Schuler Pressen GmbH & Co. KG

Trademark Trial and Appeal Board

Mar 28, 2008

No. 76356484 (T.T.A.B. Mar. 28, 2008)

Mailed:
28 March 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Schuler Pressen GmbH & Co. KG
________

Serial No. 76356484
_______

Lynne M.J. Boisineau of J. Mark Holland & Associates for
Schuler Pressen GmbH & Co. KG.

John S. Yard, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Grendel, Drost, and Taylor, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Schuler Pressen GmbH & Co. KG (applicant) filed an
application on January 8, 2002, to register the mark
COMPACT CROSSBAR, in typed or standard character form, on
the Principal Register for the currently described goods
and services:
machines for metal working, namely, mechanical and
hydraulic presses and replacement parts therefor;
conveyor belts; conveyor machines; machine
installations for metal working consisting of mould
tubes and mould plates in Class 7
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 76356484
2

data processing services; business management and
consultation services in Class 35

installation, assembly, repair and maintenance of
machines for metal working, machine tools, mechanical
and hydraulic presses, conveyor belts and conveyor
machines, machine installations for metal working and
parts therefor; leasing of machine tools and machines
for metal working in Class 37

metal working to order and/or specification of others;
manufacturing of drawn, stamped and punched pieces of
metal to order and/or specification of others in Class
40

design of machines, machine tools, machines for metal
working and manufacturing plants for others; technical
consultation in the field of machines for metal
working and data processing systems; leasing of data
processing systems comprising computer hardware and
software in Class 42

The application (Serial No. 76356484) is based on an
allegation of a bona fide intention to use the mark in
commerce and the ownership of a German application, which
subsequently matured into a registration (No. 301 42 894).
The examining attorney refused to register applicant’s
mark on the ground that the mark is merely descriptive
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), of a feature of applicant’s goods and
services. The examining attorney argues that “COMPACT
CROSSBAR, taken as a whole, merely refers to compact-sized
crossbar-type metal working transfer presses and machines.”
Brief at unnumbered p. 7. Furthermore, “applicant’s
Ser. No. 76356484
3
additional services in the application comprise repair,
maintenance, installation, custom metalworking and
manufacture, leasing, design and business services, largely
in the field of metalworking. Based on the evidence of
record as to applicant’s related goods, the services
directly relate to compact crossbar transfer presses and
compact crossbar feeders, either in whole or in part, for
example leasing, repair or design of the same.” Brief at
8.
Applicant maintains that it is “the leader in the
industry with unique products that fill a particular need.”
Brief at 3. Furthermore, applicant argues that, while its
“products require less floor space, this is due to the fact
that they contain no ‘idle stations,’ as opposed to the
fact that the goods, themselves, are smaller.” Brief at 4.
After the examining attorney made the refusal final,
applicant filed a request for reconsideration and appealed
to this board.1

1 With its brief, applicant attached six exhibits. While the
examining attorney objects to these six exhibits, he indicates
that a portion of Exhibit 1 was made of record prior to the
appeal. To the extent that these exhibits were not previously of
record, we will not consider them. 37 CFR § 2.142(d). Inasmuch
as the examining attorney submits that we can take judicial
notice of exhibit 4, an online dictionary definition, we construe
this as a waiver of his objection, and we will consider this
exhibit.

Ser. No. 76356484
4
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). To be
merely descriptive, a term need only describe “a
significant feature or characteristic” of the goods or
services. In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1781 (Fed. Cir. 2003). See also Meehanite
Metal Corp. v. International Nickel Co., 262 F.2d 806, 120
USPQ 293, 294 (CCPA 1959). Descriptiveness of a mark is
not considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978) (“Appellant’s abstract test is
deficient – not only 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”).
The examining attorney has submitted the following
evidence to support his refusal. First, the examining
Ser. No. 76356484
5
attorney points to evidence showing that there are presses
that are identified as “crossbar”2 presses (emphasis added).
CROSSBAR TRANSFER PRESSES
Future Developments
North American press shops have seen a lot of changes
in the past few years. One impressive evolution is
the growing number of large crossbar press
installations…
Every major automobile company worldwide has invested
in large crossbar press equipment, and gained valuable
experience in its use.
www.metalformingmagazine.com

Production processes consisting of crossbar transfer
presses with loading feeders and a mechanical
centering station can realize up to 15 strokes per
minute.
American Machinist, May 1, 2001

