rejected by the Examining
Attorney.
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that the mark ADVANCED FUEL CELL
SOLUTIONS, when used on or in connection with the goods and
services of applicant, is merely descriptive of them.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs; an oral hearing was not requested.
The Examining Attorney contends that the proposed mark
merely describes a primary function, purpose, use, feature
or characteristic of applicant’s various fuel cell goods
and services; that the wording “fuel cell solutions” is
recognized as referring to fuel cell technology--a more
efficient energy system for generating heat and
electricity, and thus, those words describe the purpose or
a primary characteristic of applicant’s goods and services;
that the relevant meaning of the term “advanced” in the
context of applicant’s goods and services is “highly
Ser. No. 76369815
4
developed or complex,” and for the word “solutions” the
relevant meaning is “the method or process of solving a
problem, the answer to or disposition of a problem”; and
that the mark, considered as a whole, immediately conveys
that applicant’s goods and services provide customers with
highly developed or advanced solutions in the fuel cell
industry. The Examining Attorney offers as an alternative
argument, that applicant has conceded the term “fuel cell”
is merely descriptive by offering a disclaimer thereof;
that when the words “advanced” and “solutions” are
considered in connection therewith, the entire phrase
ADVANCED FUEL CELL SOLUTIONS describes a feature, function
and characteristic of applicant’s goods and services; and
that the combination of descriptive terms does not create a
unitary mark with a separate, non-descriptive meaning.
In support of the refusal, the Examining Attorney
submitted the following definitions from The American
Heritage Dictionary (Third Edition 1992):
(1) “advanced adjective 1. Highly
developed or complex. 2. Being at
a higher level than others: an
advanced text in physics. 3. Ahead
of the times; progressive: advanced
teaching methods. 4. Far along in
the course of time: an advanced
stage of illness; a person of
advanced age.”; and
Ser. No. 76369815
5
(2) “solution noun 1. a. A
homogenous mixture of two or more
substances, which may be solids,
liquids, gases or a combination of
these. b. The process of forming
such a mixture. 2. The state of
being dissolved. 3. a. The method
or process of solving a problem.
b. The answer to or disposition of
a problem. 4. Law. Payment or
satisfaction of a claim or debt.
5. The act of separating or
breaking up; dissolution.”
The Examining Attorney also submitted (i) printouts of
several excerpted stories retrieved from the Nexis database
to show that “applicant provides highly complex, or
advanced, custom manufacture and design of hydrogen-
generation and electrical power generation products for
fuel cell solutions” (first Office action, unnumbered p.
2); and (ii) two sets of third-party registrations covering
a wide variety of goods and services,1 wherein either the
word “advanced” or the word “solution(s)” is disclaimed.
Examples of the excerpted stories retrieved from the Nexis
database are set forth below (emphasis in excerpts):
Headline: Statoil, Methanex, NPS to
Study Fuel Methanol
1 The third-party registrations do not cover the goods and
services involved herein, but cover, for example,
telecommunication services, namely,…; legal services…; computer
services, namely,…; leasing of office equipment,…; retouching of
artwork…; manual airfield lighting control panels…; mail
processing, namely,…; educational services, namely,…; non-metal
swimming pools; motorcycle engine valves,…; hosting the web sites
of others on computer servers…; physical therapy and
rehabilitation services.
Ser. No. 76369815
6
The tripartite fuel-cell venture
embraces two pilot projects and aims
primarily to establish the suitability
of such fuel cell solutions for
households.
Several homes in the town of Bend,
Oregon, are being disconnected from the
electricity grid and fitted with
methanol-based fuel cells capable of
generating both heat and electricity.
