Transgo, Inc.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 76031676 (T.T.A.B. Mar. 12, 2003)

Mailed:
March 12, 2003
Paper No. 12
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Transgo, Inc.
________
Serial No. 76/031,676
_______
Mark P. Stone for Transgo, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Michael Hamilton, Managing Attorney).
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Transgo, Inc. seeks registration of the term
REPROGRAMMING KIT on the Principal Register as used in
connection with:
automotive transmission valve body components; namely,
separator plates and springs; automotive transmission
parts; namely, separator plates and springs, sold
together as a unit; automatic transmission valve body
parts sold as a unit for installation in the valve
bodies of vehicle automatic transmissions; and valve
body kits comprising separator plates and springs for
installation in the valve bodies of vehicle automatic
transmissions, in International Class 12.1

1 Application Serial No. 76/031,676 was filed on April 2,
2000 based upon applicant’s allegation of use in commerce at
least as early as 1970.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/031,676
- 2 -
As filed, the initial application papers claimed
acquired distinctiveness under Section 2(f) of the Act.
During the course of prosecution, applicant agreed to
disclaim the generic word KIT apart from the mark as shown.
This case is now before the Board on appeal from the
final refusal to register based upon the grounds that this
term is generic for these goods based upon Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), or
alternatively, that applicant’s showing of acquired
distinctiveness is insufficient to overcome the highly
descriptive nature of this designation.
This is applicant’s second attempt to secure a
registration of this term for the listed goods. In this
context, we note that the instant record is similar to, but
somewhat different from, the record in a prior application
by applicant to register the same term for identical goods.2
The earlier application was abandoned after an ex
parte appeal and subsequent administrative petitions. In
deciding that appeal, the majority of another panel of the
Board found that the record in the prior application did
not contain sufficient evidence of the genericness of the
term:
Serial No. 76/031,676
- 3 -
Applicant’s goods, according to the patent which the
Examining Attorney has made of record, are a system
used to modify factory-installed transmissions,
essentially by modifying the structure and operation
of the existing hydraulic circuits of the original
transmission. The system produces quick application
and release forces with minimum ratio sharing, or
overlap, through the modification of the operation of
the original transmission by enlarging or plugging
orifices in the original hydraulic circuitry to change
fluid flow.
It appears, from the evidence of record, that the
purchasers of applicant’s goods are auto mechanics,
manufacturers of high performance automotive
transmission parts, sellers of automotive transmission
parts; and those interested in racing automobiles or
otherwise modifying their vehicles for high
performance.
…
… [However] we find, based on the evidence of record,
that the Office has not met its burden of establishing
by clear evidence that REPROGRAMMING KIT is generic
for the identified goods.
(In re Transgo, pp. 2 – 3, 13 – 14 (TTAB December 16,
1999), hereinafter Transgo I).
On the other hand, all three members of the prior
panel affirmed the Trademark Examining Attorney’s alternate
ground for refusal of registration, inasmuch as the showing
of acquired distinctiveness in that application record was
deemed insufficient to overcome the highly descriptive
nature of the mark:
Given the highly descriptive nature of applicant’s
mark, we find that applicant has not met its burden of
proving that it has acquired distinctiveness.
Although applicant has certainly used its mark for a
substantial amount of time, mere longevity of use is
2 Application Serial No. 75/055,823 was filed on February 9,
1996, also based upon applicant’s allegation of use in commerce
at least as early as 1970.
Serial No. 76/031,676
- 4 -
not always sufficient to prove acquired
distinctiveness. In this case, applicant’s use of the
mark is always with the trademark TRANSGO, which
appears in much more prominent letters and type style.
Moreover, the sale of 820,000 units over almost 30
years is not particularly significant in terms of the
exposure of the mark to the consuming public…
Applicant has provided no information whatsoever about
its advertising of its product, from which we might
ascertain what public recognition it might have. The
three declarations of purchasers of applicant’s high
performance valve body kits … are similarly
unpersuasive.
Considering the highly descriptive nature of the term
REPROGRAMMING KIT, the evidence submitted by applicant
is simply insufficient for us to conclude that
REPROGRAMMING KIT has acquired distinctiveness among
the relevant consumers.
(Transgo I, pp. 16 – 17).
As to the current application, the same Trademark
Examining Attorney assigned to the application in Transgo I
issued and made final the same two grounds for refusal,
namely, that the term “Reprogramming Kit” is generic for
these goods, and that even if on appeal it should be found
not to be generic, applicant’s showing of acquired
distinctiveness is insufficient to overcome the highly
descriptive nature of the term.
In the instant record, the Trademark Examining
Attorney has added examples of third parties’ usage of the
term “reprogramming kit” for their own packages (or kits)
Serial No. 76/031,676
- 5 -
for modifying or recalibrating the operation of automatic
transmissions.3
Similarly, while continuing to argue vehemently that
REPROGRAMMING KIT is not generic, in response to the second
alternative ground for refusal, applicant has provided
additional evidence as to promotion of its products in the
form of its annual catalog, advertisements in two national
magazines and product updates for its distributors. All
these materials are supported by another declaration of
applicant’s president,4 this one citing specifically to
applicant’s distribution of annual catalogs and reciting
the seminars and trade shows in which applicant has
participated in recent years.
I. The Genericness Refusal
The Trademark Examining Attorney has the burden of
proving that a term is generic by clear evidence. In re

