Buckeye Cablevision, Inc.

Trademark Trial and Appeal Board

Sep 28, 1999

No. 75051769 (T.T.A.B. Sep. 28, 1999)

Hearing: Paper No. 17
January 27, 1999 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/28/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Buckeye Cablevision, Inc.
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Serial No. 75/051,769
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Donald R. Fraser of MacMillan, Sobanski & Todd for Buckeye
Cablevision, Inc.
Cheryl S. Goodman, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney)
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On February 1, 1996 Buckeye Cablevision, Inc. applied
to register, pursuant to the provisions of Section 2(f) of
the Trademark Act, CABLESYSTEM CONTROLLER for "programmable
remote transmitter and receiver for operating a television
receiver."1 Registration has been refused pursuant to

1 Application Serial No. 75/051,769, filed February 1, 1996,
asserting first use and first use in commerce on April 1, 1987.
Ser. No. 75/051,769
2
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1),
on the ground that applicant’s mark is merely descriptive
and that its evidence is insufficient to demonstrate that
the mark has acquired distinctiveness. In fact, the
Examining Attorney has taken the position that the applied-
for term is generic for applicant’s goods.2
Applicant has appealed. Briefs were filed by
applicant and the Examining Attorney, and a reply brief was
submitted by applicant. Both applicant and the Examining
Attorney appeared at an oral hearing before the Board.
As a preliminary matter, we note that in its brief
applicant has argued not only that its mark has acquired
distinctiveness, but that it is inherently distinctive. At
the oral hearing applicant confirmed that it would like to
maintain the position that its mark in inherently
distinctive, although it recognized that its prior
registration for the same mark for the same goods on the
Supplemental Register, (see footnote 2), and the fact that

2 Applicant has made of record its ownership of a Supplemental
Registration for the same mark for the same goods as identified
in the present application. Because an assertion of genericness
of this mark for such goods would constitute an attack on
applicant’s Supplemental Registration, we regard the Examining
Attorney’s statements in this case as merely indicating her
position that the mark is highly descriptive, and therefore
requires a significant amount of evidence in order to establish
acquired distinctiveness. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., infra.
Ser. No. 75/051,769
3
the current application was filed claiming registrability
on the basis of acquired distinctiveness, were antithetical
to a claim of inherent distinctiveness.
Applicant’s registration on the Supplemental Register
of CABLESYSTEM CONTROLLER for the goods identified herein
is a concession that the term is merely descriptive.
Similarly, the fact that the present application is made
pursuant to Section 2(f) is also an acknowledgment that the
term is merely descriptive. See Yamaha International Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988). Accordingly, the issue of whether the
mark is merely descriptive or inherently distinctive is not
before us in this appeal. In any event, as discussed
below, the evidence establishes that applicant’s mark is
not inherently distinctive.
Applicant has explained that it is the largest
provider of cable television service in the northwest Ohio
area, and its service area extends into a township in
Michigan. Applicant uses its mark CABLEVISION CONTROLLER
on hand-held remote units, or remotes, which are used to
signal converter units attached to television receivers.
In support of her position that CABLESYSTEM CONTROLLER
is merely descriptive of "programmable remote transmitter

