The Aerospace Corp.

Trademark Trial and Appeal Board

Sep 17, 2001

No. 75513775 (T.T.A.B. Sep. 17, 2001)

9/17/01

Paper No. 13
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Aerospace Corporation
________

Serial No. 75/513,775
_______

Derrick Michael Reid for applicant.

Kelly A. Choe, Trademark Examining Attorney, Law Office 113
(Meryl L. Hershkowitz, Managing Attorney).
_______

Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by The Aerospace
Corporation to register the designation THE AEROSPACE
CORPORATION for “engineering and surveying in the general
fields of electronics, physics and space vehicles;
technical consultation and research in the general fields
of electronics, physics and space vehicles, namely,
industrial design.”1 Applicant claims, pursuant to Section

1 Application Serial No. 75/513,775, filed July 6, 1998, alleging
first use and first use in commerce on June 3, 1960.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/513,775
2
2(f) of the Trademark Act, that its mark has acquired
distinctiveness.
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that the proposed mark THE AEROSPACE
CORPORATION, when used in connection with applicant’s
services, is generic and, thus, incapable of functioning as
a source-identifying mark. The Examining Attorney further
contends that even if the designation THE AEROSPACE
CORPORATION is found to be not generic, it is merely
descriptive and the evidence of acquired distinctiveness is
insufficient to support registration on the Principal
Register. The Examining Attorney also refused to accept
applicant’s voluntary disclaimer of the terms “THE,”
“AEROSPACE” and “CORPORATION” apart from the mark as shown
in the drawing.2

2 In response to the proposed disclaimer submitted on August 31,
1999, the Examining Attorney indicated that the separate
disclaimers were not acceptable. The Examining Attorney stated
that “a disclaimer of the individual component words of a
complete descriptive phrase is improper” and that “an entire mark
may not be disclaimed.” (Office action, December 10, 1999). In
the next paper filed by applicant on June 8, 2000, applicant made
no mention of the Examining Attorney’s refusal to accept the
disclaimer. In view of applicant’s silence, the Examining
Attorney may have believed that applicant no longer intended to
separately disclaim the individual terms and, accordingly, the
final refusal dated August 3, 2000 likewise was silent on the
disclaimer. In its appeal brief, however, applicant again refers
to the disclaimer, stating that it “has disclaimed the terms
‘The’, ‘Aerospace’ and ‘Corporation’ individually, but seeks to
protect the complete name ‘The Aerospace Corporation’ when only
Ser No. 75/513,775
3
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs. An
oral hearing was not requested.
The Examining Attorney maintains that the designation
sought to be registered is generic. The Examining Attorney
points to applicant’s admission that it renders
“engineering and research services in the aerospace
industry.” (brief, p. 2) Thus, the Examining Attorney
contends that the term “aerospace” is the generic term for
applicant’s aerospace services, and that the mere addition
of the terms “the” and “corporation,” which have no source-
indicating significance, fails to transform the otherwise
generic matter into a registrable service mark. In support
of the refusal, the Examining Attorney submitted dictionary

used in a trademark sense.” (brief, p. 7) In her brief, the
Examining Attorney recounted the ex parte prosecution history,
including the refusal to accept the disclaimer, and then went on
to list the disclaimer matter as one of the issues on appeal.
(brief, pp. 4-5) Applicant, in its reply brief, addressed the
disclaimer matter, characterizing the issue as “whether the
separate disclaimers of the components ‘The’ and ‘Aerospace
Corporation’ functions to avoid over-reaching of the sought after
registration rendering the registration proper.” (reply brief,
p. 2) Applicant concludes by stating that the disclaimer “limits
the protection sought to standing-alone trademark-sense usage.”
(reply brief, p. 8)
Because applicant had an opportunity to respond to the refusal
to enter the proposed disclaimer, there was no error in the
examination by the Examining Attorney, including issuance of the
final refusal on August 3, 2000, and we do not believe that the
resurrection of this matter in the briefs raises a new issue.
Both applicant and the Examining Attorney have treated the
disclaimer matter as an issue on appeal and we will, therefore,
address the issue in this opinion.
Ser No. 75/513,775
4
definitions of the term “aerospace,”3 and excerpts of
articles retrieved from the NEXIS database and the Internet
showing uses of “the aerospace corporation,” “aerospace
corporation” and “aerospace corporations.”
Applicant argues that the mark is not generic for the
services rendered, that it is at most only suggestive of
the services rendered, but in either case the evidence
before the PTO is sufficient to show that the mark has
acquired distinctiveness. Applicant goes on to assert that
“[t]he term ‘aerospace’ in the aerospace industry is not
primarily merely descriptive of applicant’s services, but
is only at most suggestive of applicant’s engineering and
research services in the aerospace industry” and that “the
term ‘The Aerospace Corporation’ has acquired a secondary
meaning as only indicating the applicant in the aerospace
industry among all of the companies operating in the
aerospace industry.” (brief, p. 2) Applicant asserts that
the term “The Aerospace Corporation” clearly indicates a
trade name that also is used as a service mark to indicate
source. Applicant further states that the term “aerospace”
is ambiguous and “is not accurately defined and understood