3 The Trademark Examining Attorney had failed to include such
examples in Transgo I, see pp 10 – 11:
“… the only evidence of cyberspace use is the web site …
of applicant’s distributor. Given that an Examining
Attorney who has submitted evidence from the NEXIS
database and the web is presumed to have submitted the
best evidence available to him or her from the searches
of those media [citation omitted], we must assume that
such searches did not reveal any other references to the
term “reprogramming kit” per se.
4 In addition to a photocopy of Mr. Younger’s declaration
dated August 29, 1996 and a supplemental declaration dated July
6, 1998, both of which were included in the record of Transgo I,
this application contains a third and more extensive declaration
dated April 12, 2000.
Serial No. 76/031,676
- 6 -
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1835-36 (Fed. Cir. 1999); and In re Merrill Lynch, Pierce,
Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987). Evidence of the public’s understanding of a
term can be obtained from any competent source, including
dictionary definitions, research databases, trade journals,
newspapers and other publications. Merrill Lynch, supra;
See also In re Northland Aluminum Products, Inc., 777 F.2d
1556, 227 USPQ 961 (Fed. Cir. 1985). With this standard in
mind, we turn to the record.
The record in this ex parte appeal suggests the
existence of, but cannot completely catalogue, the wide
technical variations in kits available for fixing and
improving automobile transmissions. The record also
reveals an additional source of confusion, namely, the fact
that within the industry, various vendors employ
inconsistent nomenclature for their respective kits. In
fact, applicant itself does not always apply exactly the
same generic naming phraseology to the same package of
components. Nonetheless, in order to appreciate the
arguments of applicant and of the Trademark Examining
Attorney on the question of genericness posed by this
appeal, it is necessary that one understand the basic
functions of these various kits. Hence, the discussion
Serial No. 76/031,676
- 7 -
that follows seeks to maintain a focus on the exact
question of genericness posed by this appeal without
oversimplifying the relative complexity of automatic
transmissions and their components.
For those having no general familiarity with auto
mechanics, or those having no specific interest in
automatic transmission components, we consider herein the
real world choices facing Harold Lee (“Hal Lee”) Shelby, a
hypothetical consumer of applicant’s affected products.
Hal Lee has just purchased a used 1994 Ford Mustang GT
convertible having a 5.0-liter engine and an automatic
transmission. The stock Ford transmission installed by the
manufacturer is a popular model known to tranny mechanics
as the “AODE.” While reveling in the results of several
engine (and other power train) modifications made by his
local, high performance auto shop, Hal Lee has identified
several shifting problems that he considers to be design
shortcomings of the stock automatic transmission. His
local professional transmission mechanic5 shows him
applicant’s (hereinafter, also “Transgo’s”) annual catalogs

5 Each of applicant’s catalogs emphasizes on the front cover
that these Transgo products are “For the Professional
Transmission Mechanic.” While a few daring shade tree mechanics
may attempt to repair or overhaul an automatic transmission,
applicant clearly directs the installation of all the relevant
kits herein to transmission specialists who are comfortable with
the complexities of an automatic transmission.
Serial No. 76/031,676
- 8 -
from 1999, 2000 and 2001 (made of record herein). Hal Lee
is in luck. When flipping through the 2001 catalog, he
notes that the majority of Transgo’s transmission
components are designed for automatic transmissions turned
out by the “Big Three” automobile manufacturers since the
mid-1960’s. All of applicant’s kits are very specific
packages having components designed to work with particular
transmissions. Hal Lee notes that applicant sells
transmission repair and modification “kits” having two
somewhat different goals.
A. Applicant’s “Valve Body Kits” are “fixes”
On pages 3 to 5 of the Transgo 2001 catalog, under the
heading “Ford Transmission – Valve Body6 Kits,” Hal Lee
discovers two dozen kits containing “fixes” for design
shortcomings of stock Ford transmissions.7 Each catalog
listing of a kit contains a “Features” section. This
section often introduces a particular kit with language
like “Corrects/Prevents/Reduces,” followed by a list of

