Lenore E. Perry

Trademark Trial and Appeal Board

May 18, 2001

No. 75382570 (T.T.A.B. May. 18, 2001)

5/18/01
Paper No. 15
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Lenore E. Perry
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Serial No. 75/382,570
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Gerald S. Schur of Welsh & Katz, Ltd. for Lenore E. Perry.
Angela Lykos, Senior Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark MINIBORE.COM, in typed form, for services
recited in the application as “providing general
information concerning products and their selection and use
in the field of boring tools for use with machine tools via
a computer global network,” in Class 42.1
1 Serial No. 75/380,570, filed October 31, 1997. The application
is based on applicant’s asserted bona-fide intention to use the
mark in commerce, under Trademark Act Section 1(b), 15 U.S.C.
§1051(b).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/382,570
2
The Senior Examining Attorney refused registration of
applicant’s mark under Trademark Act Section 2(e)(1), on
the ground that the mark is merely descriptive of the
recited services. When the refusal was made final,
applicant filed this appeal. Applicant and the Senior
Examining Attorney filed main briefs, and applicant filed a
reply brief. No oral hearing was requested.
The evidence of record on appeal includes:
(1) a printout (submitted by the Senior Examining
Attorney) of applicant’s Principal Register
Registration No. 2,108,615, issued October 28,
1997, of the mark MINIBORE and design for goods
identified as “boring tools, namely, boring bars
and inserts therefor for use with turning
machines for boring holes, recesses and shoulders
in metal,” in Class 7.2 In the registration,
applicant has disclaimed MINIBORE apart from the
mark as shown.
(2) a printout (submitted by the Senior Examining
Attorney) of a page from http://www.dns.net which
identifies “.com” as a top level domain name.
(3) a printout (submitted by the Senior Examining
Attorney) from the electronic version of The
American Heritage
Dictionary of the English
Language, (3d Ed. 1992) containing the following
entry for “mini-”:
mini- prefix
Small; miniature: minicar.
[From miniature and minimum.]
2 In compliance with the Senior Examining Attorney’s requirement,
applicant has claimed ownership of this registration in its
present application.
Ser. No. 75/382,570
3
(4) a printout (submitted by the Senior Examining
Attorney) from the same dictionary containing the
following entry for “bore”:
bore verb
bored, boring, bores verb, transitive
1. To make a hole in or through, with or
as if with a drill.
2. To form (a tunnel, for example) by
drilling, digging, or burrowing.
verb, intransitive
1. To make a hole in or through
something with or as if with a drill.
2. To proceed or advance steadily or
laboriously: a destroyer boring through heavy
seas.
noun
1. A hole or passage made by or as if by
use of a drill.
2. A hollow, usually cylindrical chamber
or barrel, as of a firearm.
3. The interior diameter of a hole,
tube, or cylinder.
4. The caliber of a firearm.
5. A drilling tool.
(5) a photocopied excerpt (submitted by
applicant) from the Random House Webster’s
Unabridged Dictionary (2d Ed. 1998), which
includes the following entries for “bore,”
“borer,” “boring” and “boring bar”:
bore v., bored, boring, n. –v.t. 1. To
pierce (a solid substance) with some rotary
cutting instrument. 2. To make (a hole) by
drilling with such an instrument. 3. To form,
make, or construct a tunnel, mine, well,
passage, etc.) by hollowing out, cutting
through, or removing a core of material: to
bore a tunnel through the Alps; to bore an oil
well 3000 feet deep. 4. Mach. To enlarge (a
hole) to a precise diameter with a cutting
tool within the hole, by rotating either the
tool or the work. 5. To force (an opening),
as through a crowd, by persistent forward
Ser. No. 75/382,570
4
thrusting (usually fol. by through or into);
force or make (a passage). –v.i. 6. To make
a hole in a solid substance with a rotary
cutting instrument. 7. Mach. To enlarge a
hole to a precise diameter. 8. (of a
substance) to admit of being bored: Certain
types of steel do not bore well. -n. 9. A
hole made or enlarged by boring. 10. The
inside diameter of a hole, tube, or hollow
cylindrical object or device, such as a
bushing or bearing, engine cylinder, or the
barrel of a gun.
borer n. 1. A person or thing that bores or
pierces. 2. Mach. A tool used for boring;
auger.
boring n. 1. Mach. a. the act or process of
making or enlarging a hole. b. the hole so
made.
boring bar, Metalworking. A bar holding a
tool for boring a cylinder or the like.
