Pirelli Cavi e Sistemi, S.p.A.

Trademark Trial and Appeal Board

Nov 14, 2001

No. 75704230 (T.T.A.B. Nov. 14, 2001)

11/14/01

Paper No. 16
EJS

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pirelli Cavi E Sistemi, S.p.A.,
assignee of Pirelli Cables & Systems LLC
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Serial No. 75/704,230
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Virginia L. Carron and Laurence R. Hefter of Finnegan,
Henderson, Farabow, Garrett & Dunner, L.L.P. for Pirelli
Cavi E Sistemi, S.p.A.

David Gardiner, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney)
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Before Seeherman, Hanak and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Pirelli Cavi E Sistemi, S.p.A., assignee of Pirelli
Cables & Systems LLC, has appealed from the final refusal
of the Trademark Examining Attorney to register KLEENCORE
as a trademark for “fiber optic cables.”1 Registration has
been refused pursuant to Section 2(e)(1) of the Trademark

1 Application Serial No. 75/704,230, filed May 10, 1999, and
asserting first use and first use in commerce as early as
September 1996.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/704,230
2
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive of its goods.
The appeal has been fully briefed.2 An oral hearing
was not requested.
A term is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Trademark Act
in the absence of evidence of acquired distinctiveness, if
it immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). The question of whether a particular term is
merely descriptive must be determined not in the abstract,
but 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,
because of the manner in which it is used, to the average
purchaser as he encounters goods bearing the mark in the

2 Applicant’s request for an extension of time to file its reply
brief in view of the September 11 attacks is granted. With his
appeal brief the Examining Attorney has submitted excerpts from
two dictionaries and from a website, and has asked us to take
judicial notice thereof. Applicant has not objected, but it has
not treated these submissions as of record. The Board may take
judicial notice of dictionary definitions, and grants the
Examining Attorney’s requests with respect to the Newton’s
Telecom Dictionary and Computer Dictionary submissions. However,
the excerpts from the www.howstuffworks.com website does not fall
into the category of a recognized reference work, and therefore
we have not considered this material.
Ser No. 75/704,230
3
marketplace. In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
In this case, applicant has acknowledged that “the
distinctive characteristic of KLEENCORE fiber optic cables
is that they do not contain core-flooding gels.” Brief, p.
4. Applicant touts this feature in its specimens, with a
bullet that its KLEENCORE cable “eliminates core flooding
gels for cleaner and faster cable termination.” In
literature for other cables applicant points to the
“feature and benefit” of its KleenCore technology, that
this discipline “utilizes[s] dry water blocking materials
which are easily and quickly removed, thus the task of
cleaning the buffer tubes is eliminated, resulting in
significant craft labor cost savings.”
The Examining Attorney has made of record an article
from the October 15, 1996 issue of “America’s Network,”
taken from the American’s Network website which discusses
fiber optic cable, and which specifically refers to
applicant’s “KleenCore ‘dry cable’ family, a line of
products that do not use core-flooding gels. … The absence
of such gels eliminates the mess and associated time spent
to clean the gels from core components during sheath
preparation and termination.”
Ser No. 75/704,230
4
Based on this evidence, as well as the dictionary
entries for “core,” “fiber optics” and “fiber optic cable”
submitted by the Examining Attorney with his appeal brief,
of which we take judicial notice,3 we find that applicant’s
mark would immediately convey to a consumer of fiber optic
cable that a feature of applicant’s product is to provide a
clean core for the fiber optic cable. KLEEN, the phonetic
equivalent of the word “clean,” would obviously be
recognized as this word, a point that applicant does not
dispute. We also find that the word CORE would immediately
be understood as the core of the fiber optic cable. In
this connection, we reject the definition that applicant
has provided for “core” as “the hard or fibrous central
part of certain fruits, containing the seed.”4 The term
“core,” as the various dictionary and website materials
show, has a clear meaning in connection with fiber optic
cables, i.e., “the central glass element of a fiber optic
cable through which the light is transmitted.”5 Nor,
because of the clear meaning of “core” for fiber optic

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
4 Although applicant did not provide copies of the dictionary
definitions referenced in its responses to Office actions and its
brief, the Examining Attorney has accepted these definitions as
accurate, as do we.
5 Newton’s Telecom Dictionary, © 2000.
Ser No. 75/704,230
5
cable, do we accept applicant’s argument that because CORE
is the phonetic equivalent of CORPS, consumers will view
KLEENCORE as suggesting “an army or corp [sic] of cleaners”
providing “consumers with a product that is not only free
of moisture but actually uses its ‘corp’ [sic] of cleaners
to block water and moisture.” Brief, pp. 3-4.
Much of applicant’s argument is based on the
presumption that, in order to prove that a mark is merely
descriptive, the Examining Attorney must show that “a
consumer upon hearing or seeing the mark KLEENCORE would
know … that the goods associated with the mark are fiber
optical cables.” Brief, p. 4. However, as indicated
above, the law is clear that the question of mere
descriptiveness is not to be determined in the abstract,
but must be determined in the context of the goods or
services with which the mark is used. Consumers of fiber
optic cables, seeing the mark KLEENCORE used in connection
with these goods, would immediately understand that a
feature of the goods is that it has a cleaner core. The
fact that the mark does not also describe the precise
methodology by which this is achieved, i.e., by the
elimination of core-flooding gels, does not take away from
the descriptive nature of the mark.
Decision: The refusal of registration is affirmed.