6 The transmission valve body is the brain of the
transmission. It is clear from the record that the valve body is
located above the pan on the bottom of the transmission. It
appears from this record that any fixes limited to the valve body
should not make it necessary to drop the entire transmission out
of the automobile (e.g., as would be necessary to do a complete
overhaul of the transmission).
7 Many of these packages of components are identified by
applicant’s unique part numbers (usually containing the model
Serial No. 76/031,676
- 9 -
problems remedied by the kit. For example, if Hal Lee
wants merely to provide for greater durability and crisper
performance, he would likely settle on the following
catalog entry for a valve body kit for his pony:
Kit # Application Features
SK® AODE
(4R70W)
Update
AODE 1991-2001
Ford/Mercury:
Lincoln, 1994-up
Mustang, T-Bird,
Bronco, Light
Trucks
Calibration and Assembly Upgrade, Installs in 10 minutes
during your repair
Corrects/Reduces/Prevents: 4th band failure; 2nd roller
failure; long soft 1-2 and 2-3 shifts; soft lockup; reduces
accidental high-pressure parts breakage. Includes special
forward clutch rings, SOL regulator valve and EPC relief valve.
From the entire record, then, it appears the Board can
make the following conclusions:
•= Applicant’s “valve body kits” comprise “fixes”
•= Applicant uses “shift kit” as a synonym for “valve
body kit” 8
•= All the half dozen photographs showing boxes of
“shift kits” depict small, robin’s egg blue boxes,
with each display of the boxed contents showing a
dozen or more small valve body parts, such as
springs, plugs and balls.9
number of the original equipment manufacturer) combined with
applicant’s SK®____ or SK®____Jr. marks.
8 The record herein shows that not everyone manufacturing,
selling and installing transmission kits uses the same
nomenclature for substantially the same assortment of items. We
acknowledge some confusing usage of various terms within the
transmission parts industry. For example, in spite of
applicant’s long proprietary claims to the term SHIFT KIT for
“automatic transmission valve body components,” applicant, in its
catalogs, uses “valve body kit” interchangeably with “Shift Kit,”
while third-party competitors across the board use the term
“shift kit” generically for shift correction packages. In fact,
industry-wide, it seems that the term “shift kit” is sometimes
used even more broadly to name any component package that
repairs, rebuilds or modifies a transmission, including
superficial changes to the shifter on the console.
9 Although the catalog provides no picture of Hal Lee’s AODE
transmission kit, a similar fix kit is featured on the back cover
of applicant’s 2000 catalog. Beneath the title “RE4R01A Shift
Serial No. 76/031,676
- 10 -
B. What is Transgo’s “High Performance Reprogramming Kit”?
Upon reviewing the kits in Transgo’s catalogs, Hal Lee
– who prefers that his ponies be small but wild – is
intrigued by the additional possibility (i.e., not simply
fixing inherent deficiencies in the transmission valve
body) of actually modifying his automotive transmission
using after-market components to enhance the performance of
his vehicle when it is being used hard.
Happily for Hal Lee, he quickly locates Transgo’s
second large category of Ford transmission kits. These
kits appear under the general heading of “High Performance
Reprogramming Kit” (in the 1999 and 2000 catalogs), and
under “High Performance Reprogramming Kits™” (in the 2001
catalog).
C. Reprogramming Kits: Transgo and its competitors
In the event the reader has not had the benefit of the
Board’s decision in Transgo I, we review the summary of the
technology underlying applicant’s “High Performance
Reprogramming Kits” contained in the concurring opinion:
Specifically, one learns from the record that
automatic transmissions have transmission fluid pumped
Kit for Nissan, Mazda, and Subaru” is a photograph of thirty
small transmission parts (e.g., springs, plugs, balls, gaskets
and seals). On page 12 of the same catalog, this item is
identified as “SK® RE4R01A,” and located under the catalog
heading of “Import Transmission Valve Body Kits.”
Serial No. 76/031,676
- 11 -
through a series of passages under pressures up to 300
psi and directed via valves and solenoids to activate
various clutches and bands on planetary gear-sets.
The gear-sets are engaged and disengaged to provide
various ratios that multiply the input torque passed
to the transmission through a torque converter,
designed to turn the drive-shaft and hence to move the
vehicle.
Accordingly, as seen in the claims of the patented
device … applicant’s kit is designed to permit the
automobile mechanic to modify the factory-installed
transmission of certain automobiles using the after-
market parts listed in the identification of goods.
One learns that the automatic transmission for an
automobile, as originally designed and shipped from
the factory, is set up to shift smoothly from one gear
to the next. … .
By eliminating excessive overlap, applicant’s kit
provides for a quicker shift while reducing damaging
heat. The biggest concern for high performance
transmissions is building up too much heat in the
transmission fluid, which can considerably reduce the
life of a transmission. This invention is designed to
change the pre-existing hydraulic circuits by
modifying the flow of transmission fluid… .

(Transgo I, pp. 24 – 27).
Hence, we see that, as contrasted with the shift
correction packages described earlier, these performance
enhancement kits are designed not just to fix inherent
shortcomings of the stock transmission, but are actually
designed to convert the transmission in more fundamental
ways. The ultimate goal is to realize a performance
upgrade – to improve the design of the transmission in a
way that will result in significantly changed performance
Serial No. 76/031,676
- 12 -
by the automobile in heavy duty, racing and other high
performance situations.10
On page 2 of Transgo’s 2001 catalog, Hal Lee finds the
appropriate “Reprogramming Kit” for the stock transmission
in his 1994 Mustang:
Kit # Application Features
AODE-HD2
(4R70W)

AODE 1991-2001

Short, firm, full throttle shifts that have “class”,
performance and durability. Back shifts to any gear
at your command. Holds the gear you select to any rpm.
Includes EPC bypass to prevent parts breakage.
As touted in applicant’s advertisements, catalogs and
other literature of record, installation of this kit will
create a noticeably more aggressive feel for Hal Lee’s
pony. He can then treat his automatic transmission as if
it were a manual transmission absent the need for a clutch
pedal (i.e., he can shift through five gears simply by
moving the shifter on his console). Even if he should
choose merely to put the car in “Drive,” so that the gears