The second pilot project will employ
methanol reformer technology…. “Today’s
Refinery,” December 1999;
Headline: 100-kW System Moved,
Restarted
…Fuel cells will play an important role
within the development. RWE aims to
provide fuel cell solutions for its
various customer groups and is
investing in a broad range of research
and development activities. …, “Fuel
Cell Technology News,” September 2001;
Headline: Politics and Oil a Toxic Mix
The way out of this mess in the long-
term is to change U.S. energy policy,
with an emphasis on energy conservation
and with aggressive investment in
alternative fuels, including
expeditious research and development
toward a fuel-cell solution for the
transportation sector. The energy goal
ought to be to reduce America’s
dependency on foreign sources of oil so
that the nation’s consumers are no
longer held captive by Big Oil
marketing strategies or the whims of
the Organization of Petroleum Exporting
companies…. “The Oregonian,” September
23, 2000;
Headline: Gas Executives’ Forum:
Gas.Com Inc? A Smokestack Industry
Faces the E-Future…
…where we become the aggregator of
solutions and services and market
Ser. No. 76369815
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access for fuel cells and distributed
generation. We have gone as far as
reserving our domain names and locking
those down to be one of the premier
sites of managing the market space and
information around fuel cell solution
services, as well as distributed
generation. …, “Utilities Fortnightly,”
April 15, 2000; and
Headline: Sixth Grove Fuel Cells
Symposium
…stations and vehicles are both major
contributors of “greenhouse gases”
([CO.sub.2] and also [NO.sub.x]) to
atmosphere. In addition to the supply
of electric power to homes, domestic
and municipal space heating is a
further major generator of greenhouse
emissions. Fuel cell solutions to all
of these dilemmas are not so much just
round [sic] the corner, they are
practically here now.
Fuel cells are inherently much more
efficient energy converters than gas
turbine power generators based on
fossil fuels and give off far less….
“Nitrogen & Methanol,” November 1,
1999.
Finally, the Examining Attorney later submitted one
excepted story retrieved from the Nexis database “in which
the phrase ‘advanced fuel cell solutions’ is used.”
(Denial of applicant’s request for reconsideration,
unnumbered p. 2.) It is reproduced below (emphasis in
excerpted story):
Headline: IdaTech Debuts Commercial
Model
…Demonstrating its commitment to
customer service, IdaTech offers a
comprehensive service package,
Ser. No. 76369815
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including engineering and support
services to development partners
working with the fuel processor module.
IdaTech continues to expand its product
offering through the development of
advanced fuel cell solutions for a
variety of applications. Combining its
family of fuel processors with a
variety of PEM fuel cell modules, Ida
Tech develops fully integrated systems
with outputs ranging from 1 kW to 5 kW.
…, “Fuel Cell Technology News,”
September 2002.
Applicant acknowledges that the term “fuel cell” has a
descriptive meaning,2 and applicant is not asserting that
its mark is arbitrary or fanciful. (Brief, p. 3).
However, applicant argues that its mark does not merely and
immediately describe its identified goods and services; and
that “the mark possesses sufficient suggestiveness for
registration on the Principal Register” (brief, p. 3).
Applicant argues that the terms “advanced” and “solutions”
have a variety of meanings, even within the context of
applicant’s goods and services; that none of the many
meanings of either term is specifically or immediately
directed to or associated with applicant’s goods and
services; that these terms have no immediate or specific
2 As explained previously, applicant offered a disclaimer of the
words “fuel cell,” but this was not accepted by the Examining
Attorney. In light of our decision on the issue of mere
descriptiveness, the Board accepts applicant’s disclaimer of the
words “fuel cell,” and the disclaimer has been entered in the
application file.
Ser. No. 76369815
9
meaning and are “not merely descriptive of [applicant’s]
hydrogen- and power-generation goods and services” (brief,
p. 7); and that therefore, the terms “advanced” and
“solutions” are each only suggestive of the involved goods
and services.
Specifically citing the cases of In re Hutchinson
Technology, 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988);
In re Automatic Radio Mfg. Co., Inc., 404 F.2d 1391, 160
USPQ 233 (CCPA 1969); and In re Intelligent Medical Systems
Inc., 5 USPQ2d 1674 (TTAB 1987); applicant contends as
follows:
“the terms ‘advanced’ and ‘solutions’
are such broad terms that they are not
capable of merely describing the goods
or services for which they are used.
This decision is reinforced when these
terms are used together, with a
composite mark containing both of these
terms being more suggestive, or
requiring more thought or imagination,
than a mark containing only a single
one of these words.” (Brief, p. 4.)
