Nicolet Instrument Corp.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 75425818 (T.T.A.B. Jan. 5, 2001)

1/5/01 Paper No. 15
RLS/cv
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nicolet Instrument Corporation
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Serial No. 75/425,818
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Lydie Arthos Hudson of Lathrop & Clark LLP for Nicolet
Instrument Corporation.
Michele-Lynn Swain, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
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Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Nicolet Instrument Corporation (applicant), a
Wisconsin corporation, has appealed from the final refusal
of the Trademark Examining Attorney to register the mark
SATELLITE for "scientific instruments, namely, infra-red
spectrometers."1 The Examining Attorney has refused
registration under Section 2(e)(1) of the Act, 15 U.S.C.
1 Application Serial No. 75/425,818, filed January 29, 1998,
based upon applicant's bona fide intention to use the mark in
commerce. According to one definition of record, a spectrometer
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/425,818
2
§1052(e)(1), on the basis that the mark SATELLITE is merely
descriptive of a feature or use of applicant's goods--that
is, that applicant's spectrometers may be used on
satellites.2 Applicant and the Examining Attorney have
submitted briefs but no oral hearing was requested.
We affirm.
Relying upon dictionary definitions, excerpts from a
Nexis computer search and an Internet search, the Examining
Attorney contends that applicant's spectrometers may be
carried on satellites and that the relevant public seeing
the asserted mark SATELLITE used in connection with
is "a spectroscope equipped with scales for measuring wavelengths
or indexes of refraction."
2 In the Examining Attorney's first refusal, issued January 7,
1999, the Examining Attorney indicated that applicant's mark was
merely descriptive because "a satellite is a component of a
spectrometer." In the final refusal, issued May 12, 1999, the
Examining Attorney maintained the refusal stating that
"spectrometers and satellites can be used interchangeably.
Spectrometers are components of satellites and satellites are
components of spectrometers. Moreover, spectrometers can be
specially configured for use with satellites."
In her brief, the Examining Attorney contended that the mark
was merely descriptive because:
Since satellites utilize spectrometers, consumers
seeing the mark SATELLITE used in connection with
applicant's goods will at once be informed as to
the nature of the goods. No mental leap or
supposition is required to conclude that the
intended mark, when used in relation to
spectrometers, refers to spectrometers intended
for use with satellites.
It appears, therefore, that the Examining Attorney is no longer
contending that the mark is merely descriptive because
"satellites are components of spectrometers."
Ser. No. 75/425,818
3
spectrometers will be immediately informed as to the nature
or use of applicant's spectrometers--that they are
spectrometers for use aboard satellites. Also, the
Examining Attorney contends that there is no evidence in
this record to indicate that applicant's goods will not
include infrared spectrometers for use on satellites.
The Nexis and Internet evidence includes evidence that
satellites have been launched into space carrying
spectrometers. Some of the Internet evidence is excerpted
below:
Australia may launch the world's first
satellite-based imaging spectrometer if the
project is given the go-ahead by a feasibility
study currently…
…in-orbit calibration of the satellite
spectrometers during the long time missions to
observe the instrument behaviour and to secure
the reliability of the data…
The medium-energy concentrator spectrometer on
board the BeppoSAX X-ray astronomy satellite…
The INTEGRAL science payload consists of two
main instruments, the spectrometer SPI and the
imager IBIS supplemented by two subsidiary
instruments…
The Extreme Ultraviolet Explorer satellite,
launched by NASA on June 7, 1992, contains
three EUV spectrometers with grazing-incidence
optics built at UC Berkeley.
The EUVE satellite spectrometers observed the
prototype eclipsing binary Algol over nearly
1.5 orbital periods.
Ser. No. 75/425,818
4
…and remote sensing of atmospheric trace
species using high-resolution ground-based and
satellite spectrometers.
Meanwhile, scientists were closely eyeing the
readout from a pressure gauge inside the
satellite's spectrometers.
Satellite spectrometers for global Ozone…
Satellite spectrometers for pollutants SO2,
NOx…
Applicant, on the other hand, argues that the mark
SATELLITE is an arbitrary and fanciful term for a
particular scientific instrument which measures a spectrum
of light. Applicant states that spectrometers have a
number of uses having nothing to do with satellites,
including uses by universities and chemical companies to
analyze properties of chemicals. Applicant does
acknowledge, however, that sometimes satellites are
launched carrying spectrometers. However, applicant argues
that "SATELLITE" is not descriptive of a function of
spectrometers even if satellites carry spectrometers into
orbit. Applicant has submitted an affidavit and a letter
from an associate professor of chemical engineering.
According to this evidence, most spectrometers have nothing
to do with satellites but rather are used for spectrum
analysis in laboratories. However, it is acknowledged that
the HUBBLE space telescope satellite contains spectrometers
Ser. No. 75/425,818
5
to allow observation of radiation from planets and space.
Also,
…use of the word Satellite as a model name for
another FTIR spectrometer would be suitable and
appropriate, and would cause no confusion among
the user community with the very different case
of a spectrometer launched into space on a
satellite.
Letter of Thatcher W. Root, dated July 22, 1999.
Upon careful consideration of this record and the
arguments, we believe that the Examining Attorney has
established that the term SATELLITE is merely descriptive
of an intended use of spectrometers, at least with respect
to spectrometers which are launched into space aboard
satellites. In this regard, we observe that applicant's
application is unrestricted in nature and could include
both ground-based and satellite-launched spectrometers. As
the Examining Attorney has noted, a term need not describe
all purposes or uses of a product in order to be merely
descriptive. It may be merely descriptive if it describes
one of the purposes or intended uses. Accordingly, we
conclude that the mark SATELLITE is merely descriptive of
applicant's goods as described.
Decision: The refusal of registration is affirmed.