3 The dictionary evidence was attached to the Examining
Attorney’s appeal brief. The dictionary definitions constitute
proper subject matter for judicial notice. University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75/513,775
5
though it is commonly used to suggest all aspects of the
industry.” (brief, p. 3) Applicant urges that “[t]here is
only one U.S. government, there is only one NASA, and there
is only one ‘The Aerospace Corporation’ as clearly
understood throughout the aerospace industry.” (brief, p.
4) In arguing the above, however, applicant also makes the
following acknowledgement: “The examiner’s opposition is
rational, with substantial merit and supported by law, and
further well argued under an advocacy ex parte orientation
against registration. Indeed, much of the law cited by the
examining attorney is on point and is credible.” (brief,
p. 3)
In support of its position, applicant submitted the
declarations of George A. Paulikas, applicant’s executive
vice president, Roberta L. Ackley, applicant’s assistant
secretary, and the declaration (with accompanying exhibits)
of John A. Vesco, an attorney in applicant’s office of
general counsel.
The Record
We now take a closer look at the evidence of record.
The term “aerospace” is defined, in relevant part, as “the
atmosphere and the space beyond considered as a whole; the
industry concerned with the design and manufacture of the
aircraft, missiles, spacecraft, etc., that operate in
Ser No. 75/513,775
6
aerospace; of or pertaining to aerospace or the aerospace
industry” (Random House Webster’s college Dictionary
(1992)), and “of or relating to aerospace, to vehicles used
in aerospace or the manufacture of such vehicles, or to
travel in aerospace; the aerospace industry” (Merriam-
Webster’s Collegiate Dictionary (10th ed. 1997)).
Also of record are NEXIS excerpts which show,
according to the Examining Attorney, generic uses of “the
aerospace corporation” and “aerospace corporation(s).” The
following are representative of the over fifty excerpts
which are of record:
The “largest, broadest, most admired
aerospace corporation in the world...”
Daily News (New York), December 16,
1996

Various agencies and aerospace
corporations quickly responded by
submitting proposals for lunar rockets.
Sky & Telescope, October 1996

NASA announced it would give greater
control of space shuttle operations to
a private aerospace corporation.
Science, November 17, 1995

...the company decided six to eight
months ago to seek a partner among the
major aerospace corporations.
Aviation Daily, April 3, 1995

NASA and the aerospace corporations
have so much to offer...
The Houston Chronicle, September 20,
1993

Ser No. 75/513,775
7
...employees are suing the aerospace
corporation...
Los Angeles Business Journal, February
3, 1992

...representatives of ten major
aerospace corporations...
Defense Daily, September 11, 1990

At large aerospace corporations like
Boeing and Northrup, the design of new
aircraft is an enormously expensive
effort...
Aerospace America, June, 1985

...led the aerospace corporation’s
recovery...
Fortune, October 1977

Requests for interviews at government
research institutes and aerospace
corporations were refused.
The Buffalo News, July 19, 1999