Ser. No. 75/051,769
4
and receiver for operating a television receiver," the
Examining Attorney has made of record excerpts taken from
the NEXIS data base which show that the term "cable system"
is used to refer to cable programming services, guides for
such programming, remotes, and receivers. See, for
example, the following:
(Check your local cable system guide.)
"The San Diego Union Tribune,"
April 17, 1993
…the Los Angeles Times has aggressively
cut deals with cable systems. A cable
subscriber, instead of getting the
particular cable system's guide, now
may find his system-specific listings…
"Chicago Tribune," Sept. 29, 1991
Eliminated ban on changing IR codes for
cable system remotes, heeding cable
arguments….
"Consumer Electronics," April 15, 1996
Le Groupe Videotron (LGV) will supply
its Videoway cable system box and
interactive expertise…
"Brandweek," Oct. 18, 1993
In addition, the Examining Attorney has submitted
excerpts from articles showing the use of "remote
controller as a generic term":
The I-Stat System which includes a
portable device about the size of a
television remote controller….
"The New York Times," Jan. 28, 1996
Pan Pacific executives still can't
figure out why about 100 television
remote controllers have been stolen,
Ser. No. 75/051,769
5
since the units don’t work with other
television sets.
It could be that customers are looking
for higher guidance in determining
whether taking towels, TV controllers
and other items is really….
"The Houston Chronicle," April 10, 1994
With these cable boxes, users will
operate their televisions using a
remote controller called an "air
mouse," ….
"Chicago Tribune," Feb. 13, 1994
Interactive television: TV views "talk
back" by manipulating their remote
controllers.
"Des Moines Register," Jan. 2, 1994
The evidence clearly demonstrates not only that
CABLESYSTEM CONTROLLER is merely descriptive of a
"programmable remote transmitter and receiver for operating
a television receiver," but that it is highly descriptive.
See Remington Products Inc. v. North American Philips
Corp., 892 F.2d 1576, 13 USPQ2d 1444 (Fed. Cir. 1990)
(TRAVEL CARE merely descriptive or generic of travel
personal care products); DeWalt, Inc. V. Magna Power Tool
Corp., 289 F.2d 656, 129 USPQ 275 (CCPA 1961) (POWER SHOP
merely descriptive of woodworking saws, "power shop" being
simply a short form of "power workshop").
As a mark's descriptiveness increases, the amount of
proof required to demonstrate acquired distinctiveness
likewise increases. Yamaha International Corp. v. Hoshino
Ser. No. 75/051,769
6
Gakki Co., Ltd., supra. Therefore, the burden on applicant
to demonstrate that CABLESYSTEM CONTROLLER has acquired
distinctiveness for its goods is a heavy one.
The evidence applicant has submitted to support its
claim of acquired distinctiveness consists of two
declarations, with exhibits, of Thomas K. Dawson, assistant
to the president of applicant. He states that applicant is
the largest provider of cable television services in the
Northwest Ohio region. Applicant renders these services
under the marks THE CABLESYSTEM and BUCKEYE CABLESYSTEM.
Applicant distributes converter boxes and programmable
remote units for customers to use to switch programs and to
issue electronic "buy" instructions when ordering pay-per-
view. Each remote unit which is distributed in conjunction
with a converter box bears the mark CABLESYSTEM CONTROLLER.
Applicant has used the asserted mark CABLESYSTEM
CONTROLLER on its remote units since April 1, 1987.
Approximately 90,000 customers use such remotes. Mr.
Dawson also estimates that 40% of applicant’s total
advertising expenditures during this period, or more than
$3.4 million, relates to promotion of pay-per-view sales
and use of the CABLESYSTEM CONTROLLER remote units.
Mr. Dawson states that applicant has placed
advertisements in newspapers, on television, and in
Ser. No. 75/051,769
7
applicant’s customer newsletter. However, of the four
advertisements applicant has submitted, two, in "TV HOST"
and in The CableSystem entertainment guide, do not include
the term CABLESYSTEM CONTROLLER at all. The advertisement
in the May 6, 1995 Toledo, Ohio "Blade" features the mark
The CableSystem for cable program services, and is
specifically for a pay-per-view program on IMPULSE. This
advertisement states that the program is on "Channel 21A
with CableSystem Converter." All references to
"CableSystem Controller are in small type, e.g., "Press
’ALT’ then ’BUY’ on your CableSystem Controller. Order
between 8:30pm and 12:00 Midnight," and, at the very bottom
of the ad, "You must have a CableSystem Converter to enjoy
this event." Applicant’s mailer, which is for its Impulse
home entertainment services, includes "CableSystem
Controller" as part of a list for "what you need to enjoy
Impulse Entertainment." The list also includes
"CableSystem Converter," CableSystem Impulser (Subscription
Dialer)," and "Telephone Connection to Impulser." Finally,
Mr. Dawson states that, as part of its listing of program
schedules, instructions on the use of the "CABLESYSTEM
CONTROLLER remote unit" are given nine times per hour.
There is no evidence as to the amount of time any customer
would watch such a "station" and thereby be exposed to the
Ser. No. 75/051,769
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use of the term. More importantly, applicant has not shown
the manner in which the term CABLESYSTEM CONTROLLER is used
in connection with instructions on how to use the remote.
Thus, we cannot determine whether the term has been
promoted in a trademark manner for the remote unit, or has
been used merely as part of informational material on how
to obtain applicant’s cable television pay-per-view
services. All in all, based on all the evidence of record,
we do not find that the manner in which the words
CABLESYSTEM CONTROLLER appear in applicant’s advertising
materials is sufficient to make a commercial impression
upon consumers that CABLESYSTEM CONTROLLER is a trademark
identifying the source of the remote controller.
With respect to the use of the asserted mark, Mr.
Dawson speculates that if each customer changes channels
twice per hour during an average of seven hours of use per
day, each customer would have handled the remote control
unit 46,000 times over nine years. Leaving aside that
there is no support for these assumptions, the fact that a
consumer may handle a remote unit bearing the term
CABLESYSTEM CONTROLLER is not a sufficient basis to
conclude that the consumer would notice the words appearing
on the remote, or regard these highly descriptive words as
a trademark.
Ser. No. 75/051,769
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Nor does the cost to applicant to purchase the
remotes, or to have its asserted mark silk-screened on
them, reflect purchaser perception of the CABLESYSTEM
CONTROLLER as an indicator of source of the remotes.
The only evidence applicant has submitted of actual
purchaser reaction is a single declaration by Mark I.
Jacobs, a subscriber to applicant’s cable programming
services. This single declaration is insufficient to show
that purchasers as a whole regard CABLESYSTEM CONTROLLER as
a trademark for the remote units.
Having reviewed all of the evidence, we find that
applicant has failed to establish that the highly
descriptive term CABLESYSTEM CONTROLLER has acquired
distinctiveness as a trademark for its programmable remote
transmitter and receiver for operating a television
receiver.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
P. T. Hairston
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board