Lincoln Global, Inc.

Trademark Trial and Appeal Board

Aug 15, 2007

No. 78296068 (T.T.A.B. Aug. 15, 2007)

Mailed:
August 15, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lincoln Global, Inc.
________

Serial No. 78296068
_______

Gregory S. Vickers and Robert V. Vickers of Fay Sharpe LLP
for Lincoln Global, Inc.

Georgia Ann Carty Ellis, Trademark Examining Attorney, Law
Office 117 (Loretta C. Beck, Managing Attorney).
_______

Before Hairston, Bucher and Taylor, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Lincoln Global, Inc. seeks registration on the
Principal Register of the mark COAXIAL TRANSFORMER
TECHNOLOGY for goods identified in the application as
“electric arc welders and power supplies therefore” in
International Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to

1 Application Serial No. 78296068 was filed on September 4,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. No claim is made to the word
“Technology” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78296068
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register this designation under Section 2(e)(1) of the
Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
identified goods, i.e., that the term “coaxial transformer
technology” immediately informs potential purchasers about
the nature of applicant’s goods.
Applicant and the Trademark Examining Attorney have
fully briefed the issues involved in this appeal.
We affirm the refusal to register.
Preliminary matters
Applicant specifically objected to the entry and the
reliance on evidence obtained after its Notice of Appeal
was filed. However, inasmuch as this evidence was directed
to the issue for which reconsideration was sought, we will
not exclude it. In effect, applicant’s request for
reconsideration allows the Trademark Examining Attorney to
supplement the record:
If the examining attorney, upon
consideration of a request for
reconsideration (made with or without new
evidence), does not find the request
persuasive, and issues a new final or
nonfinal action, the examining attorney may
submit therewith new evidence directed to
the issue(s) for which reconsideration is
sought….

TBMP § 1204 at 1200-28 (2d ed. rev. 2004).
Serial No. 78296068
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Applicant’s second basis for objection to some of the
Trademark Examining Attorney’s Internet evidence is based
on the fact that the evidence was obtained from foreign
sources. While it is true that sometimes excerpted stories
appearing in foreign publications may be found to be of
limited probative value [In re Couture, 60 USPQ2d 1317,
1318 (TTAB 2001)], in such a case, they would still not be
stricken from the record.2 Moreover, in particular
situations, including the engineering field, it is
reasonable to assume that engineering professionals will
utilize all available resources, regardless of country of
origin or medium. Accordingly, in cases such as the
instant case, involving sophisticated technology, it is
reasonable to consider a relevant article from an Internet
website, particularly from an English language site, about
technological innovations in another country inasmuch as
that resource is likely to be of interest worldwide
regardless of its country of origin. In re Remacle, 66
USPQ2d 1222, 1224, fn. 5 (TTAB 2002).

2 However, as to the probative value of Internet hits that
are quite abbreviated, the mere appearance of a term in a brief
summary has very limited probative value, especially compared
with evidence that provides the context within which a term is
used. See In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828 (Fed. Cir. 2007); and In re King Koil Licensing
Co., 79 USPQ2d 1048 (TTAB 2006).

Serial No. 78296068
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Is term merely descriptive?
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 82 USPQ2d at 1831 [ASPIRINA is
merely descriptive of analgesic product]. See also In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987)
[APPLE PIE merely descriptive of potpourri mixture]; and In
re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). To be “merely descriptive,” a term need
only describe a single significant quality or property of
the goods. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a
mark is not considered in the abstract, but in relation to
the particular goods or services for which registration is
sought. That is, when we analyze the evidence of record,
we must keep in mind that the test is not whether
prospective purchasers can guess what applicant’s goods are
after seeing applicant’s mark alone. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978) [GASBADGE merely descriptive of a “gas monitoring
badge”; “Appellant’s abstract test is deficient – not only
Serial No. 78296068
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in denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”]. Hence, the ultimate question before
us is whether the term COAXIAL TRANSFORMER TECHNOLOGY
conveys information about a significant feature or
characteristic of applicant’s goods with the immediacy and
particularity required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted) In re Gyulay, 3 USPQ2d at 1009]; In re Home
Builders Association of
Greenville, 18 USPQ2d 1313
(TTAB 1990) [NEW HOME BUYER’S GUIDE merely descriptive of
“real estate advertisement services”]; and In re American
Serial No. 78296068
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Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) [APRICOT is
merely descriptive of apricot-scented dolls]. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the applied-for mark in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the significance
that the mark is likely to have on the average purchaser
encountering the goods or services in the marketplace. See
In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [the term