Applicant also contends that there are numerous
registrations containing examples of analogous marks in
which the terms “advanced” or “solutions” are not
disclaimed.3 With regard thereto, applicant argues the
3 Applicant had submitted printouts from the USPTO’s Trademark
Electronic Search System (TESS) database of several registrations
on the Principal Register without disclaimers of the words
“advanced” or “solutions” (e.g., DELIVERING ADVANCED MARKETING
SOLUTIONS for “computer software and programs for use in the
Ser. No. 76369815
10
prior registration practice of the USPTO demonstrates that
these two terms are more suggestive than descriptive, and
specifically arguing the following (brief pp. 8-9):
While neither Applicant’s citations nor
the Examining Attorney’s citations are
dispositive of the issue at hand, they
still merit some consideration when
determining the registrability of
Applicant’s ADVANCED FUEL CELL
SOLUTIONS mark. Applicant submits that
the relative volume of these marks is
particularly compelling, with the vast
majority of registered marks that
contain either or both of these terms
being Principal register registrations
in which the terms are not disclaimed.
In its reply brief, applicant contends that the
refusal to register is not sufficiently supported by
evidence, particularly in light of the case law previously
cited by applicant; that the Examining Attorney argues the
mark should not be dissected into its individual terms when
considering mere descriptiveness, but she then proceeds to
argue that each term is merely descriptive and that
collectively the composite mark is also merely descriptive;
field of advertising…,” and “marketing and advertising services,
namely,…”; ADVANCED SOLUTIONS FOR TODAY’S NEEDS for “installing,
retrofitting and maintaining services for others in the field of
integrated interactive home wiring network and hub for…”;
ADVANCED TECHNOLOGY. ADVANCED SOLUTIONS for “medical and surgical
gloves”; and ADVANCED AIR SOLUTIONS (“air” disclaimed) for “air
purifying units for commercial, domestic and industrial use.”
(Obviously, like those submitted by the Examining Attorney, none
of these third-party registrations are for the same or related
goods and services as those involved in the application now
before us.)
Ser. No. 76369815
11
and that the cases cited by the Examining Attorney are
distinguishable as all involve composite marks comprised
entirely of merely descriptive or even generic terms that
represent the common commercial names of the goods or
services at issue or components thereof.4
A mark is merely descriptive if it “forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” Abercrombie &
Fitch Company v. Hunting World, Incorporated, 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976) (emphasis added). See
also, In re Abcor Development Corporation, 616 F.2d 525,
200 USPQ 215 (CCPA 1978). Moreover, in order to be merely
descriptive, the mark must immediately convey information
as to the ingredients, qualities or characteristics of the
goods or services with a “degree of particularity.” See In
re TMS Corporation of the Americas, 200 USPQ 57, 59 (TTAB
4 The Examining Attorney relied on the following cases on this
point: In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB
2002)(SMARTTOWER merely descriptive of commercial and industrial
cooling towers and accessories therfor, sold as a unit); In re
Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)(AGENTBEANS
merely descriptive of computer software for use in the
development and deployment of application programs on the
Internet); In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB
1996)(FOOD & BEVERAGE ON-LINE merely descriptive of a news and
information service contained in a database updated daily for the
food processing industry); In re Copytele Inc., 31 USPQ2d 1541
(TTAB 1994)(SCREEN FAX PHONE merely descriptive of facsimile
terminals employing electrophoretic displays); and In re
Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990)(OATNUT merely
descriptive of bread), aff’d unpub’d, Fed. Cir., February 13,
1991.
Ser. No. 76369815
12
1978); and In re Entenmanns Inc., supra, 15 USPQ2d at 1751.
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.
See In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB
1995).
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992). We find this to be a particularly
close case.
The terms “advanced” and “solutions” are both general,
vague terms, and each term has several meanings, more than
one of which could relate to the identified goods and
services herein. Moreover, these terms are very broad in
Ser. No. 76369815
13
scope and could include many categories of goods and
services. See In re Hutchinson Technology, supra. Neither
term (“advanced” or “solutions”) conveys an immediate idea
of the specific identified goods and services (electrical
power generation equipment, electrical power management
modules, fuel cell systems and components for stationery
and portable electric power generation; hydrogen-generation
equipment and components; design of and custom manufacture
of hydrogen-generation and electrical-power-generation
products and equipment; and scientific research, design and
product development for others). The wide-breadth and
general nature of these terms would require a mental pause
and thought that renders the terms suggestive rather than
merely descriptive of applicant’s identified goods and
services.
