Indspec Chemical Corp.

Trademark Trial and Appeal Board

Apr 5, 2001

No. 75706370 (T.T.A.B. Apr. 5, 2001)

04/05/01
Paper No. 12
HWR
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. 75/706,370
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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 HPR 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
when used in connection with applicant’s goods. The
1 Serial No. 75/706,370, filed May 14, 1999, claiming a first use
date and a first use in commerce date of January 6, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. Error! Reference source not found.
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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
HPR is merely an abbreviation or acronym for a common
commercial name for applicant’s goods. She notes that the
goods are referred to on the specimens by the chemical name
of “resorcinol di(beta-hydroxypropyl)ether” and elsewhere
are referred to as “hydroxypropyl ether of resorcinol” or
“bis(hydroxpropoxylated) ether of resorcinol.” The term
HPR, the Examining Attorney argues, is simply a shorthand
abbreviation which has been used in technical journals and
writings for purposes of simplification. As such, she
maintains that the term HPR does not identify applicant as
the source of the goods, but rather identifies the material
itself.
In support of her position, the Examining Attorney has
made of record several articles from the NEXIS database,
two of which are highly pertinent. In the first article,
which is directed to the work of applicant in the field of
aromatic diols, the following uses of HPR are noted:
Indspec Chemical Corp., manufacturer of the
materials,says it has also expanded this family of
aromatic diol extenders to include other diols which
Ser No. Error! Reference source not found.
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are liquids: hydroxpropyl ether of resorcinal (HPR),
liquid HER... and the hydroxypropyl ethyl ether of
resorcinol (HPER). ...
Cast elastomers made using polyester prepolymer
extended with HPR were softer and showed lower
tensile, tear and high compression set properties
compared to HER-based elastomers. The HPR-based
elastomers also showed very low rebound properties.
Cast films are much clearer and ... compared to HER or
HQEE-made elastomers.
Urethanes Technology (February 1, 1999).
In the second article, which contains a contact address for
one of the authors at Indspec, HPR is used as follows:
HPR-EXTENDED CAST ELASTOMERS
HPR is the bis (hydroxypropoxylated) ether of
Resorcinol. ...
Although the structure of HPR is similar to HER
and HQEE, the presence of methyl groups on the chain
has a pronounced effect on the cured elastomer
properties.
In the case of cast urethanes made using
polyester prepolymers extended with HPR, the
elastomeric materials were found to be softer ...
Interestingly, HPR-based elastomers showed very low
rebound properties and were nearly transparent unlike
the opaque HER or HQEE-made elastomers. ...
As well as developing HPR, Indspec Chemicals is
also formulating a new family of Resorcinol-based
liquid diols that is expected to bring unique
properties to polyurethane applications. By
controlling the reaction conditions and co-reactants
such as ethylene and propylene carbonates, two new
aromatic diols, namely HER (HER-LIQ) and Hydroxyethoxy
propoxy ethyl ether of Resorcinol (HPER) have been
developed.
Adhesive Technology (March 1, 1999).
Applicant contends that HPR is an arbitrary term being
used by applicant to identify its brand of aromatic diols,
Ser No. Error! Reference source not found.
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which have several chemical names. Applicant argues that
HPR 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
HPR, in that they show that applicant is the source of
these goods. Finally, applicant contends that HPR 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
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).
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We find the articles made of record by the Examining
Attorney, in particular those quoted above, clear evidence
that HPR has been adopted by both applicant itself and
others in the trade as a shorthand means of referring to an
aromatic diol product, namely, resorcinol di(beta-
hydroxypropyl)ether. There is no indication anywhere in
these articles that HPR is being used in a trademark sense
to refer to the source of applicant’s goods; instead, HPR
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 HER or 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 HPR is
being used, would view HPR as referring to the particular
material, rather than indicating the source thereof. HPR
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 HPR in the same descriptive
manner. Cf. In re Pharmaceutical Innovations, Inc., 217
USPQ 365 (TTAB 1983)(evidence of the context in which the
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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
HPR 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 HPR might be viewed as an acronym
for any one of these names is irrelevant. The fact remains
that HPR is being used in a descriptive manner to refer to
the nature of the goods and would be perceived as such by
prospective purchasers.
Finally, applicant’s argument that HPR could equally
well refer to other chemical compounds is to no avail. As
pointed out above, the letters HPR are not considered in
the abstract, but in relation to the particular goods with
which they are being used. Here, HPR is being used in
connection with aromatic diols, and the evidence shows that
HPR is being used in a descriptive manner as a shorthand
means of referring to a particular diol.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
Ser No. Error! Reference source not found.
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