10 The pictures of the high performance kits on the front of
applicant’s 2000 and 2001 catalogs show a much larger, dark blue
box (the type of box from which the specimens of record are cut)
than those shown containing the simpler shift correction kits
(i.e., applicant’s valve body kits/shift kits in the much
smaller, robin’s egg blue boxes). For the same type of automatic
transmission, the high performance kit contains many more “hard”
parts, including large separator plates (viz. identification of
goods herein), performance bands, frictions, clutches and/or
servo assemblies, all used in modifying and significantly
strengthening the transmission.
Applicant’s large, dark blue TRANSGO® Reprogramming Kit
boxes show outline designs of eight vehicles, titled
“competition,” “service vehicle,” “police,” “taxi,” “muscle
cars,” “towing,” “campers,” and “rough duty.”
Serial No. 76/031,676
- 13 -
will be automatically shifted (with acceleration and
deceleration), the modified automatic transmission will
feel as if a high performance driver is physically shifting
a manual, five-speed transmission.
Applicant’s president has declared that to the best of
his knowledge and belief, “none of Applicant’s competitors
use the term ‘REPROGRAMMING KIT’ to describe competitive
goods which are the same or substantially similar to the
goods identified in the pending trademark application.”11
(Gil W. Younger declaration of August 29, 1996, p. 3).
It is against this backdrop that we consider the
evidence placed into this record by the Trademark Examining
Attorney – most of it drawn from three Internet searches.
According to the Internet evidence of record,
applicant’s competitors produce “valve body reprogramming
kits” that differ as to the complexity of their
installation (i.e., by novice or by transmission expert)
and the resulting level of performance (“first stage” or
“second stage”). Unlike applicant’s approach (as shown

11 While this declaration seems to imply that competitors’
products that are the same or substantially similar to the “goods
identified in the pending trademark application” consist of
transmission performance enhancement kits, applicant’s
identification of goods herein is not limited to kits of a
particular type, but is broad enough to include all types of kits
– those for fixing shortcomings as well as those designed for
enhancing automotive performance.
Serial No. 76/031,676
- 14 -
consistently throughout this record), some vendors of valve
body reprogramming kits target their webpage marketing
directly to the shade tree mechanic. This is the consumer
who wants his automatic transmission to perform well under
the stress of heavy-duty usage (e.g., towing a heavy load,
impressive acceleration off the light, etc.).12 These
“first stage” kits go well beyond correcting noticeable
design defects. When installed, these components actually
recalibrate the transmission for higher performance than is
available with a stock transmission, although these first
stage valve body reprogramming kits do not purport to be
capable of handling the stresses of competitive racing:
Modify Control System – It is desirable to increase clutch apply
pressure, furnish more complete converter front oil exhaust (for
improved holding ability), and provide full time converter feed to
prevent clutch drag/glazing. We at Transmission Connection
recommend that you install a valve body reprogramming kit. These
products install very easily, and safely achieves (sic) the converter
control system modifications recalibration that are (sic) so beneficial.
http://www.atra-gears.com/tcra/e4od.html

12 By contrast, as noted earlier, each of applicant’s catalogs
and packaging boxes emphasize that applicant’s products are “For
the Professional Transmission Mechanic.”
Serial No. 76/031,676
- 15 -
Transmission Kits
Valve Body Reprogramming Kit
Hughes Performance recommends this kit for the person who wants a little 'snap' in their
street machine. This kit was not designed for full competition, but it will give you a positive
competitive feel on the street. Easy to install and comes complete with instructions and all
parts and gaskets necessary to get you on the road to your first stage in performance.
Works great for street, towing, and off road applications.
http://www.hughesperformance.com/perfkits/index.html
This text tracks very closely the benefits that
applicant claims for its “Reprogramming Kits.” Moreover,
the Hughes kit pictured above contains an array of parts
similar to the kit shown on the picture of applicant’s
“reprogramming kit.” Below, we compare the Hughes kit and
the photo on the front of applicant’s 2000 catalog.
Hughes Performance
Valve Body Reprogramming Kit
Transgo
High Performance Reprogramming Kit
If Hal Lee were to locate all the same “hits” from his
Internet search as did the Trademark Examining Attorney
Serial No. 76/031,676
- 16 -
herein, he would learn that some vendors sell the entire
transmission as a unit, rebuilt for heavy-duty
applications, as shown in the following example:
Racing Transmissions by
The Tranny Doctor
Customized/Heavy Duty
P/G 529.00
TH-350 559.00
TH-400 599.00
C-4 559.00
C-6 599.00
Chy 727 559.00
700R4 889.00
AOD13 889.00
These transmissions are for everyday
use. Each unit comes with a
reprogramming kit, heavy duty
clutches and bands. All new internal
soft parts and a chrome pan with
drain plug and brass filter
http://www.trannydr.qpg.com/index.html
Should Hal Lee decide he wants to begin racing
competitively, he would also find, within the Trademark
Examining Attorney’s Internet “hits,” transmission kits
designed for even higher performance uses than stage one
modification kits:14