The record also includes no less than ten examples of
entities in the aerospace industry using the term
“Aerospace Corporation” in their names: Martin Marietta
Aerospace Corporation; Gulfstream Aerospace Corporation,
Ford Aerospace Corporation; Loral Aerospace Corporation;
Kaman Aerospace Corporation; Grumman Aerospace Corporation;
LTV Aerospace Corporation; Ball Aerospace Corporation; Bell
Aerospace Corporation; and Kistler Aerospace Corporation.
In support of registrability, applicant submitted the
declarations of two of its officers. Mr. Paulikas
declares, in relevant part, that “the name ‘The Aerospace
Ser No. 75/513,775
8
Corporation’ has obtained widespread and unequivocal
recognition and significance as identifying only the
applicant from all other aerospace corporations by the use
of the precursor term ‘THE’”; and that the “trade of
aerospace systems design know only one company, that is the
applicant who is known as The Aerospace Corporation.”
(emphasis in original).
Ms. Ackley fills in the details of applicant’s use:
On information and belief, since its
incorporation on October 1, 1960, The
Aerospace Corporation has accumulated
revenues over $8.8 billion dollars in
connection with applicant’s services
including developmental and research
services in the aerospace industry,
providing its service to at least 365
large governmental, educational and
corporate clients and currently has
over 2000 vendors. Over the past 40
years, the term “The Aerospace
Corporation” has acquired
distinctiveness indicating only
applicant, The Aerospace Corporation,
in the aerospace industry.

On information and belief, the
applicant, The Aerospace Corporation,
has used the mark “The Aerospace
Corporation” as an indication of the
source of its services, exclusively and
continuously in connection with
offering its services for those 40
years.

On information and belief, the
applicant has used the mark “The
Aerospace Corporation” in the aerospace
industry for 40 years without confusion
Ser No. 75/513,775
9
as to the source of applicant’s
services.

The Law
We turn first to the issues of whether the designation
THE AEROSPACE CORPORATION is generic, or whether it is just
merely descriptive, when used in connection with
“engineering and surveying in the general fields of
electronics, physics and space vehicles; technical
consultation and research in the general fields of
electronics, physics and space vehicles, namely, industrial
design.” A mark is merely descriptive if, as used in
connection with the goods and/or services, it describes,
i.e., immediately conveys information about, an ingredient,
quality, characteristic, feature, etc. thereof, or if it
directly conveys information regarding the nature,
function, purpose, or use of the goods and/or services.
See: In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757
(TTAB 1992); and In re American Screen Process Equipment
Co., 175 USPQ 561 (TTAB 1972). The issue is not determined
in a vacuum, but rather the mere descriptiveness of the
mark is analyzed as the mark is used in connection with the
goods and/or services. A mark is a generic name if it
refers to the class or category of goods and/or services on
Ser No. 75/513,775
10
or in connection with which it is used. In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. Section 14(3) of the
Act; In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc.,
940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., supra. The United States Patent and
Trademark Office has the burden of establishing by clear
evidence that a mark is generic and thus unregistrable. In
re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
relevant public’s understanding of a term may be obtained
from any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
Genericness
With respect to genericness, the type or category of
services at issue is broadly identified as aerospace
Ser No. 75/513,775
11
services. Moving on to the second step of the Ginn
inquiry, that is, whether the relevant purchasing public
understands the designation THE AEROSPACE CORPORATION to
refer primarily to the type or category of service, we find
that it does. Purchasers would perceive the designation to
name aerospace corporation services, that is, aerospace
services that emanate from aerospace corporations.
There can be no dispute, and applicant concedes as
much (especially given the proposed disclaimer of the
individual words in the designation), that the separate
words “the,” “aerospace” and “corporation” lack any source-
indicating significance. The definite article “the” in the
proposed mark is devoid of any trademark significance.4
See: In re G.D. Searle & Co., 360 F.2d 650, 149 USPQ 619
(CCPA 1966), aff’g, 143 USPQ 220, 222-223 (TTAB 1964)[“THE
PILL” is generic for oral contraceptive; “the utilization
of the article ‘the’ and of quotation marks cannot convert
a simple notation comprising ordinary words of the English

