Rosemount, Inc.

Trademark Trial and Appeal Board

Feb 27, 2008

No. 78180535 (T.T.A.B. Feb. 27, 2008)

Mailed: February 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rosemount Inc.
________

Serial Nos. 78180535 and 781805401
_______

Judson K. Champlin of Westman, Champlin & Kelly, P.A. for
Rosemount Inc.

Michael Litzau, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).2
_______

Before Drost, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Rosemount Inc. has filed applications to register the
mark “REDUCER” (in typed form)3 and “DOUBLE REDUCER” (in
typed form)4 for goods identified as “flow meters used for

1 On June 27, 2007, the Board consolidated these appeals for the
purpose of briefing.

2 The above applications were originally examined by different
examining attorneys, but were subsequently reassigned to the
attorney listed in the caption to prepare the appeal brief.

3 Application Serial No. 78180535, filed October 31, 2002.

4 Application Serial No. 78180540, filed October 31, 2002.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial Nos. 78180535 and 78180540
2
measuring flow through pipes; vortex flow meters” in
International Class 9.
The applications were initially filed for registration
on the Principal Register under Section 1(b) alleging an
intention to use the marks in commerce. Registration was
originally refused under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the basis that “REDUCER” and
“DOUBLE REDUCER” are merely descriptive of applicant’s
goods. In its responses, applicant argued against the
refusals based on mere descriptiveness. After the notice
of appeal was filed, the Board restored jurisdiction to the
examining attorney to consider applicant’s request to amend
to the Supplemental Register in each application. The
examining attorney initially refused amendment inasmuch as
the applications were not based on use in commerce. After
applicant filed allegations of use in both applications,
the examining attorney accepted the amendments to allege
use. In application Serial No. 78180535, the examining
attorney refused registration on the Supplemental Register
for the mark “REDUCER” under Section 23 of the Trademark
Act, 15 U.S.C. §1091, on the ground that it is incapable of
identifying applicant’s goods because it is generic. In
application Serial No. 78180540, the examining attorney
refused registration on the Supplemental Register for the
Serial Nos. 78180535 and 78180540
3
mark “DOUBLE REDUCER,” pending applicant’s submission of a
disclaimer for the word “REDUCER” based on a disclaimer
requirement made pursuant to Trademark Act Section 6, 15
U.S.C. §1056, on the ground that “REDUCER” is generic.5
When the refusals were made final, the Board resumed
the appeals, and consolidated them after applicant filed
its brief in each case. The consolidated appeals have been
fully briefed.
As a preliminary matter, although applicant’s initial
request to register on the Supplemental Register was
presented as an alternative, in its subsequent responses to
the office actions in both applications applicant clearly
requests registration on the Supplemental Register. In
addition, in its supplemental brief, applicant only
addresses the issue of genericness and in its reply brief
applicant states that “at most the marks are descriptive”
and continues to request registration on the Supplemental
Register. In view thereof, the only issue we must
determine on appeal, as the examining attorney presented in
his brief, is whether the term “REDUCER” is generic for the

5 Failure to comply with a disclaimer requirement is grounds for
refusal of registration. See In re Omaha National Corp., 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1968).

Serial Nos. 78180535 and 78180540
4
identified goods and incapable of distinguishing
applicant’s goods, and therefore is unregistrable on the
Supplemental Register.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, supra, 228 USPQ at
530. Evidence of the public’s understanding of a term may
be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
Serial Nos. 78180535 and 78180540
5
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
We find that the genus of goods at issue in this case
is adequately defined by applicant’s identification of
goods, namely, “flow meters used for measuring flow through
pipes; vortex flow meters.” The printout from applicant’s
website provides further clarification that its flow meters
have “the pipe reductions designed right into the
flowmeter.” Application Serial No. 78180535 Office Action
dated April 12, 2006 Attachment No. 4. Thus, the genus
includes flowmeters that contain pipe reductions or
reducers, as discussed below.
Turning to the second inquiry, in support of his
position that the relevant public understands applicant’s
marks to primarily refer to flow meters that contain
reducers, the examining attorney submitted the following
dictionary definitions for the terms “REDUCER” and “FLOW
METER”:
Reducer n. 2. pipefitting that joins two pipes of
different diameter. WordNet (2003) retrieved
from dictionary.reference.com;

Reducer 2. pipe fitting: a pipe fitting that
connects two pipes of different diameters.
Encarta.msn.com; and

Serial Nos. 78180535 and 78180540
6
Flow meter n. An instrument for monitoring,
measuring, or recording the rate of flow,
pressure or discharge of a fluid, as of a gaseous
fuel. The American Heritage Dictionary of the
English Language (3d ed. 1992).