13 This example does not have the AODE, which unlike the older
AOD listed by Tranny Doctor, has electronic controls (indicated
by the terminal letter “E”).
14 The record shows that these kits are described as “Stage
Two” kits, “high end” kits, or kits for “full competition,” etc.
They are designed for use with police cars, autos for drag
racing, etc.
While the components in one vendor’s kit may vary from
those of another vendor, these kits are the most complex kits
available for reprogramming an automatic transmission, and often
involve making programming changes by drilling holes in separator
Serial No. 76/031,676
- 17 -
The 4L60 3-4 Clutch Pack
…
8. For police and high rpm applications, 1) a top end reprogramming kit is recommended. 2) Art
Carr has a pump slide spring to prevent loss of oil volume at high rpm's. 3) also, an exhaust hole
can be drilled in the aluminum bell so 3-4 oil does not drag the clutches thru centrifugal forces…
http://www.raybestosclutch.com/Info/3-4clutch.html
Art Carr Performance Products
OEM automatic transmissions are more closely matched to their use
through valves and varying clutch capacity, with the intent to provide
an inoffensive “softer” shift. This soft shift is achieved through a
certain degree of “slippage,” which can lead to overheating, a
measurable loss of efficiency and a premature transmission failure…
To create a transmission that is better suited to meet the needs of our
customer, Art Carr offers everything from completely rebuilt
transmissions to various component kits. Our valve body and
reprogramming kits offer more positive shifting, performance oriented
automatic shift points and full manual control when desired… You can
also make a significant improvement in the performance and reliability
by incorporating such Art Carr products as a deep-finned aluminum
transmission pan and a valve body “reprogramming kit”. Art Carr
overhaul kits give you all the gaskets, seals, bushings, metal sealing
rings, clutch friction plates and steels, needed to assemble a heavy
duty street/strip transmission…
http://www.artcarr.com/
In the event that Hal Lee wants to prepare his car for
drag racing, he could buy a rebuilt automatic transmission
as a unit, having already had a high-end performance
“reprogramming kit” included:
plates, etc., as is the case with applicant’s “Reprogramming
Kits.”
Serial No. 76/031,676
- 18 -
Racing Transmissions by
The Tranny Doctor
Street Fighter/Street Strip
P/G 629.00
TH-350 759.00
TH-400 810.00
C-4 759.00
C-6 810.00
Chy 727 759.00
700R4 1199.00
AOD 1199.00
The street fighter/streep (sic) strip
transmission is for vehicles that are powered
by engines producing 475 horsepower without
superchargers.

All units come with a 12,000 GVW
transmission cooler, an inline filter, and a
reprogramming kit. Both automatic and
manual mode, where applicable…
http://www.trannydr.qpg.com/RACING_8716.html
In some of the third-party excerpts placed in the
record by the Trademark Examining Attorney, it is not clear
whether the kit is designed for heavy duty/stage one
performance, more extreme stage two performance, or is
programmable for either stage at the time of installation,
as are applicant’s kits:
Performance Transmissions
Item # Description Price
4510 VALVE BODY REPROGRAMMING KIT $70.00
http://www.transmission-specialties.com/performance_transmissions/gm_200_4R.html
In spite of this evidence showing third-party usage of
the term “reprogramming kit” in a generic manner as applied
to packages of transmission parts for modifying an
Serial No. 76/031,676
- 19 -
automatic transmission, applicant dismissed the value of
these Internet excerpts. First, applicant variously
characterizes the Internet evidence as de minimis and
ambiguous. Also, applicant argues that the Trademark
Examining Attorney has failed to show “the exposure of the
website(s) to the relevant consuming public … .”
We disagree with this conclusion. In response to our
criticism of the record in Transgo I, the Trademark
Examining Attorney herein has shown critical third-party
usage on the Internet. Repeated usage of the term
“reprogramming kit” in a generic fashion by applicant’s
competitors to promote their shift modification kits does
reflect consumers’ likely understanding when encountering
that term. As to applicant’s argument that the Trademark
Examining Attorney has failed to document the level of
public exposure to this use by competitors on the Internet,
this type of showing has not been required for similar
indications drawn from trade journals, dictionaries,
newspapers, etc. Regardless of the level of exposure
received by the Internet webpages, we find that these
websites reflect current public understandings and are
likely to continue to influence relevant consumer
perceptions in the future. While applicant has tried to
avoid a conclusion of genericness by splitting hairs (viz.
Serial No. 76/031,676
- 20 -
text surrounding footnotes 11 and 19), applicant has not
argued herein that these competitors are misusing its
alleged trademark. Cf. E. I. du Pont de Nemours & Co. v.
Hoshida International, Inc., 393 F.Supp. 502, 185 USPQ 597
(E.D.N.Y. 1975).
Moreover, applicant argues, in effect, that there is
only one generic name for its “Reprogramming Kits,” and
that the term ‘valve body kit’ is the proper generic
expression” for its “Reprogramming Kits.” (Applicant’s
appeal brief, p. 6). Yet as seen in applicant’s own
catalogs, the term “valve body kits” is used by applicant
to identify shift correction kits and does not appear at
all in the sections on “High Performance Reprogramming
Kits.” In fact, the evidence of record (drawn primarily
from applicant’s parts catalogs) demonstrates that
applicant uses these two terms in a mutually exclusive
manner.15 Moreover, even if applicant were using the
lexicon as carefully as it claims, this would not change