4 Of record by way of applicant’s submission is an excerpt from
the October 1, 1960 minutes of a meeting of applicant’s board of
trustees. The minutes read as follows: “Consideration was given
to the simplification of the name of the corporation by dropping
the word ‘The’ before The Aerospace Corporation which is the name
approved in the Articles of Incorporation. The Chairman
expressed the view that it was not necessary to use the ‘The’ in
anything but the most official formal documents and that he felt
that any amendment to the Articles to make this change could be
accomplished at some future date in connection with some other
more significant amendment when and if one becomes necessary.”
Ser No. 75/513,775
12
language used in their ordinary sense into a registrable
trademark.”]; and GMT Productions, L.P. v. Cablevision of
New York City, Inc., 816 F.Supp. 207 (SDNY 1993)[“[U]se of
the word ‘the’ before an unprotectable mark does not
convert an otherwise generic term into a descriptive
one.”]. The Examining Attorney provided dictionary
definitions of the word “aerospace.” This term by itself
clearly identifies the type or category of applicant’s
services. Lastly, the word “corporation” standing alone
hardly has any source-identifying function. See, e.g., In
re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB
1984); and TMEP §1213.02(d).
It is applicant’s contention, however, that it is the
relevant public’s perception of the proposed mark in its
entirety that must control the result here. And, indeed,
our primary reviewing court recently affirmed the principle
espoused by applicant, that is, that the proposed mark must
be analyzed as a whole. In re Dial-A-Mattress Operating
Corp., supra at 1811.
We find that the Office has met its burden in showing
that the proposed mark as a whole is generic. The
combination of two terms lacking source-identifying
function, “the” and “corporation,” coupled with the clearly
generic term “aerospace,” results in a designation that, in
Ser No. 75/513,775
13
its entirety, is generic. Further, the critical evidence
here which distinguishes the present case from the Dial-A-
Mattress case is the NEXIS evidence. Ordinary language
usage of the terms “aerospace corporation,” “aerospace
corporations” and “the aerospace corporation” shows that
the designation “the aerospace corporation” in its entirety
is commonly used in connection with the aerospace industry
and its services. The public refers to these services as
“aerospace services,” and entities that provide such
services are referred to as “aerospace corporations.” The
NEXIS evidence also includes examples of corporations in
the industry, undoubtedly competitors of applicant, that
use the designation “Aerospace Corporation” in their names.
Even if the designation is considered to be a phrase
(rather than a compound), the evidence shows use of the
designation “the aerospace corporation” and/or virtually
identical designations and, thus, the term would still be
generic under this analysis. See: In re American
Fertility, supra.
Based on the record before us, we find that the
designation THE AEROSPACE CORPORATION is generic for the
aerospace services at issue.
Ser No. 75/513,775
14
Mere Descriptiveness
Even if we had not found THE AEROSPACE CORPORATION to
be incapable of identifying and distinguishing applicant’s
services, we nevertheless would affirm the refusal to
register on the ground of mere descriptiveness. The
designation sought to be registered immediately conveys the
impression that aerospace services are rendered by
applicant. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987). Given the evidence of record (most
especially, the dictionary definitions), and applicant’s
comments regarding its “aerospace services” in the
“aerospace industry,” we are entirely unpersuaded by the
argument that the term “aerospace” is ambiguous and,
therefore, just suggestive. To the contrary, it is clear
that the term has a specific and commonly understood
meaning when it is used in connection with services of the
type rendered by applicant.

Acquired Distinctiveness
In finding that the designation THE AEROSPACE
CORPORATION is incapable of being a source identifier for
applicant’s aerospace services, we have considered, of
course, all of the evidence touching on the public
perception of this designation, including the evidence of
Ser No. 75/513,775
15
acquired distinctiveness. As to acquired distinctiveness,
applicant has the burden to establish a prima facie case of
acquired distinctiveness. Yamaha International Corp. v.
Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988).
As indicated above, applicant submitted the
declarations of two of its officers setting forth a few
specifics about applicant’s use for over forty years.
Applicant’s total revenues exceed $8.8 billion, with
services provided to at least 365 large governmental,
educational and corporate clients through over 200 vendors.
Applicant also asserts that it is the only entity in the
industry known as “The Aerospace Corporation.”
Applicant’s long use and revenues suggest that
applicant has enjoyed a degree of business success.
Nonetheless, this evidence demonstrates only the popularity
of applicant’s services, not that the relevant customers of
such services have come to view the designation THE
AEROSPACE CORPORATION as applicant’s source-identifying
service mark. In re Bongrain International Corp., 894 F.2d
1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded
Books Inc., 42 USPQ2d 1275 (TTAB 1997). The issue here is
the achievement of distinctiveness, and the evidence falls
far short of establishing this. Applicant’s evidence is
Ser No. 75/513,775
16
outweighed by the NEXIS evidence showing use of “the
aerospace corporation” to refer to others in the industry.
To be clear on this significant point, we emphasize
that the record is completely devoid of direct evidence
that the relevant classes of purchasers of applicant’s
aerospace services, such as governments, educational
institutions and corporations, view THE AEROSPACE
CORPORATION as a distinctive source indicator for
applicant’s services.
Accordingly, even if the designation THE AEROSPACE
CORPORATION were found to be not generic, but merely
descriptive, given the highly descriptive nature of the
designation THE AEROSPACE CORPORATION, we would need to see
a great deal more evidence (especially in the form of
direct evidence from customers) than what applicant has
submitted in order to find that the designation has become
distinctive of applicant’s services. That is to say, the
greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. Yamaha Int’l. Corp. v. Hoshino Gakki Co.,
supra; and In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., supra. See also: Restatement (Third) of Unfair
Competition (1993), Section 13, comment e:

