In re Abcor Development Corp.

RICH, Judge,

concurring, with whom MARKEY, Chief Judge, joins.

For all the majority’s extensive review and discussion of various “tests,” propounded from time to time in various places, for determining § 2(e)(1) descriptiveness, the opinion fails to state why I believe GAS-BADGE is “merely descriptive” under the statute.

My reasoning is very simple and requires no application of an elusive test. The ultimate in descriptiveness is the name of a thing. Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845 , 48 CCPA 1004, 129 USPQ 411 (1961); In re Cooper, 254 F.2d 611 , 45 CCPA 923, 177 USPQ 396 (1958). The description of the goods for which GASBADGE is sought to be registered, set forth as the single item of goods named in the application, is “chemically treated badge to determine and to monitor the amount of personal exposure of an individual to gaseous pollutants.” This, of course, is a wordy explanation which does not qualify as a name in the usual sense of the word. So, what is the name of this article? Appellant’s own descriptive literature of record in the PTO provides the answer. The name is “Gas Monitoring Badge.” This may be regarded as the full name. However, the users of language have a universal habit of shortening full names — from haste or laziness or just economy of words. Examples are: automobile to auto, telephone to phone, necktie to tie, gasoline service station to gas station. I regard it as inevitable that a gas monitoring badge will be called a gas badge as the name of the goods to the same extent as gas monitoring badge is the name and for that reason, and without application of some textwriter’s “test,” deduced from some case having dissimilar facts, I find it “merely descriptive.”

Appellant’s brief, I note, never comes to grips with this realistic analysis and seems pointedly to avoid discussion of the name of the object to which the mark is applied. The argument is devoted mostly to discussion of other cases which, we have repeatedly said, are of very little value in solving trademark registration problems.

Furthermore, nearly a half century of dealing with trademark problems persuades me that “descriptiveness,” “mere” or otherwise, is a many-faceted question which must be decided on a case-by-case basis. I do not believe it is possible to devise any universally applicable test for determining the multifarious problems which arise under § 2(e) and (f). I note particularly that there is a big difference between a case involving the name of a thing and a case involving a mark which describes or suggests some function, ingredient, quality, or characteristic of the thing. We have here a name problem and I see no point in discussing cases of other types, which are without value as precedents, or other unhelpful generalities. It is not the function of an opinion to write a treatise but to explain why an issue is decided as it is.

The majority does not appear to read the board opinion as I do. (See footnote 17). While the board did not use the word “name” in its opinion, it used its equivalent —“appellation.” It noted that the specimen labels “display the notation ‘WALDEN’ and the notation ‘GASBADGE’ ” and then it immediately pointed out that the labels contain “no generic appellation for the goods * * To me that is equivalent to saying that GASBADGE is the only “appellation” appearing on the labels, espe *816 dally when taken with the balance of the opinion which points out that the article is a badge and that it monitors gas. I think it is not speculating to say that the present name of the article is “GASBADGE” and I think I am not departing from the board’s ground of refusal just because the board chose to say the mark is “merely descriptive.” All names of articles are just that and always within the proscription of § 2(e)(1).

The board also said in its conclusion, “ ‘GASBADGE’ leaves nothing for speculation or conjecture. The term immediately and unequivocally describes the purpose and function of appellant’s goods.” That is what names do. They tell you what the thing is. I am sure the board believed GASBADGE to be a name — in fact, a “generic” name in the sense in which trademark lawyers use that term.