UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/501920
APPLICANT: Honeywell International Inc.
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CORRESPONDENT ADDRESS: |
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ON APPEAL
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MARK: MICRO SWITCH
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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EXAMINING ATTORNEY'S APPEAL BRIEF
Applicant has appealed the Examining Attorney’s refusal to register the trademark MICRO SWITCH for use in connection with
Limit switches, heavy duty limit switches, general purpose limit switches, oiltight limit switches, enclosed basic limit switches, general purpose limit switches, heavy duty snap-action limit switches, standard duty limit switches, medium duty limit switches, compact limit switches, stainless steel limit switches, factory sealed prewired limit switches, enclosed limit switches, global limit switches, explosion proof limit switches, weather sealed explosion proof limit switches, hazardous location limit switches, NEMA limit switches, fully potted limit switches, harsh duty limit switches, miniature limit switches, gravity return limit switches, low torque limit switches, sealed contact limit switches, heavy duty factory sealed 6P limit switches, precision limit switches, plug-in limit switches, full size DIN EN50041 limit switches, miniature size DIN EN 50047 limit switches, international limit switches
in International Class 9. The Examining attorney refused registration on the grounds that it is merely descriptive within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1) and that the applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient because the proposed mark is generic, or in the alternative, so highly descriptive that the applicant's showing of acquired distinctiveness is unpersuasive.
1. On March 27, 2003, the applicant, Honeywell International Inc. (hereinafter referred to as applicant) filed an application to register MICRO SWITCH on the Principal Register for a variety of limit switches as indicated above in International Class 9.[1] On October 7, 2003, the examining attorney, issued a non-final office action requesting clarification as to the identification of goods, a disclaimer of “switch” and requested information as to the nature of the goods. The applicant responded to the refusal on January 26, 2004, by amending the identification of goods, disclaiming the word “switch” and including promotional materials stating that “micro switch” has no significance in the relevant trade.
2. On February 26, 2004, the Office granted a Letter of Protest by Saia-Brugess, Inc. who argued that the mark is generic in the industry.
3. On March 11, 2004, the examining attorney[2] issued a non-final action refusing registration because the proposed mark was highly descriptive and possibly generic of the goods. The applicant disagreed with the examining attorney’s refusal by entering a response on September 13, 2004.
4. The examining attorney issued a final office action on September 23, 2004, as to the descriptiveness of the mark. The applicant amended the application to seek registration based on acquired distinctiveness on March 24, 2005 and the examining attorney issued a non-final action on April 14, 2005, stating that the claim of acquired distinctiveness was insufficient and maintaining the descriptiveness refusal. The applicant submitted further evidence in support of the claim of acquired distinctiveness, but the examining attorney issued a final office action on November 16, 2005 maintaining the highly descriptive nature of the mark and the insufficiency of the acquired distinctiveness evidence. This appeal follows.
The issues on appeal are (1) whether the proposed mark MICRO SWITCH is descriptive; and (2) if the proposed mark is not generic, whether the applicant’s claim of acquired distinctiveness is sufficient.
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 or services. 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). It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive. It is enough if the term describes one attribute of the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The trademark examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Applying the legal principles set forth above, the examining attorney submits that the designation MICRO SWITCH immediately, and without conjecture or speculation, describes the most notable characteristics of the product, namely, that the goods are small switches. The evidence from the Internet as well as dictionary definitions submitted in the various office actions support this determination. For example (emphasis added):
Review of the record clearly indicates that the salient feature of the applicant’s goods is that they sell micro switches; a term commonly used in the industry to describe a small electrical switch used in a variety of applications. The examining attorney has shown in each Office action that the proposed mark describes (actually names) the goods that are the subject of the application. The Google® evidence attached to each office action establishes that the proposed mark MICRO SWITCH is a term with a recognized meaning in a variety of fields for a variety of applications, including industrial applications.
Applicant’s arguments in support of registrability are unpersuasive. The applicant argues the “appearance, design and size of Applicant’s limit switches are very different from those of the small and/or tiny size types of switches where the term “micro switch” is used descriptively.”[3] The examining attorney included definitions of the terms “micro” and “switch” in the second office action. The words are defined as:
mi·cro (mì¹kro) adjective
Basic or small-scale: the economy's performance at the micro level.
micro- or micr- prefix
1. a. Small: microcircuit. b. Abnormally small: microcephaly. c. Requiring or involving microscopy: microsurgery.[4][5]
switch (swîch) noun
5. Abbr. sw. A device used to break or open an electric circuit or to divert current from one conductor to another.
6. Abbr. sw. A device consisting of two sections of railroad track and accompanying apparatus used to transfer rolling stock from one track to another.
7. a. The act or process of operating a switching device. b. The result achieved by such an act.
These dictionary definitions along with the definitions replicated above show that the actual size of the “micro” switch is relative and that a switch can be classified as a micro switch whether it is four inches in diameter or only one inch in diameter.
The applicant also argues that the term MICRO SWITCH “suggests modernity in the context of Applicant’s goods” and that it is unlikely that a consumer would immediately recognize the mark as having any particular meaning in relation to the applicant’s goods.[6] As noted previously, a mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. Here, the proposed mark clearly describes the most notable characteristics of the product—a small switch.
Further, while the examining attorney agrees that combinations of otherwise merely descriptive components are registrable, and have been found to be registrable, if the juxtaposition of those words is inventive or evokes a unique commercial impression, or if the term has a bizarre or incongruous meaning as applied to the goods, this simply is not the case here. Consumers would know immediately that the applicant’s goods refer to a small circuit-switching device.