Building on the meaning of a “pipefitting that joins
two pipes of different diameter,” the examining attorney
relies on excerpts from third-party websites where the term
“REDUCER” is used in connection with flow meters. The most
pertinent portion from each of the website excerpts follows
(emphasis added):
Another important product enhancement is the
introduction of reducer vortex flowmeters.
Reducer vortex meters have a reduced diameter in
the center of the pipe, where the bluff body
generates vortices. The reduced diameter results
in an accelerated flowstream, where the pipe
narrows. The introduction of reducer vortex
models has simplified vortex flowmeter
installation and has improved the ability of
vortex flowmeters to provide accurate measurement
at low flowrates. flowcontrolnetwork.com;

A solution may be to reduce the size of the meter
to increase velocity by utilizing a pipe reducer
on the inlet side and a pipe expansion section on
the discharge side of the meter. If possible,
avoid connecting the reducer and expander
directly onto the meter. flowmeterdirectory.com;

The VRE is an adjustable sample pressure reducer
for sample pressures above 500 psig ...
Adjustable rod-in-tube type design allows for
variable pressure drop and flow control. Sentry-
equip.com;

Some manufacturers have introduced reducer vortex
flowmeters, which have a reduced diameter in the
center of the pipe. This not only simplifies
vortex flowmeter installation, but also improves
Serial Nos. 78180535 and 78180540
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the ability of vortex flowmeters to accurately
measure fluids at low flow rates.
automationworld.com;

The past five years have seen dramatic changes
take place in the vortex flowmeter market. Some
of these changes are ... Reducer vortex
flowmeters have simplified installation and
improved accuracy in measuring fluids at low
flowrates. flowsearch.com;

Changing the size of an installed meter is
unfortunately very expensive. Not only must the
motor itself swap out ... requires the user to
remove existing insulation, cut the pipe and weld
in a reducer and expander, X-ray the welds, and
reapply the insulation. This will not only be
expensive, but will require a minimum twenty-four
hour shutdown. Instead, users should take
advantage of newer reducer technology. A reducer
vortex meter includes built-in pipe reduction and
expansion ... “InTech” at www.isa.org;

Flowmeter simplifies installation ... Designed
with built-in reducers ... Yokogawa’s Yewflo
Vortex flowmeters can accommodate up to two
meter-size step downs ... the new reducer design
is available in integral or remote configuration
... “Control Engineering” at
www.manufacturing.net/ctl/article/CA; and

The bottom (inlet) of the flow meter is fitted
with a special reducing adapter. A standard
9/16” –18 hose fitting is threaded into the
bottom of the reducer. This fitting will accept
all standard LP swivel hose ends and allows the
first stage to be connected directly to the inlet
end of the flow meter via the LP Hose.
Scubatools.com.

The examining attorney also submitted the following
excerpt from applicant’s website:
Installation of a Vortex Flowmeter typically
requires the piping to be reduced for best
performance. The Rosemount 8800CR Reducer Vortex
Serial Nos. 78180535 and 78180540
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reduces the cost and complexity of installing
Vortex flowmeters with the pipe reductions
designed right into the flowmeter ... By building
the reducers into the meter, the Reducer Vortex
can measure lower flows than any other Vortex
meter. emersonprocess.com.

Citing A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1
USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE generic for
diet sodas with chocolate fudge flavor) and In re Hask
Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA ‘N’
PLACENTA generic for hair conditioners containing henna and
placenta), the examining attorney argues that:
In the present case, the applicant and
competitors use the term REDUCER to refer to a
main feature of their flow meters. Furthermore,
as described in Section 2 below, numerous news
articles use the word REDUCER to describe a new
flow meter feature.6 Br. p. 5.

Further, the examining attorney argues that:
[T]he applicant’s website, competitors’ websites,
and news articles ... evidence[] that the term
“reducer” is commonly used and understood by the
relevant public to refer to a main feature of
flow meters. Br. p. 5.