Ser No. 75/513,775
17
The sufficiency of the evidence offered to prove
secondary meaning should be evaluated in light of
the nature of the designation. Highly
descriptive terms, for example, are less likely
to be perceived as trademarks and more likely to
be useful to competing sellers than are less
descriptive terms. More substantial evidence of
secondary meaning thus will ordinarily be
required to establish their distinctiveness.
Indeed, some designations may be incapable of
acquiring distinctiveness.

Applicant’s contention that it is the only one in the
trade using “THE AEROSPACE CORPORATION,” and that others in
the industry recognize this uniqueness and that the
designation identifies only applicant and its services is
not persuasive. We respond by simply saying that the
designation, as used in connection with aerospace services,
is not unique in that it is not distinctive. See: In re E
S Robbins Corp., 30 USPQ2d 1540, 1542-43 (TTAB 1992). As
shown by the record, any number of entities in the
aerospace industry use the term “aerospace corporation” in
a generic manner. The multiple uses of the designation
“the aerospace corporation” show that there is nothing
coined about the designation.
In sum, the proposed mark is a common designation used
in the industry to identify aerospace corporation services,
that is, aerospace services rendered by an aerospace
corporation in the aerospace industry. The designation THE
Ser No. 75/513,775
18
AEROSPACE CORPORATION is generic and does not and could not
function as a service mark to distinguish applicant’s
services from those of other aerospace corporations’
services and serve as an indication of origin. The
designation sought to be registered should not be subject
to exclusive appropriation, but rather should remain free
for others in the industry to use in connection with their
aerospace corporation services. In re Boston Beer Co.
L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).

Disclaimer
Applicant submitted a disclaimer of the individual
words “the,” “aerospace” and “corporation” apart from the
mark. The Examining Attorney declined to accept and enter
the disclaimer, asserting that disclaimers of individual
component words of a complete mark are not permitted and
that, in any event, the separate disclaimer does not
overcome the genericness refusal.
The disclaimer is improper. The designation THE
AEROSPACE CORPORATION is a unitary expression, and a
disclaimer of the individual components is not permissible.
See: In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB
1992); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm. Pats.
1987); American Speech-Language-Hearing Association v.
Ser No. 75/513,775
19
National Hearing Aid Society, 224 USPQ 798, 804 at n. 3
(TTAB 1984); and In re Surelock Mfg. Co., Inc., 125 USPQ
23, 24 (TTAB 1960). TMEP §1213.09(b) states the following:
“This standard should be construed strictly; thus,
disclaimer of individual words separately will usually be
appropriate only when the words being disclaimed are
separated by registrable wording.” Further, in the present
case, an entire mark may not be disclaimed. U.S. Steel
Corp. v. Vasco Metals Corp., 394 F.2d 1009, 157 USPQ 627
(CCPA 1968); and In re Wine Society of America Inc., 12
USPQ2d 1139 (TTAB 1989). That is, if a mark is not
registrable as a whole, as we have held here, a disclaimer
will not make it registrable. TMEP §1213.07. See: Dena
Corp. v. Belvedere International Inc., 950 F.2d 1555, 21
USPQ2d 1047, 1051 (Fed. Cir. 1991). In sum, the disclaimer
is unavailing.
Decision: The refusal to register is affirmed.