Friday, December 16, 2005

On Summary Judgment, TTAB Finds "TOF/TOF" Merely Descriptive of Mass Spectrometers

Although Applicant PerSeptive Biosystems was able to convince the PTO Examining Attorney that the mark TOF/TOF had acquired distinctiveness for mass spectrometers, it found the going doubly tough (you might say "tough-tough") before the TTAB. The Board granted summary judgment to Opposer Bruker Daltonics, ruling that TOF/TOF is merely descriptive and lacking in secondary meaning. Bruker Daltonics, Inc. v. PerSeptive Biosystems, Inc., Opposition No. 91154595 (November 28, 2005) [not citable].

Bruker Daltonics ultraflex II TOF/TOF

The Examining Attorney had deemed the mark merely descriptive under Section 2(e)(1), but accepted Applicant's Section 2(f) claim of acquired distinctiveness based on its ownership of a registration for the mark MALDI TOF/TOF for an "ion source for mass spectrometer."

Bruker Daltonics opposed on the grounds of genericness and mere descriptiveness. In its motion for summary judgment, it argued that TOF/TOF is "merely a long-standing abbreviation for a tandem (i.e., back-to-back) time-of-flight mass spectrometer," and that Applicant's goods include time-of-flight mass spectrometers. Opposer submitted a number of technical articles, copies of two patents, and dictionary definitions of "time-of-flight" and "TOF."

The Board focused on the issue of acquired distinctiveness, noting that, by seeking registration under Section 2(f), Applicant admitted that its mark is merely descriptive. Applicant had the ultimate burden to prove acquired distinctiveness, and it failed miserably in the attempt.

Bruker Daltonics, Billerica, MA

The Board concluded that TOF/TOF is "highly descriptive of the identified goods and has not acquired distinctiveness." It agreed with Opposer that TOF/TOF describes a key feature or function of the goods, namely that they "comprise, utilize or otherwise employ time-of-flight mass spectrometers in tandem."

Applicant did not even bother to address Opposer's evidence, and it failed to raise a genuine issue of material fact with the "meager" proof it offered.

"applicant essentially relies on its ownership of a registration, makes several unsubstantiated statement regarding use of its mark, and has submitted a one page website printout in support of its position that its mark has acquired distinctiveness."

With regard to Applicant's prior registration for MALDI TOF/TOF, the Board noted that "the goods in the registration are different from those in the subject application and the marks are also different. In any case, ownership of a registration by itself does not raise a genuine issue of material fact as a matter of law - certainly not in this case where applicant's proposed mark is so highly descriptive."

Finally, Applicant offered to submit "a copy of a witness statement" or to "provide more marketing materials" at the Board's request. Needless to say, the Board found this offer "unacceptable and inappropriate."

In sum, Opposer's "overwhelming evidence" led the Board to find that TOF/TOF is highly descriptive of the identified goods. It observed that a "great deal of evidence" would be required to prove acquired distinctiveness for such a term. Here, Applicant failed to submit any evidence that would raise a genuine issue regarding acquired distinctiveness, and the Board therefore granted Opposer's motion for summary judgment.

TTABlog note: The "mass" in "mass spectrometer" does not refer to the Commonwealth of Massachusetts, even though Bruker Daltonics has facilities in Massachusetts, nor to "mass" in the religious sense, but to "mass" in the physical, chemical sense. At least that's what I think.

Text Copyright John L. Welch 2005.


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