The examining attorney concludes from the evidence
that “the only meaning of the term, as used within the
industry and to the relevant public, is that of a generic
meaning referencing a feature of flow meters.” Br. p. 9.

6 We note that in the brief the examining attorney uses language
more appropriate for a mere descriptiveness refusal, but we
construe these arguments in the context of the genericness
refusal, i.e., rather than describing a feature of the goods, the
term names the goods.
Serial Nos. 78180535 and 78180540
9
In traversing the refusal, applicant explains that:
Flowmeters are used in industrial processes such
as oil refineries, chemical plants, paper
manufacturing plants, etc., to measure the rate
of flow of fluids through piping. In some
configurations, it can be desirable to reduce the
diameter of the piping at the point where the
flow is measured. In such situations, a tapered
pipe is used which is generally referred to as a
“reducer.” Typically, the reducer is a separate
component which is purchased separately from the
flowmeter and is not a part of the flowmeter.
Br. p. 2.

Applicant argues that the “term ‘reducer’ can refer to
any number of things including reduced costs, reduced
wastes, reduced maintenance, or reduced errors.” Br. p. 2.
Applicant notes that “the mark REDUCER only describes one
aspect of the goods out of a multitude of possible
aspects.” Br. p. 2.
We begin by noting that because applicant seeks
registration on the Supplemental Register, applicant has
conceded that the marks are merely descriptive. See In re
Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037, 1039
(TTAB 2005); Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 UPSQ2d 1134, 1137 n.11 (TTAB 1992).
Thus, the arguments regarding other meanings for “REDUCER”
and double entendre are inapplicable. However, to the
extent applicant’s arguments have any relevance, the fact
that the word reduce may be used in its verb form to
Serial Nos. 78180535 and 78180540
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indicate a reduction of a multitude of things in other
contexts does not detract from the generic usage of the
noun “REDUCER” in the context of the goods in issue. It is
well established that we must look to the meaning of the
term within the context of the identified goods. In re
Chopper Industries, 222 USPQ 258, 259 (TTAB 1984).
Moreover, the cases relied upon by applicant, involved the
issue of mere descriptiveness and terms that presented a
double meaning that would be perceived as completely
arbitrary and fanciful, unlike the proposed mark before us
which simply names the goods inasmuch as they consist of a
flowmeter combined with a reducer. See Blisscraft of
Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55
(2d Cir. 1961) (POLYPITCHER not merely descriptive of
polyethylene pitchers inasmuch as it is an incongruous
expression suggestive of MOLLY PITCHER) and In re Colonial
Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR
& SPICE not merely descriptive of bakery products inasmuch
as it is suggestive of a nursery rhyme).
As noted above, the evidentiary burden of establishing
whether a term is generic rests with the Office and the
showing must be based on clear evidence. The evidence of
record establishes that piping that joins pipes of a
different diameter in order to reduce pipe diameters to
Serial Nos. 78180535 and 78180540
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facilitate flow measurement are called “REDUCERS” and flow
meters are used in combination with “REDUCERS.” The record
also shows that some flow meters contain “REDUCERS” as part
of a single product, thus eliminating the need for a
separate “REDUCER.”
Inasmuch as “REDUCER” is the generic term for piping
that joins pipes of different diameters together and
applicant’s goods act, inter alia, as reducers, the
examining attorney has established a prima facie showing
that the term “REDUCER” is generic for applicant’s goods
which has not been rebutted by applicant.
Decision: The refusal to register on the Supplemental
Register based on genericness under Section 23 in
application Serial No. 78180535 and the refusal to register
on the Supplemental Register based on the failure to
provide a disclaimer under Section 6 in application Serial
No. 78180540 are affirmed. However, if applicant submits
to the Board the required disclaimer of REDUCER in
application Serial No. 78180540 within thirty days, this
decision will be set aside as to the affirmance of the
disclaimer requirement, and application Serial No. 78180540
will then proceed to registration on the Supplemental
Serial Nos. 78180535 and 78180540
12
Register. See Trademark Rule 2.142(g), 37 C.F.R.
§2.142(g).7

7 The standardized printing format for the required disclaimer
text is as follows: “No claim is made to the exclusive right to
use REDUCER apart from the mark as shown.” TMEP §1213.08(a) (5th
ed. September 2007).