Likewise, the entire mark, ADVANCED FUEL CELL
SOLUTIONS, does not immediately impart with any “degree of
particularity” and without the exercise of some degree of
thought or imagination, information about these hydrogen-
and electrical-power generation goods and services. The
mark, as a whole, may be seen by consumers as relating to
an “advanced fuel cell” and how it becomes a “solution” to
various problems requiring a power source; or it may be
seen, as shown by the Examining Attorney, as “advanced” or
Ser. No. 76369815
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highly developed and complex as that concept relates to
“fuel cell solutions.” Even if consumers see the mark as
the Examining Attorney presents it -- “advanced” and “fuel
cell solutions,” the excerpted stories retrieved from the
Nexis database submitted by the Examining Attorney showing
uses of “fuel cell solutions” do not generally provide any
information about the specific goods and/or services being
written about, except that they involve fuel cells. Thus,
the excerpted articles do not prove that the phrase “fuel
cell solutions” immediately conveys information about the
features, characteristics or purposes of the goods and/or
services being discussed. The only use of “advanced fuel
cell solutions” of record is an excepted story retrieved
from the Nexis database which clearly refers to applicant.
The fact that in this single use by a journalist (or even
if the story was based on a press release by applicant) the
words are not capitalized or in some way indicate that
applicant is claiming trademark and service marks rights in
the mark is not dispositive. See In re First Union
National Bank, 223 USPQ 278 (TTAB 1984).
With regard to the third-party registrations, neither
those submitted by the Examining Attorney which include
disclaimers of the terms “advanced” and/or “solutions,” nor
those few submitted by applicant without disclaimers of
Ser. No. 76369815
15
those terms relate to the goods and services involved
herein. In general, we acknowledge that the treatment of
each of the terms “advanced” and “solution(s)” by the
United States Patent and Trademark Office has been mixed.
Nonetheless, we have no evidence regarding the prior
registration practice of the USPTO regarding the terms
“advanced” and “solutions” when used on the involved or
closely related goods and services.
This record does not establish that the mark ADVANCED
FUEL CELL SOLUTIONS as a whole is merely descriptive of the
identified goods and/or services. See Bose Corp. v.
International Jensen Inc., 963 F.2d 1517, 22 USPQ2d 1704
(Fed. Cir. 1992); In re Classic Beverage Inc., 6 USPQ2d
1383 (TTAB 1988); and Manpower, Inc. v. The Driving Force,
Inc., 212 USPQ 961 (TTAB 1981), aff’d 538 F.Supp. 57, 218
USPQ 613 (EDPA 1982). That is, based on the record now
before us, it has not been established that applicant’s
mark, when used on or in connection with its goods and
services recited above, conveys an immediate idea
about the goods and/or services with any degree of
particularity. The significance of the mark and
specifically what it describes about the goods and/or
services, when applied to the goods or used in connection
with the services, is ambiguous.
Ser. No. 76369815
16
Finally, the Board has noted many times that if there
is doubt about the “merely descriptive” character of a
mark, that doubt is resolved in applicant’s favor, allowing
publication of the mark so that any third party may file an
opposition to develop a more comprehensive record. See In
re Atavio, supra; and In re Gourmet Bakers Inc., 173 USPQ
565 (TTAB 1972).5
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is reversed.
5 In addition, we note that this application is based on
applicant’s assertion of a bona fide intention to use the mark in
commerce, and that there are no specimens or any other evidence
to show how applicant plans to or is using the involved mark.
Applicant noted (brief, p. 10) that it has commenced use of the
mark. If this application is either not opposed or survives any
opposition(s), and if applicant ultimately submits a Statement of
Use, the Examining Attorney is free to re-examine the application
with respect to the issue of mere descriptiveness if applicant’s
specimens of use so warrant.