“first tier” describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs
for controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991) [MULTI-VIS is merely descriptive of “multiple
viscosity motor oil”]; In re Engineering Systems Corp.,
2 USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely descriptive
of computer graphics programs]; and In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS merely
descriptive of a coaster suitable for direct mailing].
Serial No. 78296068
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In arguing for registrability, applicant contends that
its mark is suggestive at worst, if not even arbitrary;
that it requires a great deal of imagination in order for
the relevant public to perceive any significance of the
words of the mark, taken as a whole, as it relates to the
applicant’s goods.
By contrast, the Trademark Examining Attorney contends
that applicant has selected three descriptive terms to
create its mark, and that the joining together of these
three descriptive terms does not obviate the descriptive
nature of the mark as a whole. She argues that the
evidence shows that this is a term of art in the field of
arc welding, or alternatively, that even if applicant
should be the first and sole user of a merely descriptive
designation, this does not justify registration where the
evidence shows that the term is merely descriptive of the
identified goods.
In reviewing the evidence from the Internet placed
into the record by the Trademark Examining Attorney, we
agree with a number of applicant’s criticisms.
First, to the extent that the Trademark Examining
Attorney gets a hit based upon the inclusion of a
particular combination of words within a website’s
Serial No. 78296068
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metatags, such hits are worthless. Some of the entries
appear to be included based on the term’s placement in
metatags inasmuch as the searched words do not appear
anywhere on the screen prints reproduced for the record.
Second, among the sources that one can locate when
doing a search on the Internet, some individuals who post
information in chat rooms or elsewhere on the web leave
behind writings that are of questionable credibility.
Third, online electronic supply houses will clearly
list coaxial power plugs on one page and power transformers
on another. This is neither relevant to, nor supportive
of, the position of the Trademark Examining Attorney
herein.
Fourth, some of the websites contain terms such as
“coaxial transformer” but use this in connection with
unrelated products, including some in totally unrelated
industries.3 For instance, this is especially true with
coaxial cables that are used with radio antennaes, where
this combination of words is used in multiple excerpts
drawn from the Internet or Lexis/Nexis, but its usage in

3 Although Applicant has objected to the entry of this
material into the record, we permit it to be part of the record.
Nonetheless, we find that when the excerpts use this terminology
in technologies unrelated to power supplies for products like
electric arc welders, the articles have no probative value.

Serial No. 78296068
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this context has no relevance to the involved welding or
power supply technologies.
Accordingly, even when considering foreign websites
dealing in some way with relevant technologies, we find
very little in the hefty attachments placed into the record
by the Trademark Examining Attorney that supports the
conclusion that applicant’s involved mark is merely
descriptive of these goods.
On the other hand, we find that the most probative
usage of the combined term “coaxial transformer” by a third
party is in the context of Eldec® brand induction heating
equipment. While applicant is correct that induction
heating is clearly a different process from arc welding, it
is another industrial method for joining metals. While the
methodology for joining metals may be quite different, it
is not as clear that the technology for high frequency
power supplies are so very different when used with
inductive brazing, pre-weld inductive heating or electric
arc welding equipment. The record shows that Eldec
inductive heating and/or brazing machines have “coaxial
transformers” of some kind. The entire record, including
applicant’s own literature, confirms that coaxial winding
transformers involve a power supply technology that is
Serial No. 78296068
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different from the underlying technology of conventional
transformers.
Both applicant and the Trademark Examining Attorney
have placed into the record various definitions of the word
“coaxial”:
“[h]aving or mounted on a common axis”4
“having coincident axes; mounted on concentric
shafts”5

In this context, the single item in the record most
helpful to the position of the Trademark Examining Attorney
is a discussion of applicant’s involved goods:
6

4 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, (4th ed.
2000), also found at www.Bartleby.com.

5 WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY.

6 Entire text of this section is as follows:

What is Coaxial Transformer Technology™?
Serial No. 78296068
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It is clear from this entire record that applicant’s
enumerated goods include high frequency transformer modules
for use in electric arc welding. Applicant’s literature
stresses the ways in which efficiency and reliability can
be compromised in high amperage transformers if the
resulting heat is not dissipated sufficiently from the
transformer. The winding shape (e.g., in the involved
transformers, “the coaxial orientation of the primary and
secondary windings”) has a significant influence on the
transformer properties (e.g., low and controlled leakage
inductance) and the possibilities for cooling the power
supply.
As seen above, applicant
pictures the transformer windings
in concentric cylindrical tubes.

