Indspec Chemical Corp.

Trademark Trial and Appeal Board

Apr 17, 2001

No. 75706371 (T.T.A.B. Apr. 17, 2001)

4/17/01
Paper No. 12
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Indspec Chemical Corporation
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Serial No. 75/706,371
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Diane R. Meyers of Eckert Seamans Cherin & Mellott, LLC
for Indspec Chemical Corporation.
Jennifer Stiver Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
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Before Cissel, Wendel, and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Indspec Chemical Corporation has filed an application
to register the mark HER for “chemicals, namely aromatic
diols for use as polymer components or additives in
manufacturing.”1
Registration has been finally refused under Section
2(e)(1) on the ground that the mark is merely descriptive
1 Serial No. 75/706,371, filed May 14, 1999, claiming a first use
date and a first use in commerce date of February 1997.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/706,371
2
when used in connection with applicant’s goods. The
refusal has been appealed and both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
The Examining Attorney maintains that applicant’s mark
HER is merely an abbreviation or acronym for one or more of
the common commercial names for applicant’s goods. She
notes that the goods, while referred to on the specimens by
the chemical name “1,3 bis(2-hydroxyethoxy) benzene”, are
elsewhere referred to by the name “hydroxyethyl ether of
resorcinol” or “resorcinol di(beta-hydroxyethyl) ether.”
Applicant acknowledges that the compound has at least these
three names. The combined letters HER, the Examining
Attorney argues, are simply a shorthand reference for or
abbreviation of these common names which has been used in
technical journals and writings for purposes of
simplification. As such, she maintains that HER does not
identify applicant as the source of the goods, but rather
identifies the material itself. The additional terms TG,
LIQ and HP are noted as being used on the specimens and
elsewhere to designate different grades or versions of the
material.
Ser No. 75/706,371
3
In support of her position, the Examining Attorney has
made of record several articles from the NEXIS database, of
which the following are representative:
Indspec has started the manufacture of hydroxethyl
ether of resorcinal (HER), a diol chain extender.
Chemical Business Newsbase (April 29, 1999);
Indspec said elastomers made from the higher molecular
weight diols HER-LIQ and HPER were softer than HER-
or HQEE-based elastomers.
Urethanes Technology (February 1, 1999); and
Indspec has established commercial-scale production
of hydroxyethel ether of resorcinol (HER) and has the
capability of ...
HER, a 1,3 isomer similar to HQEE, has been found to
be much more user friendly than its 1,4 cousin. The
lower melting point of HER...
Plastics Engineering (November 1998).
Two articles which originate from applicant itself
contain references to HER in the following manner:
... aromatic diol extenders, such as the bis-
(hydroxyethyl) ether of resorcinol(HER) and
hydroquinone(HQEE) often are used. ...
Based on the structures of BD and HER, it can be
expected that the HER-based hard segments would have a
longer chain ...
To demonstrate that HER has better physical and
mechanical properties ...
Rubber and Plastics News (November 29, 1999); and
To maintain mechanical properties at elevated
temperature, aromatic diols such as bis([Beta]-
hydroxyethyl)ether of resorcinol (HER) and ... .
Because HER and HQEE possess similar molecular
structures ...
Indspec Chemicals is in the process of developing a
Technical Grade HER material for cost sensitive ... .
The major difference between the high purity (HP) and
Technical Grade (TG) HER materials is associated
with...
Ser No. 75/706,371
4
Adhesive Technology (March 1, 1999).
In addition, the Examining Attorney has made of record
copies of a web page of a third party as well as two
patents obtained by companies other than applicant in which
reference is made to HER without any acknowledgement of any
trademark rights in the designation.
Applicant contends that HER is an arbitrary term being
used by applicant to identify its brand of aromatic diols,
which have several chemical names. Applicant argues that
HER is not merely descriptive in that it does not
immediately convey the name of the goods. Insofar as the
articles relied upon by the Examining Attorney are
concerned, applicant argues that because these articles are
about applicant’s products, they reflect trademark usage of
HER, in that they show that applicant is the source of
these goods. Finally, applicant contends that HER could
stand for any number of chemical products, naming several
possibilities.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about characteristics, features or qualities of
the goods or services with which it is being used. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). Whether or not a particular term or phrase is
Ser No. 75/706,371
5
merely descriptive is determined not in the abstract, but
rather in relation to the goods or services for which
registration is sought, the context in which the
designation is being used, and the significance the
designation is likely to have to the average purchaser as
he or she encounters the goods or services bearing the
designation, because of the manner in which it is used.
See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
We find the articles made of record by the Examining
Attorney, in particular those quoted above, clear evidence
that HER has been adopted by both applicant itself and
others in the trade as a shorthand means of referring to an
aromatic diol product, namely, the hydroxyethyl ether of
resorcinol. There is no indication anywhere in these
articles that HER is being used in a trademark sense to
refer to the source of applicant’s goods; instead, HER is
simply being used as an abbreviation or shorthand means of
referring to the product itself, in the same manner as
other shorthand terms such as HQEE are being used to refer
to other products. Clearly, people reading these articles,
who presumably would be potential customers for these
products, upon seeing the manner in which HER is being
used, would view HER as referring to the particular
material, rather than indicating the source thereof. HER
Ser No. 75/706,371
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merely conveys information as to the nature of the specific
product, and as such, is merely descriptive. Although
applicant argues that it should not be penalized for the
failure of others to acknowledge its trademark rights,
applicant itself has used HER in the same descriptive
manner. Cf. In re Pharmaceutical Innovations, Inc., 217
USPQ 365 (TTAB 1983)(evidence of the context in which the
mark is used in advertising materials is probative of the
reaction of prospective purchasers to the mark).
While the Examining Attorney has made references to
HER being generic in that it is an abbreviation for a
common name for the goods, the issue of genericness is not
before us. The only question is mere descriptiveness.
Whether or not applicant’s goods have more than one common
name and whether or not HER might be viewed as an acronym
for any one of these common names is irrelevant. The fact
remains that HER is being used in a descriptive manner to
refer to the nature of the goods and would be perceived as
such by prospective purchasers.
Applicant’s argument that HER could equally well refer
to other chemical compounds is to no avail. As pointed out
above, the letters HER are not considered in the abstract,
but in relation to the particular goods with which they are
being used. Here, HER is being used in connection with
Ser No. 75/706,371
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aromatic diols, and the evidence shows that HER is being
used in a descriptive manner as a shorthand means of
referring to a particular diol.
Finally, applicant argues that consideration should
also be given to the fact that the mark HER was previously
registered to a predecessor company for the same goods,
although cancelled in 1985 under Section 8. We agree with
the Examining Attorney that the descriptive use of HER in
the interim has been such that potential purchasers would
no longer view the abbreviation HER as a mark, but rather
as a descriptive designation referring to the material
itself.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
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