Nucor Corp.

Trademark Trial and Appeal Board

Aug 12, 1997

EX (T.T.A.B. Aug. 12, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTTAB 12 AUG 97
Paper No. 22
EWH/TAF
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nucor Corporation
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Serial No. 74/499,516
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Richard S. Shenier of Shenier & O’Connor for Nucor
Corporation.
Angela M. Micheli, Trademark Examining Attorney,
Law Office 108 (David E. Shallant, Managing Attorney)
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Before Sams, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On March 14, 1994 Nucor Corporation (applicant) filed
an application seeking to register HI-TEC in typed capital
letters for "steel sheet and strip, and lengths of steel
sheet and strip formed into rolls and coils." Applicant
claimed that it first used the mark on February 18, 1994.
In her first Office Action, the Examining Attorney
refused registration "because the proposed mark merely
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describes [applicant's] goods." The Examining Attorney
attached approximately ten excerpts of stories from the
NEXIS database which purportedly supported her position.
In response, applicant noted that the Examining
Attorney had demonstrated "confusion between a product and a
process for making the product." Continuing, the applicant
explained that "any given grade of steel is the same whether
made by old steel mills ... or by modern steel mills
employing continuous casting. ... Modern steel mills
employ 'high tech' equipment; but the steel produced is
identical to and meets the same specifications as that made
by old 'low tech' equipment." A review of the Examining
Attorney's NEXIS evidence demonstrates that the term "high-
tech" does indeed refer to a process for making steel, and
not to the steel itself. As applicant explained, "the term
'high-tech' may be descriptive as applied to processes,
processing equipment and mills; but as applied to the steel
product, it is merely suggestive." Applicant concluded its
response by making reference to eight registrations of marks
containing the term HI-TEC (or variations thereof) wherein
the goods were various steel or metal products and wherein
the term HI-TEC was not disclaimed.
In her second and "final" Office Action, the Examining
Attorney maintained her refusal on the basis that
applicant’s mark was merely descriptive of applicant's
goods. In so doing, she noted that applicant itself stated
that "the term HI-TEC refers to the way the steel is
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processed." In addition, the Examining Attorney discussed
the merits of applicant's list of eight third-party
registrations and noted that "third-party registrations are
not conclusive on the question of descriptiveness." The
Examining Attorney never objected to the fact that applicant
simply listed the registrations and did not make of record
copies of the registrations.
Applicant then submitted a request for reconsideration
and a proposed amendment to its description of goods which
reads as follows: "steel sheet and strip and lengths
thereof formed into rolls and coils, all of standard
industrial quality." Attached to applicant's request for
reconsderation was the declaration of LeRoy C. Prichard, a
Vice President of applicant. In his declaration, Mr.
Prichard made the following statement: "The term 'high
tech' as applied to steels might include such specialty
steels as stainless steels, electrical steels, tool steels,
and special alloy steels; but it is not descriptive of any
particular one." (Emphasis added). Applicant again
emphasized that the Examining Attorney was confusing a
process for making steel and steel itself. Applicant
explained that with regard to the latter, the term HI-TEC
was not descriptive of any type of steel, but that to
eliminate any doubt whatsoever on this point, applicant was
limiting its identification of goods by including the words
"all of standard industrial quality." Applicant noted that
while certain specialty steels might have the term "high
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tech" applied to them, standard industrial quality steel
would certainly not have that term applied to it.
In her third office action, the Examining Attorney
noted that "applicant states that the goods it manufactures
are not of the high-tech variety ... [and thus] the term
[HI-TEC], as used by the applicant, is deceptively
misdescriptive and unregistrable under Section 2(e)(1)."
Applicant then took an appeal to this Board and filed
its appeal brief.
Subsequently, the Examining Attorney requested that the
case be remanded to her. The Examining Attorney explained
that in her third office action, she raised a new ground of
refusal and yet made the refusal to register final. The
