Schuler Pressen GmbH & Co. KG

Trademark Trial and Appeal Board

Sep 18, 2008

No. 76356484re (T.T.A.B. Sep. 18, 2008)

Mailed:
18 September 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Schuler Pressen GmbH & Co. KG
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Serial No. 76356484
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On Request for Reconsideration

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

Opinion by Drost, Administrative Trademark Judge:

Applicant, Schuler Pressen GmbH & Co. KG, now seeks
reconsideration of the board’s decision affirming the
examining attorney’s refusal to register applicant’s mark
on the ground that the term COMPACT CROSSBAR is merely
descriptive when used on or in association with applicant’s
identified goods and services.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 76356484
2
To the extent that the board has addressed most of
applicant’s points in the original decision, there is no
need for a further discussion in this decision. Applicant
does argue that its term COMPACT CROSSBAR “is susceptible
to suggesting at least one other meaning: Shortening the
manufacturing process in view of the fact that there are no
‘idle stations.’ These multiple alternative meanings
indicate that the mark is not merely descriptive but
instead is registrable.” Request for Reconsideration at 2-
3.
We must admit that we find it difficult to see that
prospective purchasers are likely to discern this meaning
when applicant’s mark is used on or in association with
applicant’s goods and services. The evidence discussed in
the original decision shows that crossbar presses can be
large. www.metalformingmagazine.com (“Every major
automobile company worldwide has invested in large crossbar
press equipment…)” However, there are also crossbar
presses that are smaller, or more compact.
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.

Ser. No. 76356484
3
Applicant’s mark would immediately describe this type
of press and related services. As such, the term is merely
descriptive.
Similarly, that applicant can take the dictionary
definitions of the individual words in the term and
come up with a meaning that makes no sense in
connection with the services recited in the
application does not mandate a different conclusion on
the issue of mere descriptiveness. As stated above,
the determination of descriptiveness is made in the
context of the identified services, and the meaning of
“ETHNIC ACCENTS” in connection with applicant's
services is clearly that of home furnishings or
decorations relating to various ethnicities.

In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1159
(TTAB 2003). See also In re Time Solutions Inc., 33 USPQ2d
1156, 1158 (TTAB 1994).
When consumers encounter applicant's mark, YOUR HEALTH
INSURANCE MANAGER, used in the context of applicant's
advertising, which describes applicant's goods as "new
PC software to manage your medical records and health
insurance" and lists the various tasks performed by
the software programs, as recited above, we have no
doubt that the mark will immediately convey to them
information concerning a significant feature or
function of applicant's programs, namely, that they
manage, i.e., handle with skill, personal health
insurance matters.

In the alternative, applicant requests that the board
“remand the application back to the Examining Attorney so
that Applicant can amend to the Supplemental Register.”
Request for Reconsideration at 4. The Trademark Rules
provide:
Ser. No. 76356484
4
An application which has been considered and decided
on appeal will not be reopened except for the entry of
a disclaimer under §6 of the Act of 1946 or upon order
of the Director, but a petition to the Director to
reopen an application will be considered only upon a
showing of sufficient cause for consideration of any
matter not already adjudicated.

37 CFR § 2.142(g).

Applicant’s request for reconsideration, to the extent
it seeks a remand, is also denied. The board is without
authority to remand the case for further prosecution. See
TBMP § 1218 (2d ed. rev. 2004) (“An application may not be
‘reopened,’ that is, an applicant may not amend its
application, or submit additional evidence, at this stage,
except in two very limited situations” identified above).
Entirely aside from the merits of appellant's request,
the Board has no jurisdiction under the Trademark Rules
of Practice to remand an application to the Examining
Attorney after a final decision has been rendered where
the purpose of such remand would be to reopen the
application.

In re Johanna Farms, Inc., 223 USPQ 459, 460 (TTAB 1984).
See also In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1047 n.2 (TTAB 2002).
Therefore, applicant’s request for reconsideration is
denied.