Siemens Power Transmission & Distribution, Inc.

Trademark Trial and Appeal Board

Sep 18, 2001

No. 75363075 (T.T.A.B. Sep. 18, 2001)

9/18/01

Paper No. 16
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Siemens Power Transmission & Distribution, Inc.1
________

Serial No. 75/363,075
_______

Richard Westerhoff of Eckert Seamans Cherin & Mellott, LLC
for Siemens Power Transmission.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Hairston and Wendel, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

This is an appeal from the Trademark Examining
Attorney’s final refusal to register the mark DYNAMIC
VOLTAGE RESTORER for goods which were subsequently
identified by amendment as “solid state voltage regulators
that compensate for changes in voltage level and frequency,
shifts in voltage phase and other sine wave integrity

1 We note that the application involved in this appeal was filed
by Westinghouse Electric Corporation and was subsequently
assigned to Siemens Power Transmission & Distribution, Inc.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/363,075
2
characteristics.”2 Registration has been refused on the
ground that the mark is merely descriptive of the
identified goods under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1).
Both applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
At the outset, we note that applicant spends much of
its brief arguing that the mark has become distinctive of
its goods, and requests that in the event the refusal to
register is affirmed, the application be amended to seek
registration under Section 2(f) of the Trademark Act.
However, once an application has been considered and
decided by the Board on appeal, it may not be “reopened.”
That is, an applicant may not amend its application, except
in two limited situations, neither of which is applicable
here. See Trademark Rule 2.142(g). See also Trademark
Trial and Appeal Board Manual of Procedure, Section 1218
and cases cited therein. To the extent that applicant, by
the statements in its brief, seeks to remand its
application to assert an alternative claim of acquired
distinctiveness, such a request must be denied as untimely.

2 Serial No. 75/363,075 filed September 25, 1997, alleging a date
of first use of June 1992 and first use in commerce on or about
August 30, 1996.
Ser No. 75/363,075
3
See Trademark Rule 2.142(d). Thus, no consideration will
be given to applicant’s request to amend the application to
Section 2(f).
Further, we note that applicant, for the first time
with its brief on the case, submitted copies of the full
text of stories taken from the NEXIS data base that the
Examining Attorney submitted in excerpted form during
prosecution of this case. The Examining Attorney, in her
brief, has objected to the full stories on the ground that
they were not timely submitted. While the evidentiary
record in an application generally should be complete prior
to the filing of an appeal, in this case the full text of
the stories submitted by applicant provide context for the
excerpts submitted by the Examining Attorney. Thus, under
the circumstances, it would be unfair not to consider
applicant’s submissions. See In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed. Cir. 1986).
We turn then to the issue of mere descriptiveness. It
is the Examining Attorney’s position that the term DYNAMIC
VOLTAGE RESTORER immediately describes a significant
feature of applicant’s identified goods, namely, that they
restore dynamic voltage. In support of the refusal, the
Examining Attorney submitted excerpts of articles taken
from the NEXIS data base which refer to “dynamic voltage”
Ser No. 75/363,075
4
and “dynamic voltage restorer.” The following are
representative examples:
Once a PLC-based system is in place, additional
automation is cost-effective. For example,
dynamic voltage control (the TCUL) is accomplished
through the PLC using simple ladder logic.
(“Intelligent Substation Improves Performance,”
Transmission & Distribution World; October
1998);

While in six-by-six configuration, the dynamic
voltage applied to each coil comprises the
entire power supply range of [plus or minus]
[V.sub.P].
(“Triple Half-Bridge Forms New Motor-Control
Design,” Electronic Design; August 17, 1998);

A momentary deviation in voltage that might
stop production can now be quickly corrected
using the world’s first dynamic voltage
restorer (DVR). The DVR, an electronic
device that protects sensitive equipment from
voltage fluctuations on a power line, keeps
the equipment operating by rapidly injecting
energy onto the line to compensate for a
disturbance. Developed by Westinghouse with
funding from Duke Power and the Electric Power
Research Institute (EPRI), the first DVR
entered commercial service on the Duke Power
system last year.
(“Electronic Control,” Electric Light & Power;
June 1997);

Duke Power, seeking to improve the quality of
the power it delivers to its customers, is
testing a “dynamic voltage restorer” designed
to almost totally eliminate voltage sags at a
highly computerized factory.
(“Duke Power Says New Westinghouse/EPRI Voltage
Device Boosts Customer Service”, Southeast Power
Report; December 27, 1996); and

Ser No. 75/363,075
5
The dynamic voltage restorer uses a bank of
solid-state inverters to generate a near
sinusoidal waveform when connected to a dc
energy . . .
(“Alternative Methods Of Protecting Customer
From Sags,” Electrical World; August 1996).