15 This gets confusing because most of the fixes (discussed
earlier) as well as the modification, recalibration, or
reprogramming of older (non-electronic) automatic transmissions
take place in the valve body of the transmission. Moreover, even
a cursory review of applicant’s rather broad identification of
goods herein shows that in crafting its various identifications
of goods in trademark applications prosecuted over the years,
applicant has made no distinction between kits designed to
function as mere “fixes” and those designed for performance
enhancement.
Serial No. 76/031,676
- 21 -
the fact that applicant’s competitors use the same
terminology for a variety of automatic transmission kits,
all of which are contained within the broad identification
of goods as listed in Transgo’s instant application.
Some of the other Internet examples placed in the
record by the Trademark Examining Attorney (and not
reproduced above) are in the form of Internet postings from
do-it-yourself mechanics that refer in detail to their
experience with transmission “reprogramming kits.” (See
http://www.d-p-g.com/corvette/CurrentIssue/eC.htm attached
to the Trademark Examining Attorney’s final refusal).
While we may view this as an Internet analogue to a trade
journal, applicant dismisses this kind of usage as without
foundation, and as suffering from all the alleged defects
noted above in the websites of applicant’s competitors.
It is clear that for any given automobile
transmission, there is no limit to the permutations of
component parts that a vendor might include in a single kit
or package. Certainly, some modification packages, like
applicant’s, involve novel approaches receiving temporary,
proprietary protection under our nation’s patent law
system. Nonetheless, for purposes of deciding the
genericness of the term “reprogramming kit” for applicant’s
goods as identified, we have focused on any kits that
Serial No. 76/031,676
- 22 -
fundamentally modify automatic transmissions, since all
such kits would fall within the relatively broad scope of
applicant’s identification of goods herein. When the goal
is to redesign the basic operation of the transmission, the
generic name of the kit usually includes a word like
“modification,” “recalibration,” or “reprogramming.”
Applicant argues that the use of an expression like
“valve body reprogramming kit” or “shift reprogramming kit”
is of no avail in demonstrating the genericness of the term
“reprogramming kit” when used alone. In response to this
creative argument, the Trademark Examining Attorney argues
correctly that:
Whether the goods are called “VALVE BODY
REPROGRAMMING KITS,” “SHIFT REPROGRAMMING
KITS,” or “REPROGRAMMING KITS,” the one
constant is the generic wording
“REPROGRAMMING KITS.”
(Trademark Examining Attorney’s appeal brief, p. 6).
As noted by Professor McCarthy:
There is usually no one, single and exclusive generic
name for a product. Any product may have many generic
designations. Any one of those is incapable of
trademark significance…
In one case the proponent of trademark status for the word
“Mart” argued that the word is quaint and not generally
used. But the court replied that the test is not whether
a term is more frequently used colloquially than its
synonyms (such as “store” or “market”), but whether it
still retains its generic meaning. “Mart” was held to
have no other meaning among the consuming public than as a
synonym for “store” or “market” and hence was generic.
[Footnote omitted] Similarly another court said that the
Serial No. 76/031,676
- 23 -
fact that there are other generic names than “Super Glue,”
such as “Instant Glue” or “Ten Second Glue,” does not
preclude generic status: “[T]he existence of synonyms for
a term does not mean the term is not generic. There may
be more than one term which the consuming public
understands as designating a category of goods.” [footnote
omitted]. Thus, while prerecorded audio tape cassettes of
books may be generically called “audio books,” “talking
books,” “book cassettes,” “cassette books,” or “taped
books,” the designation “recorded books” was held to be a
generic name by the Trademark Board, noting that a product
can have more than one generic name. [footnote omitted]
In another example, the Fourth Circuit found that “ale
house” was a generic name and one of several generic names
for places that serve beer, with or without food.
“[Plaintiff] has no protectable interest in the words ‘ale
house.’ They are generic words for a facility that serves
beer and ale, with or without food, just as are other
similar terms such as ‘bar,’ ‘lounge,’ ‘pub,’ ‘saloon,’ or
‘tavern.’ All serve alcohol alone or both food and
alcohol.” [footnote omitted]
While the Lanham Act uses the singular article “the,”
referring to “the generic name,” the author does not
believe that this is the result of any considered judgment
by Congress and should not be read as changing the rule of
the case law that there can be more than one generic name
of a thing. [footnote omitted]
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §12:9 (4th ed. July 2002).
Under the Trademark Act, the fact that applicant’s
identified kits may be called by a variety of different
names does not preclude any one of those terms from being a
generic name for the applicant's goods. While we have
acknowledged a degree of inconsistency in terminology in
this field, it must be clear that muddled naming practices
are neither a basis in logic nor in trademark law for the
conclusion that one of the terms used rather broadly by
Serial No. 76/031,676
- 24 -
one’s competitors as a generic designation for a particular
genus of products can nonetheless be removed from the
language and serve as a proprietary source indicator for a
single vendor of those very goods.
As noted throughout this opinion, applicant’s own
usage corroborates the conclusions to be drawn from the
third-party usage found on the Internet by the Trademark
Examining Attorney. The prior panel noted that “ … many of
[applicant’s] uses of REPROGRAMMING KIT would be frowned on
by a trademark attorney…” (Transgo I, p. 13). Proper
usage of a source indicator is important in any setting,
but especially so when many prospective customers are
already prone to see the claimed trademark as a generic
designation among competitors. In reviewing this entire
record, nowhere has applicant ever used its alleged
trademark as an adjective modifying a noun. Specifically,
while applicant uses “a Reprogramming Kit” or
“Reprogramming Kits” (the noun form, and often pluralized),
applicant has never employed the formulation “Reprogramming
Kit(s) valve body kits,” or any other similar combination.
Moreover, this hypothetical formulation uses the word “kit”
in a redundant fashion, and as noted earlier, would seem to
contradict the logic and layout of applicant’s entire parts
catalogs.
Serial No. 76/031,676
- 25 -
Accordingly, based on the totality of the instant
record, we find that the term “Reprogramming Kit” is a
generic designation for applicant’s listed goods.
II. Alternative Refusal: Inadequate showing of Acquired
Distinctiveness under Section 2(f)
Should our decision on the question of genericness be
reversed on appeal, in the interest of judicial economy, we
now consider at length the evidence of acquired
distinctiveness placed into the record by applicant.
Applicant has resubmitted the same three declarations
of its customers that were part of the application record
before the Board in Transgo I, the earlier ex parte appeal.
The Board panel that decided that appeal found these
declarations to be “unpersuasive.” Similarly, even though
applicant claims that these three statements are merely
