Offc Action Outgoing

Applicant applied to register the mark MICROCELL on February 29, 2000, alleging a bona fide intention to use the mark in commerce in connection with “power source and energy supply devices, namely, fibrous fuel cells, fibrous batteries, and energy storage fuel cells” in International Class 9. In the first Office action, dated September 1, 2000, the examining attorney refused registration under Section 2(e)(1) of the Trademark Act on the grounds that the mark merely describes the applicant’s goods.[1] In addition, the examining attorney requested information from the applicant in order to better understand and classify the applicant’s goods. While the description of goods set forth in the original application was acceptable, the applicant amended the description by Response dated November 30, 2000, as follows: “Power source and energy supply devices, namely a compartment containing at least one filamentary electrode coated with a porous material.” In a Notice of Suspension mailed January 24, 2001, the examining attorney continued the refusal under Section 2(e)(1) and indicated that the amended identification of goods was unacceptable.

By Final Action dated January 8, 2004, the undersigned maintained the refusal on descriptiveness and required amendment to the description of goods. In its May 13, 2004 Request for Reconsideration, filed along with the Notice of Appeal, the applicant amended the description again to read “power source and energy supply devices, namely, fibrous fuel cells, fibrous batteries, and energy storage fuel cells, in International Class 9.” The amended description is acceptable and such was noted in the record. However, the finality of the refusal was continued in an action mailed August 31, 2004. The applicant resubmitted its Brief and requested reinstatement of the Appeal on November 10, 2004.

Issue on Appeal

The sole issue on appeal is whether MICROCELL merely describes power source and energy supply devices, namely, fibrous fuel cells, fibrous batteries, and energy storage fuel cells.

ARGUMENT

I. Applicable Law

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b). A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b). A mark that combines descriptive terms is generally not registrable unless the composite creates a unitary mark with a unique, non-descriptive meaning or commercial impression. In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS held merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) (TARIFF MANAGEMENT held merely descriptive for “computer hardware and computer programs to control, reduce and render more efficient wide area network (WAN) usage and printed user manuals sold therewith”); In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT DOS and CONCURRENT PC-DOS held merely descriptive of “computer programs recorded on disk”). The term “micro” is merely descriptive of goods that are sold and produced in miniature form. See In re Tekdyne, Inc., 33 USPQ2d 1949 (TTAB 1995) (MICRO-RETRACTOR held descriptive for small retractors for use in the diagnosis and treatment of small wounds).

II. Applicant’s Mark is Merely Descriptive of the Goods

As set forth in the first Office action, MICRO refers to something that is “basic or small-scale.” A CELL is “a single unit for electrolysis or conversion of chemical into electric energy, usually consisting of a container with electrodes and an electrolyte. Also called electrochemical cell.” (The American Heritage Dictionary of the English Language, 3^rd Ed., 1992.)

The applicant has correctly pointed out that a compound mark should be considered in its entirety for descriptiveness purposes. Applicant has also stressed that each component of the mark in this case has multiple dictionary definitions. This argument is intended to stand for the proposition that the term MICROCELL would not be immediately descriptive to prospective customers. The applicant’s reliance on these two notions, however, ignores the principle that the combination of two descriptive terms can be descriptive as a whole in the context of the described goods. This principle is applicable here. The applicant’s goods include fuel cells and batteries. The definitions of record confirm that [electrochemical] fuel cells are “cells” for our purposes.[2] The articles of record indicate common usage of micro in connection with cells and fuel cells and power sources in particular. Furthermore, the numerous articles of record excerpted from the Lexis®/Nexis® database indicate that the term “micro” is clearly descriptive in the context of fuel cells or cells. Applicant has argued at the outset of its Brief that “a ‘fibrous’ article is not necessarily ‘micro’.” (Applicant’s Brief at 3.) Applicant cites In re Union Carbide Corp. for the proposition that the term “micro” must be assessed with consideration of whether or not the particular product involved is, in fact, produced and marketed on a small-scale. Applicant summarizes the proposition by arguing, “[I]f the product is not of a type that is produced and encountered in the appropriate market place in miniature form, a designation consisting of the name of the goods modified by the word “MINI” can be suggestive of the size of the goods.” (Applicant’s Brief at 4.) Again, evidence of record demonstrates that fuel cells produced and encountered in the market place for such goods are indeed found in small-scale or “micro” scale. Furthermore, the fact that applicant’s goods are not “necessarily” small-scale or basic is largely contradicted by evidence of record indicating that fuel cells such as applicant’s can be and often are just that: small-scale or basic. The applicant’s own website, excerpted in the undersigned examiner’s January 2004 Office action, touts the flexible features of Microcells including the ability for manufacture in various shapes and sizes. (www.microcellcorp.com)

In fact, the “micro” feature is an increasingly prominent and desirable feature of fuel cells. A sampling of these stories follows:

Fuel cells also have the advantages of easy scalability, from micro cells for personal electronics to cells for forklifts and automobiles and through to on-grid power generation. (Electronic Design, 10/27/2003).

Fuel cell solutions range from micro cells running on methanol for portable electronics such as cellphones and laptops, to portable generators, residential combined heat & power, and primary or backup power for hospitals, hotels and so on, running on hydrogen or ... (Metalworking Production, October 8, 2003)

The fact that consumers already pay high prices for battery power is a central reason why many start-up fuel cell companies regard microcells as a quicker path to profits. (New York Times, March 16, 2003)

The fibers [or microcells] are connected and packed together to make a fuel cell module. In a microcell, gaseous or liquid fuel passes through a channel within the fiber. (Fuel Cell Technology News, January 2002)

Again, the existence of additional meanings of MICRO and CELL is irrelevant in light of the fact that there are meanings for those terms in the realm of goods with which the applicant intends to use the mark MICROCELL. That is, when the mark MICROCELL is used in connection with the applicant’s fuel cell goods, prospective customers would immediately understand that the cells are or could be small-scale or basic. Accordingly, the mark MICROCELL can be said to be immediately descriptive of these goods.

III. Conclusion

The examining attorney has amply demonstrated on the record that the unmistakable commercial impression conveyed by the applicant’s mark, when viewed in the context of the identified goods, is that the cells or fuel cells are small in scale or basic. As such the mark is merely descriptive of the goods. Since the mark is merely descriptive, the examining attorney respectfully submits that the refusal to register under Trademark Act §2(e)(1) should be affirmed.

Respectfully submitted,

/Heather D. Thompson/

Trademark Examining Attorney

Law Office 103

571.272.9287

heather.thompson1@uspto.gov

Michael Hamilton

Managing Attorney

Law Office 103

[1] In the first Office Action the examining attorney also refused registration under Section 2(d) but has since withdrawn that ground for refusal. Examiner also referenced two prior pending applications but those references have also since been withdrawn.

[2] Applicant has attached a number of exhibits to its Appeal Brief. The Examining Attorney objects to entry of these exhibits as evidence because the record in any application must be complete prior to appeal. 37 C.F.R. §2.142(d); TMEP §710.01(c); TBMP §§1207.01 et seq. See Rexall Drug Co. v. Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999).