In addition, the Examining Attorney has relied upon a
dictionary listing of the word “restore” which she
submitted with her brief.3
Applicant, in urging reversal of the refusal to
register, argues that DYNAMIC VOLTAGE RESTORER is a unique
term which its predecessor in interest coined, and that
customers for the identified goods would not understand
from this term the precise manner in which the goods
operate. Thus, according to applicant, the term is at most
suggestive of the identified goods. Further, applicant
argues that the references to “dynamic voltage restorer” in
the NEXIS excerpts are references to applicant’s particular
goods or misuses of applicant’s trademark. In addition,
applicant submitted the declaration of Steven Whisenant,
manager of System Power Quality for Duke Power Company, a
customer for applicant’s power transmission and
distribution goods. Mr. Whisenant states, in relevant

3While this dictionary definition is technically untimely, we
grant the Examining Attorney’s request to take judicial notice of
the definition. 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).
Ser No. 75/363,075
6
part, that he has been in the electrical power transmission
and distribution industry for approximately 24 years; that
he does not believe competitors of applicant need to use
the term DYNAMIC VOLTAGE RESTORER to describe a
characteristic, function, quality or element of their
goods; that the term is not currently in use in the
industry; that the relevant purchasers of applicant’s goods
would not immediately understand, upon seeing the term
DYNAMIC VOLTAGE RESTORER, the functions or characteristics
of applicant’s goods; and that the term DYNAMIC VOLTAGE
RESTORER identifies and distinguishes applicant’s goods in
the marketplace.
A term is considered to be merely descriptive of
goods, within the meaning of Section 2(e)(1) of the
Trademark Act, if it immediately describes an ingredient,
quality, characteristic or feature thereof or if it
directly conveys information regarding the nature,
function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods in order for it to be
considered merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term is merely
Ser No. 75/363,075
7
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The excerpts retrieved from the NEXIS data base show
that “dynamic voltage” is a term used in the electrical
power transmission field. Applicant does not argue to the
contrary. Further, the term “restore,” as defined in The
American Heritage Dictionary of the English Language (3d
ed. 1992) means, inter alia, “to bring back into existence
or use” and “to bring back to an original condition,” and
the noun form is indicated to be “restorer.”
When the applied-for mark is considered in relation to
solid state voltage regulators, DYNAMIC VOLTAGE RESTORER
immediately informs prospective purchasers that a
significant function of applicant’s goods is to bring back
or restore dynamic voltage. That is to say, the applied-
for mark is merely descriptive of solid state voltage
regulators that compensate for changes in voltage level and
frequency, shifts in voltage phase and other sine wave
integrity characteristics. Here, DYNAMIC VOLTAGE RESTORER
describes a significant function of applicant’s goods, and
the fact that the term does not specify exactly how the
goods restore dynamic voltage does not mean that applicant
is entitled to exclusively appropriate the term.
Ser No. 75/363,075
8
Further, while it is clear from the full text of the
NEXIS articles that the overwhelming majority of the uses
of “dynamic voltage restorer” therein appear to be
references to applicant’s product, we note that such uses
are more in the nature of a generic term as opposed to a
trademark. Such evidence, therefore, supports the
Examining Attorney’s position that DYNAMIC VOLTAGE RESTORER
is merely descriptive of applicant’s goods. In any event,
the fact that a party is the first to use a descriptive
term does not give it the right to exclusive appropriation
of such term. Further, it is not necessary that a term be
in common usage in the particular industry in order for it
to be merely descriptive. In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). The
absence, therefore, in this record of any third-party uses
of the term DYNAMIC VOLTAGE RESTORER does not mean that
prospective competitors of applicant would not need to use
such term to describe their solid state voltage regulators
which have a similar function to that of applicant’s solid
state voltage regulators.
Finally, as to the declaration of Mr. Whisenant, it
appears to be of more relevance to a claim of acquired
distinctiveness, a claim which we have given no
consideration. In any event, the declaration is not
Ser No. 75/363,075
9
persuasive of a different result on the issue of mere
descriptiveness.
Decision: The refusal to register is affirmed.

Ser No. 75/363,075
10