Canon Kabushiki Kaisha

Trademark Trial and Appeal Board

Nov 18, 1998

No. 74631952 (T.T.A.B. Nov. 18, 1998)

Oral Hearing: Paper No. 18
January 7, 1998 GDH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 18, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Canon Kabushiki Kaisha
________
Serial No. 74/631,952
_______
Dolores Moro-Grossman, Pasquale A. Razzano and William J. Burnet
of Fitzpatrick, Cella, Harper & Scinto for Canon Kabushiki
Kaisha.
Peter Cataldo, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Canon Kabushiki Kaisha has filed an application to
register the term "MULTIPASS," in the stylized form shown below,
as a trademark for "facsimile machines connectable to personal
computers and having printer function, scanner function and
copying function and their accessories[,] namely[,] driver
software therefor."1

1 Ser. Number 74/631,952, filed on February 9, 1995, which alleges a
bona fide intention to use such term in commerce.
Ser. No. 74/631,952
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, the term
"MULTIPASS" is merely descriptive of them.
Applicant has appealed. Briefs have been filed2 and an
oral hearing was held. We affirm the refusal to register.
In support of his position, the Examining Attorney has
made of record and principally relies upon various excerpts, of
which the following are especially pertinent, from his searches
of the "NEXIS" database (emphasis added):
"The BJ-200e, an enhanced version of the
company's popular BJ-200 printer[,] features
a multipass printing mode to eliminate
banding ...." -- Computer Reseller News,
February 28, 1994;
"C. Itoh announces two new bar-code
printers featuring multipass ribbon cartridge
design." -- MIDRANGE Systems, August 18,
1992;
"The CLC 500 uses a multipass indirect
electrostatic process -- one pass for each
color -- to print four colors ...." -- Byte,
October 1991 (article headlined: "Color
Laser Printing");