(6) a printout of applicant’s web page3 (submitted
by the Senior Examining Attorney), which includes
the following excerpts:
Welcome to the Kaiser Tool Company Home Page.
Kaiser Tool Company was founded in 1964 with
the purpose of supplying small cutting tools
that, at the time, were not available as
standard, in-stock items. … Today, we’re a
leading producer of precision cutting tools
with more than 11,000 tools for grooving,
threading, parting, boring and turning. …
MINI-BORE
is our line of indexable boring
bars and inserts. From ground chipbreakers to
0° lead angle bars to step boring bars, the
MINI-BORE
line is designed to meet any boring
need. …
3 http://www.kaisertool.com/
Ser. No. 75/382,570
5
The web page also sets out certain specifications
of applicant’s boring bars, including a
specification for “Minimum Bores.”
(7) A copy of applicant’s September 1998 catalog
of its “MINI-BORE
Indexable Boring Bars and
Inserts” (submitted by applicant in response to
the Senior Examining Attorney’s requirement for
information under Trademark Rule 2.61(b)), which
contains informational statements essentially
identical to the web site excerpts quoted above
at item (6), including an introductory statement
regarding applicant’s founding in 1964 as a
supplier of “small groove cutting tools,” as well
as product specifications in categories such as
“bar diameter,” “minimum bore,” “lead angle” and
“overall length.”
(8) Five letters (submitted by applicant),
addressed to the Assistant Commissioner for
Trademarks, from five of applicant’s
manufacturer’s representatives who assert that
they have represented applicant since 1996 (or,
in one case, since 1997) and who claim,
respectively, fifteen, twenty-four, thirty,
thirty-two and thirty-seven years’ experience in
the machine tools industry. The letters are
printed on the respective company's letterheads.
Aside from the differences in each writer’s
number of years’ experience in the field and in
the starting date of each company’s
representation of applicant, the letters are
identical in content. One of the letters reads
as follows:
We are a manufacturer’s representative of
Kaiser Tool Company, Inc., and market certain
MINIBORE indexable boring bars, inserts and
tool holders for that company. We have been
marketing MINIBORE bars, inserts and tool
holders since 1996.
It is our understanding that Kaiser Tool
Company, Inc. is licensed by Lenore E. Perry
Ser. No. 75/382,570
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to distribute MINIBORE boring bars, inserts
and tool holders using the MINIBORE mark.
In my 30 years of experience with machine
tools and specifically boring tools and
related products, I have never heard customers
or anyone else in the industry refer to such
products as “mini-bores.” These products are
referred to and ordered as boring bars,
inserts and holders for boring bars or inserts
for machine tools and almost always by their
precise dimension specifications. As a
technically oriented field, it is unimaginable
that one would order such a tool by terms such
as “mini” and/or “bore.” As far as I am
aware, the mark MINIBORE is novel and original
with Kaiser Tool Company, Inc.
A term is merely descriptive of goods or services,
within the meaning of Trademark Act 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). A term need not immediately convey an idea of each
and every specific feature of the applicant's goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
Ser. No. 75/382,570
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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. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
Applying these principles to the present case, we find
that there is no reasonable dispute that the .COM portion
of applicant’s mark is merely descriptive of applicant’s
information services, which are provided via the Internet.
Likewise, applicant does not seriously dispute that the
term MINI is merely descriptive of the boring tools which
are the subject of applicant’s information services. Those
tools, as they are broadly identified in the recitation of
services and as is evidenced by applicant’s own promotional
literature (see evidentiary items nos. 6 and 7, at pages 4-
5, supra), would include tools which are miniature or small
in size and which are used for miniature- or small-scale,
precision cutting and boring.