A DCT Automated Systems and FANUC Robotics North
American high-speed dual robotic destacking system
feeds full bodyside apertures and other blanks to an
“A-size” crossbar transfer press at DaimlerChysler’s
Twinsburg, Ohio, stamping plant to support production
of the Durango SUV and other Daimler Chrysler
vehicles.
Robotics World, May 1, 2001

A huge new Muller Weingarten crossbar transfer press
began stamping body panels shortly before Christmas.
Automotive News Europe, January 29, 2001

Erie Engineering is a designer of dies for automotive
stampings, and its sister company, Erie Automation, is
a supplier of crossbar transfer press automation.
Detroit Free Press, March 2, 2000

The GM order is for four 6,500-ton crossbar transfer
press machines and two 4,500-ton three-dimensional AC
servo transfer presses.
Asia Pulse, January 21, 1999

2 “Crossbar” is defined, inter alia, as “a horizontal bar that
goes across something.” Final Office action, attachment.
Ser. No. 76356484
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Morrissey said the $100 million would be spent on
purchasing and installing two, new double-a, cross-bar
transfer presses that can stamp, crimp, cut and bend
steel panels multiple times quickly and efficiently.
Business Dateline; Oakland Press-Pontiac MI, July 30,
1996

Verson claims that ETF [Electronic Multimode Transfer]
is the first system which combines both tri-axis and
crossbar feeds in a single press.
Automotive Industries, August 1994

The transfer presses are the first to have both
programmable triaxis and crossbar transfer feeds.
American Machinist, April 1994

When it comes to workpiece-transfer presses, there are
two methods: triaxis and crossbar.
Appliance Manufacturer, July 1993.

This evidence supports the examining attorney’s
contention that the term “crossbar” is merely descriptive
of a type of press. Indeed, numerous articles apparently
refer to applicant as a source of crossbar presses.
Germany’s Schuler AG, a long-time pioneer in metal-
forming innovations, is fulfilling those wishes. The
company’s new crossbar transfer press eliminates idle
stations between presses and prevents defects in
complex auto parts.
Design News, March 7, 2005

In practice this means that, in the future, a
mechanical cross bar transfer press from Schuler will
be based on the same function blocks as a hydraulic
press from Schuler SMG or Schuler Hydrap.
Design News, September 27, 2004

Schuler Inc. announces a modular transfer for crossbar
transfer presses.
Automotive Industries, September 1, 2001

Ser. No. 76356484
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One of the approaches that the people at Schuler
recommended for processing body panel parts is to use
a cross-bar transfer press.
Automotive Manufacturing & Production, April 1, 2000

Cross-bar press, such as this design from Schuler Inc.
allows larger single-piece stamping.
Manufacturing Engineering, October 1998

Inasmuch as “crossbar” describes a type of press, the
next question is whether the term “compact” is merely
descriptive of applicant’s presses. The examining attorney
relies on the following definition of “compact”:
“occupying little space compared with others of its type:
a compact camera; a compact car.” Final Office action,
attachment. Applicant agrees that its presses “require
less floor space,” but it maintains that this is due to the
fact the products contain “no ‘idle stations.” Brief at 4.
However, the evidence does show that the term “compact” is
used to describe crossbar presses including applicant’s.
In Saurlouis, Germany, a new compact crossbar transfer
press from Schuler produces large body parts for the
Ford Focus C-MAX…
Metalworking Production, September 15, 2004

More safety, less pace - due to its compact design,
new press lines already supplied with the Crossbar
Feeder can be positioned more closely together. The
new feeder also enables smaller upright widths. This
serves to optimize rigidity and minimize space
requirements.
www.schulergroup.com

Similar to the part transfer of a compact crossbar
transfer press, the part is passed in a single action
from one press to the next.
Ser. No. 76356484
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www.manufacturingtalk.com

A typical stamping line of this type normally consists
of a destacker, the crossbar transfer press with its
four to six die stations and an end-of-line process.
Advantages…
- Less floor space is required as a result of
compact line design.
www.metalformingmagazine.com

Today’s compact crossbar transfer press is used not
only for large unstable auto parts panels, but also
for production of mid-sized parts such as doors and
engine hoods.
www.boschrexroth-us.com

Its compact modular transfer system, with self-
contained units featuring individual electronic
drives, allows a stamper to tune a crossbar transfer
press to stratify the unique requirements of the
application.
www.metalformingmagazine.com