B. APPLICANT’S EVIDENCE IN SUPPORT OF ACQUIRED DISTINCTIVENESS PURSUANT TO TRADEMARK ACT SECTION 2(F) IS INSUFFICIENT
The applicant’s 2(f) evidence consists of the declaration of Robert A. Nickels, the Business Development Manager. The declaration consists of a statement that the mark has been in substantially continuous and exclusive use by the applicant since as early as 1941. The declaration also states that the U.S. retail sales of the applicant’s limit switches since that time were over $1 billion.[7] The applicant also submitted two third-party declarations in response to the final office action stating that they were distributors of the applicant’s product and were familiar with the MICRO SWITCH brand.[8] The affidavits are pre-typed and merely signed by two different distributors. Declarations provided by the applicant in support of a claim of acquired distinctiveness pursuant to Trademark Act Section 2(f) are given less weight because the declarant is affiliated with the applicant. The value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. In re Chemical Dynamics Inc., 839 F. 2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988).
Taken as a whole, the showing of acquired distinctiveness pursuant to Trademark Act Section 2(f) is not persuasive. The applicant relies heavily on a self-serving declaration by Robert Nickles, the Business Development Manager to the applicant. The applicant provides only two third-party affidavits from disinterested consumers as to the recognizability of the applicant’s mark. That applicant has high sales of the goods does not mean that the proposed mark has achieved distinctiveness. Standing alone, the sales figures and advertising expenditures demonstrate the success of applicant’s goods and/or services, but not that relevant consumers have come to view the proposed mark as applicant’s mark for such goods and/or services. These statements and exhibits merely tend to show that applicant has undertaken extensive promotions and has achieved commercial success. See In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000); In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994); In re Franklin Mint Corporation, 209 USPQ 172, 174 (TTAB 1980); In re Behre Industries Inc., 203 USPQ 1030 (TTAB 1979).
The major reasons for protecting highly descriptive or generic designations are: (1) to prevent the owner of a mark from inhibiting competition in the same of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. Other manufacturers of micro switches would need to use the mark to describe their small switches. The applicant argues that their use of the mark would be limited to relatively large limit switches used in industrial applications. However, the exhibits attached by the applicant show that the difference of “large” limit switches and smaller “micro” switches is negligible. The applicant also contends that their usage of the term is limited to limit switches in industrial applications. However, the applicant’s identification of goods refers only to limit switches and does not indicate a particular field of use.
C. THE PROPOSED TERM MICRO SWITCH IS GENERIC BECAUSE IT IS UNDERSTOOD BY THE PURCHASING PUBLIC TO REFER TO THE CLASS OF GOODS IN THIS APPLICATION.
The examining attorney articulated in numerous office actions that the mark was so highly descriptive and as to be possibly generic. It has been determined that no amount of secondary meaning can rescue a generic designation. Such a designation cannot become a trademark under any circumstances. At best such evidence could establish some de facto secondary meaning, but such secondary meaning is not accorded legal significance. See In re BOC Group, Inc., 223 USPQ 462 (TTAB 1984); Miller Brewing Company v. G. Heileman Brewing Company, 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977); Reese Publishing v. Hampton International Communications, 620 F.2d 7, 205 USPQ 585 (2d Cir. 1980). In the interest of thoroughness, the examining attorney demonstrates that the proposed mark MICRO SWITCH is generic for its class of goods and that no amount of secondary meaning can render a generic term registrable.
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.
A two-part test is used to determine whether a designation is generic:
(1) What is the class or genus of goods or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?
See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).
The evidence submitted by the examining attorney shows that micro switches are a distinct genus of goods. This class of goods refers to micro switches as small devices used to break or open an electric circuit. Furthermore, the Google® search pages, the definitions and the various web pages show that the relevant public refers to these small switches as micro switches and that there is no other term by which these small switches are known. The definition provided by Wikipedia referring to “micro switch” as a generic term for an electric switch further demonstrates the generic usage of this term in the industry.
The foregoing evidence clearly indicates that the applicant’s mark, MICRO SWITCH, is highly descriptive when used to describe a variety of limit switches. Applicant's mark does nothing more than identify a significant ingredient, characteristic, feature, composition or attribute of applicant's goods. As such, the proposed mark is descriptive, and applicant’s competitors should have the ability to use these words to describe their goods. Furthermore, the applicant's claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient because the proposed mark is generic, or in the alternative, so highly descriptive that the applicant's showing of acquired distinctiveness is unpersuasive. For these reasons, it is respectfully requested that the Board affirm the refusal to register the proposed mark, MICRO SWITCH, on the Principal Register under Trademark Act Section 2(e)(1).
Respectfully submitted,
/Virginia T. Isaacson/
Trademark Attorney
Law Office 110
(571) 272-9365
Managing Attorney
Law Office - 110
[1] The application was assigned serial no. 76501920.
[2] This file was reassigned to the undersigned attorney on March 11, 2004.
[3] Applicant’s brief pg 4.
[5] EA office action 3/11/04 pg 1. The American Heritage® Dictionary of the English Language, Third Edition copyright 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[6] Applicant’s brief page 6.
[7] Applicant’s office action 3/28/05 pages 6 and 7.
[8] Applicant’s office action 10/17/05 pages 4-7.