We also find that the term BORE is merely descriptive
of the products, i.e., boring tools, with which applicant’s
information services are concerned. The dictionary
Ser. No. 75/382,570
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evidence submitted by applicant herself (listed above as
item no. 5) establishes that “bore” is a verb defined as
“to pierce (a solid substance) with some rotary cutting
instrument,” and as “to make (a hole) by drilling with such
an instrument.” Moreover, this dictionary gives a
specialized definition of the verb “bore” as it relates to
applicant’s own field, i.e., machining: “to enlarge (a
hole) to a precise diameter with a cutting tool within the
hole, by rotating either the tool or the work.” Finally,
applicant’s dictionary evidence establishes that “bore” is
a noun defined as “a hole made or enlarged by boring.”
Thus, the term “bore,” viewed as a verb and/or a noun,
immediately and directly describes a feature, function or
characteristic of the products with which applicant’s
information services are concerned, i.e., boring tools.
Boring tools bore. A boring tool makes a bore.4
4 The Senior Examining Attorney and the applicant devote
considerable argument to the issue of whether “bore” is a generic
product name for applicant’s goods. The Senior Examining
Attorney argues that it is a generic term, citing one of the noun
definitions of “bore” found in her dictionary, i.e. “a drilling
tool.” Applicant argues that it is not a generic term for
applicant’s products, citing the absence of the “drilling tool”
definition from the other dictionaries in the record, the
industry practice as evidenced by the letters from her
distributors, and the existence of other generic names for the
products, e.g., “boring bars” or “boring tools.”
This dispute as to whether “bore” is a generic term for
applicant’s products appears to have arisen because the Senior
Examining Attorney has cited and relied on two cases, i.e., In re
Occidental Petroleum Corp., 193 USPQ 732 (TTAB 1977)(MINI PELLETS
held to be merely descriptive of pellet fertilizer) and General
Ser. No. 75/382,570
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The combination, in applicant’s mark, of the merely
descriptive terms MINI and BORE creates a composite term,
MINIBORE, which is equally merely descriptive. MINIBORE
immediately and directly describes a feature, function or
characteristic of applicant’s products, which are small-
sized or miniature boring tools used to bore small-bore
bores. This composite term merely describes the products
to which applicant’s information services pertain, and
“.COM” merely describes the manner or medium, i.e., the
Internet, by which the information services are provided.
The entire composite term MINIBORE.COM, viewed in its
entirety, is as merely descriptive of applicant’s services
Mills, Inc. v. K-Mar Foods, Inc., 207 USPQ 510 (TTAB 1980)(MINI
MEAL held to be merely descriptive of miniature food bars), for
the proposition that a composite mark is merely descriptive if it
consists of the term “MINI” plus the generic name of the product.
Applicant, in turn, argues that the two cited “MINI” cases are
distinguishable from the present case because “bore” is not the
generic name for applicant’s products, and concludes therefrom
that her “MINI” mark, unlike the marks involved in the cited
cases, is not merely descriptive.
However, the cited “MINI” cases do not constitute the “rule”
or the sole analytical framework and standard for determining
whether a mark which includes “MINI” is merely descriptive.
Rather, the standards for determining whether any mark is merely
descriptive are those which are set out earlier in this opinion.
Applicant’s mark may be merely descriptive under those principles
and standards even if it does not fit squarely within the fact
pattern of the two cited cases. Thus, it is not dispositive in
this case whether “bore” is or would be perceived as a generic
name for applicant’s product. The other dictionary definitions
of the term “bore,” both as a verb and a noun, clearly establish
that the term is merely descriptive of a feature, function or
characteristic of applicant’s goods. Genericness need not be
proven.
Ser. No. 75/382,570
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as are each of the components of the term viewed
separately.
Decision: the refusal to register is affirmed.