Compactness is a significant feature of these goods
and we find that the term “Compact” describes the fact that
some presses take up less space than other similar presses.
Furthermore, when that term is combined with the term
“Crossbar,” we conclude that the evidence supports a
holding that the combined term “compact crossbar” is merely
descriptive of presses that have a crossbar and that take
up less space than other similar presses. Prospective
purchasers would immediately understand that the “Compact
Crossbar” identifies this feature of the goods. There is
nothing incongruous about the term as applicant argues
(Brief at 4). Even if, as applicant argues, its presses
Ser. No. 76356484
9
are large, they would nonetheless be included within the
definition to the extent that these presses would “occupy
little space compared with others of the type.” The
examples (cars and cameras) in the dictionary definition
clearly show that the term can be applied to items of
different size and that some “compact” goods, such as cars,
are in fact relatively large objects, but “occupy less
space” than other cars. We are not persuaded that many
purchasers would understand, as applicant argues, that “the
word ‘compact’ actually conveys an imaginative idea of
efficiency in the goods and services provided by
Applicant.” Brief at 5. While the terms “compact” and
“crossbar,” in the abstract, can have several meanings,
when purchasers of presses encounter the term COMPACT
CROSSBAR on presses, the term will immediately inform the
purchasers that these goods are crossbar presses that are
smaller in size than other presses.
We add that even if applicant were the first or only
provider of a specific type of transfer press that would
not mean that its mark would not be descriptive. In re
Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993) (“[W]e
observe that even if applicant has been the first and/or,
unlike its competitors, is presently the only user of the
term ‘LIGHTWEIGHTS’ in connection with shoes, such fact
Ser. No. 76356484
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cannot alter the merely descriptive significance of the
term”); In re Gould, 173 USPQ 243, 245 (TTAB 1972) (“The
fact that applicant may be the first and possibly the only
one to utilize this notation in connection with its
services cannot alone alter the basic descriptive
significance of the term and bestow trademark rights
therein”).
Having found that the term COMPACT CROSSBAR is merely
descriptive for applicant’s presses in Class 7, we now must
consider whether the term is also merely descriptive for
the services in Classes 35, 37, 40, and 42. The examining
attorney argues that applicant’s “services directly relate
to compact crossbar transfer presses and compact crossbar
feeders, either in whole or in part, for example leasing,
repair or design of the same.” Brief at 8. We agree that
the term COMPACT CROSSBAR would describe applicant’s
services to the extent that they would involve the
“installation, assembly, repair and maintenance of”
mechanical and hydraulic presses (Class 37) including
compact crossbar presses and metal working done to the
order and/or specification of others (Class 40) inasmuch as
these services can be done on “compact crossbar presses.”
Using these types of presses “prevents defects in complex
auto parts.” Design News, March 7, 2005. Similarly,
Ser. No. 76356484
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applicant’s services of designing machines and
manufacturing plants for others (Class 40) would include
designing presses and using “Compact Crossbar” presses in
these designed plants. The use of Crossbar presses, as
noted above, is considered to be a factor in preventing
defects. Therefore, COMPACT CROSSBAR would describe the
fact that applicant’s design services feature the use of
these types of presses. Finally, applicant’s business
management and consultation services (Class 35), to the
extent that they would include consultation in the area of
compact crossbar presses would also be described by the
term. See In re Pencils, Inc., 9 USPQ2d 1410, 1411 (TTAB
1988) (“We agree with applicant that the sale of pencils is
not the central characteristic of applicant's services.
Nevertheless, pencils are significant stationery/office
supply items that are typically sold in a store of
applicant's type, that is, a stationery and office supply
store. While applicant's stores may carry a variety of
products, pencils are one of those products, and, thus, the
term ‘pencils’ is merely descriptive as applied to retail
stationery and office supply services”).
Therefore, we conclude that the term COMPACT CROSSBAR
is merely descriptive of applicant’s goods and services in
the application. In re Analog Devices Inc., 6 USPQ2d 1808,
Ser. No. 76356484
12
1810 (TTAB 1988), aff'd without pub. op., 871 F.2d 1097, 10
USPQ2d 1879 (Fed. Cir. 1989) (“[I]t is a well settled legal
principle that where a mark may be merely descriptive of
one or more items of goods in an application but may be
suggestive or even arbitrary as applied to other items,
registration is properly refused if the subject matter for
registration is descriptive of any of the goods for which
registration is sought”).
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.