To transform large amounts of power as is needed for welding, the power source transformer is a critical
factor. Traditional transformers become more inefficient the larger they become. This becomes a problem
especially for large power sources (i.e. submerged arc power sources). If the transformer becomes
inefficient, it requires more power to be dissipated in all of the components before the transformer. This
results in a drastically reduced overall efficiency, components that run at higher temperatures, and reduced
reliability.

Coaxial Transformer Technology eliminates these problems. Regardless of the size (power level) a coaxial
transformer has superior coupling and efficiency. This is obtained through the coaxial orientation of the
primary and secondary windings.

The benefits for the customer include:
• Higher power capabilities (submerged arc inverters)
• Higher efficiency (reduced energy costs)
• Higher reliability (lower stresses on components)

Serial No. 78296068
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The logo presentation of the mark
within an oval also accentuates this
patented design feature.
While Applicant repeatedly takes the position that
there is no such thing as a “coaxial transformer” in
relation to its electric arc welding products, applicant’s
own literature says that “[r]egardless of the size (power
level) a coaxial transformer has superior coupling and
efficiency.” This lower case usage of this term seems to
belie applicant’s continuing assertions about the inherent
source-indicating function of this term. Hence, while we
cannot agree with the Trademark Examining Attorney’s
alternative argument that “coaxial transformer” has been
shown to be a term of art in the field of arc welding, it
is nonetheless a term that appears to be readily
understandable in the closely related fields of inductive
heating and/or brazing machines.
And of course, as correctly noted by the Trademark
Examining Attorney, even if applicant were the first user
of the term in the electric arc welding industry, the fact
that an applicant may be the first and sole user of a
merely descriptive or generic designation does not justify
registration where the evidence shows that the term is
Serial No. 78296068
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merely descriptive of the identified goods and/or services.
In re Acuson, 225 USPQ 790 (TTAB 1985) [COMPUTED SONOGRAPHY
descriptive of ultrasonic imaging instruments]; and In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983) [SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE
held apt descriptive name for conducting and arranging
trade shows in the hunting, shooting and outdoor sports
products field].
As to the meaning of the word “Technology,” not only
has the Trademark Examining Attorney placed a dictionary
definition of this descriptive word into the record, but
applicant has disclaimed this unregistrable term.
Applicant’s usage of “COAXIAL TRANSFORMER TECHNOLOGY” (within
the oval, as shown above) depicts the two words
“Transformer Technology” in identical lettering, and this
is used in connection with power supplies having design
features that applicant touts as being patented.7

7 We see no inconsistency with the holding of our primary
reviewing court in the case of In re Hutchinson Technology Inc.,
852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). This was a surname
case. Hence, to the extent that the Hutchinson Technology
decision is even applicable to a discussion under Section 2(e)(1)
of the Act, where here applicant uses the combined form
“Transformer Technology” in the context of a patented power
supply, the term has a great deal more “particularity” than it
has when used in connection with computerized products generally.

Serial No. 78296068
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We agree with the Trademark Examining Attorney that
these three words, when combined as applicant has done, do
not lose the descriptive connotations of the several
components. That is, there is no novel or incongruous
meaning that is created within this combination.
Accordingly, we find that in light of the ordinary
meaning of the words, supported by some third-party usage
in related fields of technology, and applicant’s own
descriptive usage, there is sufficient support for
concluding that this composite is merely descriptive.
While applicant finds support for its position in the
case of In re EBSCO Industries Inc., 41 USPQ2d 1917, we do
not find this case to be analogous. In EBSCO, the board
found that applicant’s single instance of laudatory
advertising was insufficient to meet the Office’s burden of
demonstrating that the involved configuration of goods was
de jure functional. However, the standard for showing that
a design configuration is de jure functional (an absolute
bar to registration growing out of public policy concerns)
is higher than that for demonstrating mere descriptiveness
(where the line between merely descriptive matter and
suggestive marks is not always so clear, and doubt is
resolved in favor of registration). Furthermore, in this
Serial No. 78296068
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case, in addition to applicant’s own descriptive, if not
generic usage, we have the ordinary meanings of the
individual words, with additional corroboration that the
term “coaxial transformer” is used by other merchants and
manufacturers in connection with parallel heating and
welding technologies.
Decision: We hereby affirm the refusal to register
this matter under Section 2(e)(1) of the Lanham Act.