Amoco/Enron Solar

Trademark Trial and Appeal Board

Nov 29, 2000

No. 75423093 (T.T.A.B. Nov. 29, 2000)

Paper No. 10
BAC
11/29/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Amoco/Enron Solar
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Serial No. 75/423,093
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Robert E. Blankenbaker, Esq. of BP Amoco Corporation for
Amoco/Enron Solar.
Michael H. Kazazian, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney)
_______
Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On January 26, 1998, Amoco/Enron Solar (a Delaware
general partnership) filed an application to register the
mark DIRECTPV on the Principal Register for “public utility
services, namely providing solar generated electricity” in
International Class 39. The application is based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that the mark DIRECTPV, if
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/423093
2
used in connection with the identified services of
applicant, is merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The Examining Attorney contends that a term need only
describe one function or aspect of the services in order to
be considered merely descriptive; and that the mark
DIRECTPV “immediately describes the services, namely, that
the applicant uses photovoltaic technology in order to
provide electricity directly to its customers through the
direct conversion of sunlight into electricity” (brief, p.
2). The Examining Attorney further contends that “direct”
refers to the direct conversion of solar energy into
electricity and/or the direct provision of such electricity
to consumers; that when considered in relation to
applicant’s services the letters PV refer to
“photovoltaic”; that each of the component elements of the
mark is “highly descriptive”; and that applicant’s use of
such elements together does not create a unitary mark with
a nondescriptive meaning.
In support of his refusal, the Examining Attorney
submitted dictionary definitions of the word “direct” and
Ser. No. 75/423093
3
the acronym “PV”1; several excerpted stories from the Nexis
database; and a few pages from some different websites
referring to “photovoltaics.”
Applicant contends, on the other hand, that its mark
is suggestive, rather than merely descriptive, in relation
to applicant’s services; that while “PV” is a common
acronym for “photovoltaics” within the scientific
community, it is not understood as such by the general
public, to whom applicant’s services will be offered; and
that DIRECTPV is a pseudoword capable of a number of
different inferences, none of which are merely descriptive
of applicant’s “public utility services, namely providing
solar generated electricity,” especially since applicant’s
services do not involve the generation of electricity or
solar energy.
Applicant further contends that the Nexis evidence
submitted by the Examining Attorney is not persuasive
because none of the excerpts use the word “direct” in the
sense of providing electricity directly to consumers, and
the stories do not reflect a descriptive use of the term
“DIRECTPV” with regard to applicant’s identified services.

1 The Examining Attorney’s request that the Board take judicial
notice of some dictionary definitions attached to his appeal
brief is granted. See TBMP §712.01.
Ser. No. 75/423093
4
Finally, applicant argues that it should be allowed a
registration because a registration which issued for the
mark DIRECTV for “satellite broadcasting services provided
directly to the consumer” (Registration No. 1,872,038) is
much clearer in meaning than is applicant’s mark, DIRECTPV,
in relation to its services.2
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services]”
(emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Entenmann’s Inc., 15
USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991.
Of course, whether a term or phrase is merely
descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is

2 Applicant did not provide a photocopy of the third-party
registration and a mere reference to the registration is
insufficient. See In re Duofold, Inc., 184 USPQ 638 (TTAB 1974).
However, because the Examining Attorney did not object to
consideration thereof and instead treated it on the merits, we
have considered the information about the third-party
registration. We note, however, that the existence of this
third-party registration is not a basis for our decision herein.
Ser. No. 75/423093
5
sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term or phrase would have to the
average purchaser of the goods or services because of the
manner of its use. See In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). See also, In re Consolidated Cigar Co.,
35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
The burden of proving that applicant’s mark is merely
descriptive rests with the Examining Attorney. Viewing the
record in its entirety, we find that the Examining Attorney
has not established a prima facie showing that the mark
DIRECTPV is merely descriptive of applicant’s public
utility service of providing solar generated electricity.
Rather, consumers would have to exercise a multi-stage
reasoning process to determine any specific descriptive
meaning of DIRECTPV in relation to applicant’s services.
See In re Sundown Technology Inc., 1 USPQ2d 1927 (TTAB
1986); and In re Tennis in the Round Inc., 199 USPQ 496
(TTAB 1978). That is, even if the general public
understood “PV” to mean “photovoltaics,” and further that
“photovoltaics” refers to the direct conversion of sunlight
into electricity, nonetheless the term “direct,” as
evidenced by the dictionary submissions, is a term with
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several different yet commonly understood meanings, and the
evidence of record does not establish that, in light
thereof, the mark DIRECTPV conveys an immediate idea of a
significant feature, function or characteristic of
applicant’s services. The Nexis excerpts submitted by the
Examining Attorney are unpersuasive because they do not
show the term “direct” used descriptively in the context
argued by the Examining Attorney nor in relation to
applicant’s services.
In sum, the record before us does not show that the
term DIRECTPV has a readily recognized meaning with regard
to the involved services. That is, the mark DIRECTPV does
not immediately evoke an impression or an understanding of
a feature, function or characteristic of applicant’s public
utility services. Rather, on this ex parte record, we
conclude that the mark DIRECTPV requires a degree of
imagination or several steps of thought to determine any
significant feature, function or purpose of applicant’s
services.
Finally, to the extent that we may have any doubt as
to whether a term is merely descriptive, we resolve such
doubt, in accordance with the practice of the Board, in
favor of the applicant and pass the application to
publication. See In re Gourmet Bakers Inc., 173 USPQ 565
Ser. No. 75/423093
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(TTAB 1972). In this way, anyone who believes that the
term is, in fact, descriptive, may oppose and present
evidence on this issue to the Board.
Decision: The refusal to register under Section
2(e)(1) is reversed.
G. D. Hohein
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board