2 The Examining Attorney, in his brief, notes that "applicant has
attached materials to its appeal brief and indicated that they are for
review by the Board." While, pursuant to Trademark Rule 2.142(d), the
Examining Attorney "objects to the introduction of any such materials
and their consideration as part of the record" on the basis that "[i]t
is well established that materials may not be submitted as evidence at
the appeal stage and that untimely evidence will not be considered,"
the materials attached as exhibits to applicant’s initial brief are
merely duplicate copies, as applicant correctly points out in its
reply brief, of the documents which it properly made of record with
its timely request for reconsideration of the final refusal.
Accordingly, the Examining Attorney’s objection is overruled and we
have considered such materials.
Ser. No. 74/631,952
3
"Electrostatic printing and plotting
tend to be large-format and based on one of
three techniques: multipass, single pass or
helical scan. With both single and
multipass, the medium is roll-fed paper." --
Government Computer News, March 20, 1989;
"The printer’s single-pass operation
allows for more exact and stable alignment
than that of multipass printers." --
InfoWorld, May 21, 1984;
"The unit can generate images with a
resolution of up to 300 dots per inch, about
twice that of the best multipass dot-matrix
printers." -- Byte, March 1984;
"The Facit 4528T printer is a multipass
unit ...." -- Computerworld, August 29, 1983;
"Model 358 is a dual-mode printer
providing bidirectional draft, multipass
correspondence quality printing and four-
color or seven-color print capability." --
Computerworld, June 6, 1983;
"Facit, Inc. announced the Facit 4528
near letter-quality intelligent printer. It
is a multipass unit which can print normal
text, variable size matrix characters, pin
graphics and nine-bar codes ...." --
Computerworld, May 23, 1983; and
"[T]he new unit has 18 wires staggered
in a zigzag pattern to produce print quality
about equal to that of multipass dot-matrix
printers with 150-character/second speed of
the original Paper Tiger model." --
Electronics, April 7, 1981 (article
headlined: "One-pass matrix printer offers
multipass quality").
The Examining Attorney, in view of such evidence,
maintains that "the term ’multipass’ is used to describe a
function, feature or characteristic of printers and photocopiers"
and thus is merely descriptive of applicant’s goods. In
particular, according to the Examining Attorney:
Ser. No. 74/631,952
4
The evidence of record demonstrates that the
term "multipass" merely describes printers
and copiers that make more than a single pass
over objects to be printed or copied.
Applicant’s goods perform the functions of
printers and copiers. As such, MULTIPASS
merely describes a significant function,
feature or characteristic of the goods;
namely, that they utilize multiple passes to
perform printing and copying functions.
Moreover, to the extent that the evidence may be said to show, as
argued by applicant, that the term "multipass" has specifically
different meanings depending upon the goods in connection with
which it is used, and that none of the "NEXIS" articles, in any
event, utilizes such term to describe any aspects of applicant’s
goods, the Examining Attorney insists that:
It is not surprising that "multipass" appears
in the several contexts pointed out by
applicant given the technologically different
types of printers and copiers identified in
the articles and the multitude of purposes
for which those goods are used. It is highly
significant that the evidence of record
indicates different types of printers and
copiers have in common "multipass" functions,
features and characteristics. The term
"multipass" is thus not merely descriptive of
a particular type of printer or copier.
Rather, it merely describes a function,
feature or characteristic of many types of
printers and copiers [including products of
the type offered by applicant].
Applicant, on the other hand, contends that the term
"MULTIPASS" "is, at most, suggestive" as applied to its goods.
According to applicant, "[t]he numerous articles cited by the
Examining Attorney do not show common use of the term ’multipass’
in association with goods of the type found in this application,
but rather show use of the term to mean a variety of things
Ser. No. 74/631,952
5
depending on the subject matter of the article ...." Moreover,
although a copy thereof was not provided, applicant insists that:
The definition of "multi", according to
Merriam Webster’s Collegiate Dictionary (10th
ed. 1993), is "many : multiple : much ..."
The term "pass" has numerous definitions
including: "move, proceed, go"; "to render a
decision, verdict or opinion"; "a means ...
by which a barrier may be passed or access to
a place may be gained." Merriam Webster at
pp. 848-49.
Applicant asserts, in view thereof, that "the prefix and suffix
alone [in the term ’MULTIPASS’] are subject to more than one
meaning and the connotations afforded their coupling are myriad,"
although it fails to mention any specific examples which would be
plausible in the context of applicant’s goods. Applicant further
insists that "the Examining Attorney’s own articles support
Applicant’s argument that the term ’multipass’ is not
descriptive" of its goods inasmuch as "[e]ach article provides a
different definition of the term ’multipass’ and[,] more
significantly, none of the articles use[s] the term ’multipass’
to describe the Goods of this application."
Applicant also maintains that "[s]ince imagination is
required to associate the mark MULTIPASS (Stylized) with
Applicant’s Goods, it is unlikely that the combination MULTIPASS
(Stylized) will be needed by Applicant’s competitors to describe
their respective products." In particular, applicant notes that
it "has undertaken an investigation in the NEXUS [sic] database
to uncover other uses of the term ’multipass’," using "the same
search strategy provided with the excerpted articles attached to
the Final Action," and that the search "uncovered a number of
Ser. No. 74/631,952
6
articles not cited by the Examiner." Applicant maintains that
such articles, as indicated by the following excerpts, "show that
the subject Goods are not referred to as ’multipass’ machines,
but rather, are known in the trade as ’multi-function
peripherals’" (emphasis added):
"When Canon, Ricoh, Okidata, and Xerox
released multifunction peripherals a few
years back, they seemed like a great idea:
Tuck your fax machine, copier, printer, and
scanner into one tidy box. The new units
were spiffy, sexy, expensive--and a complete
marketing flop. In a turn of events, the MFP
(Multifunction Peripheral) is back with a
vengeance, fueled by the growing SOHO (Small
Office/Home Office) market and new product
launches from major manufacturers.
This review examines four new MFP
products aimed ... at the SOHO market.
Brother, Canon, Hewlett-Packard, and Lexmark
each produce computer controlled
multifunction machines that offer five
functions: plain-paper fax, PC fax, printer,
copier, and scanner. ....
....
The MultiPASS 1000 is the newest and
most complete member of Canon’s multifunction
peripheral family. Based on Canon’s 360-dpi
BubbleJet printer, the MultiPASS boasts six
functions. However, the sixth function is
just the telephone handset. ....
We received a prerelease version of the
Canon MultiPASS 1000 and several updates to
its componentry throughout the testing
process. The final release is scheduled for
mid-June." -- Byte, August 1995;
"You’re setting up your own office.
What equipment do you absolutely need? From
the largest Fortune 500 company to the one-
person home business, three functions are
essential: printing, faxing, and copying.
.... For a fraction of what you would spend
to buy these tools individually, you can get
a multifunction device (MFD) that combines a
printer, fax machine, and copier, along with
scanning and fax -modem features. Our
Usability Labs staff put five MFD’s through
their paces: Lexmarks’ Medley, Xerox’s
Ser. No. 74/631,952
7
Document WorkCenter 250, Brother’s MFC-
4500ML, Canon’s MultiPass 100, and Hewlett-
Packard’s OfficeJet LX. ...." --
PC/Computing, January 1996; and
"They print; they fax; they copy; they
scan. But is the new breed of multifunction
peripherals good enough at everything--or
anything--to meet your needs?
Now that small office has emerged as a
major market, manufacturers are tripping over
themselves looking for ways to target it.
One of the more intriguing results is the
multifunction printer: a gadget that
typically combines a printer, fax machine,
copier, and sometimes more in a single
package. ....
....
Be aware that there were several
products that arrived too late for testing or
were not shipping in time for this review.
.... By the time you read this, the
MultiPass 1000 should also be available; it
will add scanning and faxing to and from the
PC to the Canon repertoire. ...." -- PC
Magazine, June 13, 1995.
Applicant, in support of its position, also submitted
both an ad by "Egghead" which, in addition to advertising a
"Scorpio ... single-pass color scanner," offers the "Canon
MultiPASS 1000 6-in-1 Document Processing System!," and an ad by
"TOPS" for a "brother MULTI-FUNCTION MACHINE". Applicant urges
that "since the ’Brother’ advertisement of record [for a printing
and faxing unit similar to applicant’s product] ... as well as
the [other] articles submitted ... show that the industry refers
to ’multi-function’ machines or devices, MULTIPASS (Stylized) is
clearly not necessary to describe these types of products."
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
Ser. No. 74/631,952
8
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is 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 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, 593
(TTAB 1979). Consequently, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark alone
is not the test." In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
In the present case, it is our view that, when applied
to applicant’s "facsimile machines connectable to personal
computers and having printer function, scanner function and
copying function and their accessories[,] namely[,] driver
software therefor," the term "MULTIPASS" immediately describes,
without conjecture or speculation, a significant feature or
characteristic of applicant’s goods, namely, that the printer,
scanner and/or copying functions of its facsimile machines
Ser. No. 74/631,952
9
utilize a multipass method or technique to print, scan and/or
copy rather than, for instance, the "single-pass" scanning
feature found in the "Scorpio" color scanner. The fact that the
"NEXIS" excerpts furnished by the Examining Attorney show that,
from a technological perspective, the term "multipass" can mean
any number of passes other than the single pass employed in "one-
pass" multifunction machines does not mean that such term is
vague, ambiguous or otherwise so indefinite that it fails to
precisely describe a significant feature or characteristic of
applicant’s goods. Like the words "single-pass" or "one-pass,"
there is nothing in the combination of the terms "MULTI" and
"PASS" into the term "MULTIPASS" which is incongruous or
otherwise subject, in the context of multifunction products such
as applicant’s facsimile machines for connection to personal
computers, to a myriad of possible meanings.3 Instead, the
"NEXIS" excerpts unambiguously demonstrate that the term
"MULTIPASS" is an established term in the trade for both a type
of printer and kind of printing. Consequently, as applied to
multifunction facsimile machines which, like applicant’s goods,
scan and copy in addition to printing, such term would retain its
technical meaning irrespective of the actual number of scans or

