Tuesday, April 04, 2006

Divided TTAB Panel Reverses Genericness Refusal of "DIGITAL INSTRUMENTS"

Finding the PTO's evidence insufficient, a divided Board panel reversed a genericness refusal of the mark DIGITAL INSTRUMENTS for "scientific and technological research for others and development of products for others, namely, atomic force microscopes and scanning tunneling microscopes, in the field of metrology." It affirmed a Section (2)(e)(1) mere descriptiveness refusal, but upheld Applicant's Section 2(f) claim. In re Veeco Instruments, Inc., Serial No. 76383240 (March 22, 2006) [not citable].

For some reason, the Board considered the Section 2(e)(1) issue first. Applicant Veeco argued that the terms "digital" and "instruments" are so vague and variously defined that the mark does not immediately convey the nature of its services. The Board, however, pointed out for the umpteenth time that marks must be considered not in the abstract, but in the context of the applicant's services. Dictionary definitions and Applicant's own promotional material (indicating that its products are highly sophisticated "instruments" that utilize "digital" technology) convinced the Board that DIGITAL INSTRUMENTS, when used with Applicant's services, would immediately describe a significant feature or function thereof.

Next, the Board considered the issue of genericness. As to the genus of the services, the Examining Attorney referred to "the field of metrological measurement," but the majority found that proposal "so overly broad as to be meaningless as a genus for applicant's services." Instead, it found that the genus "is more appropriately narrowed to those services pertaining to research and development of atomic force microscopes and scanning tunneling microscopes."

"An example, by analogy, would be if we had to determine whether a mark pertaining to tractor-trailer trucks is generic. A genus of vehicles would be over-broad because it would encompass all vehicles from tractor-trailer trucks to motor scooters; and evidence that the term is generic for motor scooters or a part for scooters would be irrelevant unless we had specific evidence also pertaining to the use of the term in connection with tractor-trailer trucks or parts therefore. Thus, the correct genus in our example would be much narrower - tractor-trailer trucks rather than vehicles." [TTABlog note: this makes no sense to me. A term could be generic for motor scooters without having to be generic for tractor-trailers, but another term could be generic for both.]

With that narrow genus in mind, the majority found "insufficient evidence from which to determine whether relevant purchasers would view the composite mark 'digital instruments' as the name of the class of services to which applicant's services belong, or that it would similarly name the class of goods which are the subject of applicant's services."

Finally, turning to the Section 2(f) issue, the majority noted that the Examining Attorney made "no comment at all" on the sufficiency of Veeco's evidence of acquired distinctiveness, but did say that she "does not challenge that the applicant has indeed used its mark extensively." The majority concluded that the PTO had accepted the 2(f) claim. In any case, the majority found Applicant's evidence sufficient: 15 years of use, awards for research, numerous patents, and "substantial" sales and advertising figures.

In dissent, Administrative Judge Bucher disagreed with the majority definition of the genus of the services at issue:

"Applicant's industry uses a variety of ever-broadening terms for applicant's field of endeavor, from scanning probe microscopy to advanced electronic microscopy or nanoscale metrology. Judging by the evidence of record, 'digital instruments,' while definitely much broader that any one of these terms, is still an overarching category of goods that would include applicant's goods and services."

As to the issue of how the term DIGITAL INSTRUMENTS is understood by the relevant public, Judge Bucher cited In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987), for the proposition that the term at issue is "merely a combination of generic terms that has no separate or distinct commercial impression apart from what one who understands the individual meaning would expect." However, unlike his decision in the recent FRESH ORGANICS case [TTABlogged here], Judge Bucher acknowledged that, under In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), "the Trademark Examining Attorney must meet the rather heavy burden placed on the [USPTO] to demonstrate genericness through additional evidence of generic uses of the term."

Noting the "dearth of third party uses in the field," Judge Bucher "would contend" that even broad uses of "digital instruments" - whether signifying the form of the readouts, the computer hardware, or the precision of the measurement - are generic uses. He concluded that DIGITAL INSTRUMENTS "is one of those generic terms that any manufacturer (e.g., including applicant's competitors), any merchant or any user of these scanning probing microscopes should be permitted to use to refer to this item, irrespective of its source."

Judge Bucher agreed that DIGITAL INSTRUMENTS is at least merely descriptive, but he disagreed with the conclusion that Veeco had established secondary meaning. Because the mark is highly descriptive, the applicable 2(f) standard is "extremely difficult to meet," and Judge Bucher found Applicant's gross sales figures "most inadequate to support registrability."

TTABlog comment: This decision illustrates two troubling aspects of the Board's genericness jurisprudence. First, the definition of the genus is crucial in these cases, yet there seems to be little guidance as to how one goes about determining the genus.

Second , the majority's ruling exposes once again the impracticality of the CAFC's two-headed genericness test. If "digital instruments" isn't generic for digital instruments, what is it? In light of the CAFC's American Fertility test, maybe what is needed is a revival of the category of "marks" that, although not meeting the CAFC test, are nonetheless unregistrable: i.e., marks that are so highly descriptive they can never be trademarks. However, see Section 1209.01(c)(ii) of the TMEP, which instructs Examining Attorneys not to state that a mark is "so highly descriptive that it is incapable of acting as a trademark," but rather to stick with the language of genericness.

This is not the first time that Judge Bucher has indicated his dislike with the result of applying the CAFC test. In the FRESH ORGANICS case, he simply ignored American Fertility in reaching his genericness conclusion based on dictionary definitions alone. In 2004, he applied American Fertility, but with obvious reluctance, in reversing a genericness refusal of DIAMOND WHETSTONE for whetstones. In re Diamond Machining Technology, Inc., Serial No. 76345334 (May 4, 2004) [not citable]. There, as in the FRESH ORGANICS case, the Board found a "mixed bag" of evidence, but it concluded that:

"Under our case law, we must resolve these doubts [about genericness] in favor of applicant. Accordingly, on the issue of genericness, we have no choice but to reverse the refusal to register made by the Examining Attorney."

Text Copyright John L. Welch 2006


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