The USPTO refused registration of the mark NANOCHIP, finding it merely descriptive of "radio frequency identification (RFID) tags." Examining Attorney Sophia S. Kim maintained that the mark immediately describes a feature or characteristic of the goods, namely, that the products "feature a very small microchip." The Board agreed. Would You Have Appealed? In re Nanochip ID, Inc., Serial No. 86694656 (April 12, 2017) [nor precedential] (Opinion by Judge Bergsman).
A term is merely descriptive within the meaning of Section 2(e)(1) if it "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." The determination of mere descriptiveness is made not in the abstract, but rather in the context of the relevant goods.
The Examining Attorney submitted dictionary definitions of "nano" ("denoting a very small item") and chip ("Also a microchip. Electronics. A tiny slice of semiconducting material, generally in the shape of a few millimeters long, cut from a larger wafer of the material, on which a transistor or an entire integrated circuit is formed.") Applicant’s website identified its “radio frequency identification (RFID) tags” as microchips.
Applicant’s mark NANOCHIP retains the dictionary definitions of its component parts when used in connection with “radio frequency identification (RFID) tags” engendering the commercial impression that Applicant’s product is or is comprised of a very small microchip that functions as an identification tag.
Excerpts from Applicant’s website (nanochipid.com) touting the small size of the product supported the Board's finding.
Applicant argued that NANOCHIP is merely suggestive because “it fails to convey the use or purpose of that microchip, in the instant application as a part of a RFID tag." The Board pointed out, however, that a mark is merely descriptive if it "directly conveys to consumers a feature of Applicant’s product, namely, an RFID that is or is comprised of a very small microchip."
Applicant also contended that NANOCHIP is a double entendre, referring both to the size of the chip and its low cost. The Board, however, pointed out that, although the word “nano” may have multiple meanings in the abstract, when Applicant uses NANOCHIP in connection with RFID tags, it clearly conveys the message that its product is or is comprised of a very small microchip."
And so the Board affirmed the refusal to register.