Examining Attorney stated that she "should have issued a
non-final action formally refusing registration on the basis
that the mark was deceptively misdescriptive of applicant's
goods. This Board granted the Examining Attorney's request
for remand.
The Examining Attorney then issued a fourth and final
office action refusing registration pursuant to Section
2(e)(1) of the Lanham Trademark Act on the basis that
applicant's mark "is deceptively misdescriptive of
[applicant's] goods." The Examining Attorney attached
additional NEXIS evidence of the same type attached to her
first office action, namely, evidence demonstrating that the
words "high-tech" and "high-technology" describe a type of
process for the manufacture of steel.
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Applicant then filed a supplemental brief. The
Examining Attorney filed her brief. Finally, applicant
filed a reply brief.
The only issue before this Board is whether applicant's
mark, as applied to the goods set forth in applicant's
amended identification, is deceptively misdescriptive
pursuant to Section 2(e)(1) of the Lanham Trademark Act.
What is not before this Board is the issue of whether
applicant's mark, as applied to the goods set forth in
applicant's amended identification, is merely descriptive of
said goods. The Examining Attorney explicitly withdrew her
refusal to register on the basis of mere descriptiveness.
Moreover, because the issue of mere descriptiveness was
considered by the Examining Attorney and then the refusal
based on this ground was withdrawn, this Board cannot remand
the case to the Examining Attorney for reconsideration of
her decision to withdraw this ground of refusal.
As the Examining Attorney correctly notes, "the test
for deceptive misdescriptiveness has two parts: (1) does
the mark misdescribe the goods, and (2) are consumers likely
to believe the misrepresentation." (Examining Attorney's
brief page 2 citing In re Quady Winery, Inc., 221 USPQ 1213,
1214 (TTAB 1984). The Examining Attorney notes that
applicant's own vice-president (Mr. Prichard) stated that
"the term ‘high-tech’ as applied to steels might include
such specialty steels as stainless steels, electrical
steels, tool steels, and special alloy steels; but it is not
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descriptive of any particular one." (Examining Attorney's
brief page 4, emphasis added). The Examining Attorney then
continues by stating as follows: "The use of the proposed
mark on steel products conveys to the relevant purchasing
public that applicant's goods are of the variety of steel
called high tech. Since the term high tech is used in
connection with steel, it is a reasonable step to say
purchasers would believe the goods are what they say there
are, that is, high tech steel." (Examining Attorney's brief
page 5).
We have two problems with the Examining Attorney's
approach. First, the only evidence of record which
indicates that certain types of steel (as opposed to
processes for making steel) might be referred to as "high
tech" is the aforementioned statement of Mr. Prichard.
However, Mr. Prichard's statement should not be interpreted
to mean that the term "high tech" does indeed specify a
particular type of steel. Mr. Prichard clearly qualified
his comments by noting "that the term ‘high tech’ ... is not
descriptive any particular [type of steel]." Thus, on this
particular record, it is debatable as to whether the mark
HIGH-TEC is misdescriptive of applicant's "steel sheet and
strip and lengths thereof formed into rolls and coils, all
of standard industrial quality."
However, even if we assume that the mark HIGH-TEC is
misdescriptive of applicant's goods, there is no evidence in
the record to support the Examining Attorney's belief that
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"it is a reasonable step to say purchasers would believe the
goods are what they say they are, that is, high tech steel.”
(Examining Attorney's brief page 5). Applicant's goods are,
obviously, not consumer products. There is no dispute that
applicant's goods are purchased only by sophisticated
professionals. Even if we assume there is a particular type
of steel known as "high tech," there is no evidence that
such sophisticated professional purchasers -- upon seeing
the mark HIGH-TEC on steel of standard industrial quality --
would actually beleive that said steel is “high tech."
Rather, it is more likely that such sophisticated
professional purchasers would view the use of the mark HI-
TEC on standard industrial quality steel to be but mere
puffery.
Decision: The refusal to register on the basis that
applicant's mark is deceptively misdescriptive when applied
to the goods as set forth in applicant's amended
identification of goods is reversed.
J. D. Sams
E. J. Seeherman
E. W. Hanak
Administrative Trademark
Judges, Trademark Trial
and Appeal Board