representative of a larger population of potential
declarants, in light of all the countervailing evidence in
this record, three now-dated (from 1996), form declarations
from customers do not appear significant.
In regard to the current record, this application
contains a third and more extensive declaration of Mr. Gil
Younger, applicant’s president, dated April 12, 2000:
3). As of December 31, 1999, the trademark
“REPROGRAMMING KIT” has been used continuously in
commerce in the United States for nearly thirty (30)
consecutive years, and in excess of 875,000 number of
Serial No. 76/031,676
- 26 -
units of goods (kits) have been sold under the
trademark “REPROGRAMMING KIT” generating gross revenues
of in excess of $19,000,000;
4). Attached as Exhibits C and D respectively,
are true copies of Applicant’s product catalogs for the
years 2000 and 1999. Each of these catalogs
prominently displays Applicant’s goods marketed under
the “REPROGRAMMING KIT” trademark. Applicant’s
catalogs are distributed annually as follows:
a). Between 10 – 25 catalogs are
automatically sent by Applicant to each of its
distributors. Applicant currently has over 130
distributors for the goods it markets under the
“REPROGRAMMING KIT” trademark.
b). Between 2500 – 4000 catalogs are
distributed at trade shows at which Applicant
exhibits its products, as will be discussed below;
c). A current catalog is distributed to
each attendee at each seminar at which Applicant’s
products are discussed, as will be discussed
below; and
d). Catalogs are mailed on an ongoing basis
in response to consumer requests generated by
advertisements of Applicant published in trade
journals, as will be discussed below;
5). Valve body kits marketed by Applicant under
the “REPROGRAMMING KIT” trademark are advertised
primarily in two trade journals – Gears and
Transmission Digest. Attached as Exhibits E and F are
true copies of sample advertisements of Applicant’s for
goods marketed under the trademark “REPROGRAMMING KIT”
which have appeared in these two trade publications.
Each of these publications is distributed primarily to
the automotive transmission trade including
transmission repair shops, transmission rebuilders,
transmission warehouse and parts facilities, and retail
speed and performance sales outlet[s]. Upon
information and belief, the Gears trade publication is
distributed throughout the United States and has a
monthly circulation of about 25,000, and the
Transmission Digest trade publication is distributed
both throughout the United States and internationally,
and has a monthly circulation of about 25,000.
6). Applicant’s goods, including the goods which
Applicant markets under its “REPROGRAMMING KIT”
trademark, are shown at seminars throughout the United
States attended primarily by transmission repair
mechanics and automatic transmission rebuilders for the
purpose of furthering their education with regard to
the technical aspects of the transmission industry
including new automotive transmissions and related
products. Between the years 1995 – 1999, Applicant’s
Serial No. 76/031,676
- 27 -
goods marketed under the “REPROGRAMMING KIT” trademark
were shown at over 350 different seminars attended by
over 30,000 people conducted throughout the United
States including the following cities: Seattle, WA;
Wichita, KS; Phoenix, AZ; Portland, OR; Pittsburgh, PA;
Charlotte, NC; Nashville, TN; St. Louis, MO; Denver,
CO; Manchester, NH; Dallas, TX; Sarasota, FL; Salt Lake
City, UT; Mobile, AL; Bloomington, MN; Atlanta, GA;
Jericho, NY, et al. As noted above, each attendee at
each seminar is provided with a current catalog of
Applicant featuring Applicant’s goods marketed under
the “REPROGRAMMING KIT” trademark (See Exhibits C and D
attached hereto);
7). Applicant currently exhibits its products,
including the goods it markets under the “REPROGRAMMING
KIT” trademark, at two national trade shows annually.
Each show has between 250 – 400 exhibitors, and between
5000 – 7500 attendees. The attendees are primarily
individuals employed in the automotive transmission
trade including owners and employees of transmission
repair and rebuilding shops, transmission parts
warehouses and distributors, buyers for distributors
and warehouse facilities, and jobbers. At each trade
show it attends, Applicant demonstrates and describes
its product line, including the goods marketed under
the “REPROGRAMMING KIT” trademark, to interested trade
show attendees. Applicant also distributes between
2500 – 4000 of its current product catalogs at each
trade show at which it exhibits its products;
8). Applicant provides its distributors with
product releases on a regular ongoing basis to update
its distributors with information regarding new product
models being marketed by Applicant. Attached hereto as
Exhibit G are samples of product releases from
Applicant to its distributors describing new product
models marketed by Applicant under the “REPROGRAMMING
KIT” trademark.
…
10). In view of the extensive sales of goods in
commerce by Applicant under the “REPROGRAMMING KIT”
trademark for nearly thirty continuous years, and in
further view of the wide exposure of the term
“REPROGRAMMING KIT” as Applicant’s trademark through
advertising, seminars, product releases, and national
trade shows attended by Applicant, the term
“REPROGRAMMING KIT” is recognized as Applicant’s
trademark throughout the United States by the relevant
consuming public, trade and industry.
Serial No. 76/031,676
- 28 -
As noted earlier in this decision, the record contains
copies of applicant’s product listings (or catalogs) from
1999, 2000 and 2001. Although nowhere does applicant
provide a clear bottom-line number of parts catalogs
distributed during each of these years, the above
declaration makes it clear that applicant is diligent in
getting thousands of its parts catalogs distributed to
those individuals most likely to be interested in
purchasing its transmission repair and modification kits.
In addition to thirty years of Transgo’s marketing these
kits, the enumerated efforts of recent years demonstrate
applicant’s continued presence in the marketplace. For
example, in comparing Gil Younger’s declarations of July
1998 and early 2000, it appears as if applicant has sold an
average of three-thousand such kits per month between July
1998 and January 2000, each of which generated around $21
in gross revenue for applicant.
Nonetheless, as noted in the discussion above, the
catalogs use the term “Reprogramming Kit” as the name of a
thing, not as a source indicator. The ads appearing in
Gear and Transmission Digest use the term “Reprogramming
Kit(s)” as the name of the item, failing to provide an
alternative generic designation anywhere. The advertising
copy in the Gear ad says, “Transgo Reprogramming Kits™
Serial No. 76/031,676
- 29 -
extend the life of the friction materials… .” However, as
was noted in Transgo I, the use of initial capital letters
and/or the mere placement of an informal trademark
notification symbol (™) cannot salvage an otherwise generic
term. Moreover, in the absence of an alternative name for
the goods, the way in which applicant pluralizes its
alleged trademark (in the Gear ad, in the 2001 catalog,
etc.) reinforces the conclusion that this two-word
designation functions solely as the name of the goods.
As our reviewing court noted in Yamaha International
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001,
1008 (Fed. Cir. 1988), “the greater the degree of
descriptiveness the term has, the heavier the burden to
prove it has attained secondary meaning.” See also,
Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and Restatement
(Third) of Unfair Competition (1993), Section 13, comment
e.16

16 “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.”
Serial No. 76/031,676
- 30 -
Accordingly, the quantity of evidence put forward by
applicant might very well propel some types of marks onto
the Principal Register with the benefit of Section 2(f) of
the Lanham Act, but does not aid applicant herein.
In this case we have a term that is, at the very
least, highly descriptive when used in connection with the
identified goods. Thus, we conclude that more evidence
than that which has been offered herein is necessary to
establish the acquired distinctiveness of this highly
descriptive, if not generic, designation.
The most recent declaration of applicant’s president
focuses primarily on the distribution of applicant’s parts
catalogs. As noted earlier, applicant’s catalogs are
basically terse parts listings of only a dozen pages or so,
done in black and white without any images.17 Moreover, as
we have seen, within these pages, “Reprogramming Kit” is
always used in a generic fashion, so all of the reported
catalog exposure to applicant’s products and asserted
trademark(s) will not help potential customers to recognize
this term as a source indicator.

17 As reflected earlier in this opinion, the front and back
covers are made of colored, glossy paper and do contain
photographic images of the product and packaging.
Serial No. 76/031,676
- 31 -
Nowhere has applicant listed the total dollar volume
of its advertising expenditures. On this record, we have
no basis on which to presume more than modest expenditures.
Furthermore, even an annual, bottom-line figure of
marketing expenditures would be meaningless unless we had
examples of advertisements promoting “Reprogramming Kit” as
a source indicator. The current record contains no
information linking applicant’s evidence “with use in
contexts which would condition customers to react to or
recognize the designation … as an indication of source….”
In re Leatherman Tool Group, Inc., 32 USPQ2d 1443, 1450
(TTAB 1994).
Decision: The refusals to register herein are
affirmed: (1) We find that the term “Reprogramming Kit” is
generic for applicant’s identified goods; and (2) We find
that even if applicant’s designation REPROGRAMMING KIT is
found not to be generic for applicant’s kits, applicant has
failed to demonstrate a sufficient level of acquired
distinctiveness for such a highly descriptive term to
function as a source indicator.