3 We judicially notice, in this regard, that in relevant part The
American Heritage Dictionary of the English Language (3d ed. 1992) at
1186 defines "multi-" as a prefix signifying "[m]any; much; multiple:
multicolor" and at 1322 defines "pass" as a noun meaning "[a] single
complete cycle of operations, as by a machine or computer program."
It is settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g., Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser. No. 74/631,952
10
passes utilized in the printing or other reproduction processes
performed by the machines.4
It is thus clear that, even among those ordinary
consumer purchasers who may be relatively lacking in
technological sophistication, there is nothing in the term
"MULTIPASS" which requires that purchasers and/or users of
applicant’s goods either utilize imagination, cogitation or
mental processing, or else gather further information, in order
to perceive readily and precisely the merely descriptive
significance thereof. The individual terms comprising the
terminology "MULTIPASS" plainly have a meaning when combined
which ordinary usage would ascribe to those terms in combination,
and the fact that such term is not found in the dictionary is
simply not controlling on the question of registrability. See In
re Gould Paper Corp., 824 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.
Cir. 1987) and In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB
1977). Moreover, the fact that applicant may be the first and
only user of the term "MULTIPASS" in connection with its
multifunction facsimile machines does not justify registration
when, as the "NEXIS" excerpts clearly show, such term is merely
descriptive of the printing, scanning and/or copying functions of

4 While, as applicant argues, the "NEXIS" articles which it furnished
illustrate that competitors in the marketplace for combination or
multi-purpose printing, scanning and copying machines may not need the
term "multipass" to describe such multifunction units, the term
"multipass" is nevertheless used in the trade, as demonstrated by the
"NEXIS" excerpts submitted by the Examining Attorney, to describe a
key characteristic or feature of the printing, scanning and/or copying
features of multifunction facsimile machines.
Ser. No. 74/631,952
11
applicant’s goods. See, e.g., In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983).
Accordingly, because the term "MULTIPASS" conveys
forthwith a significant feature or characteristic of applicant’s
"facsimile machines connectable to personal computers and having
printer function, scanner function and copying function and their
accessories[,] namely[,] driver software therefor," it is merely
descriptive of such goods within the meaning of the statute.
See, e.g., In re Pennzoil Products Co., 20 USPQ2d 1753, 1755-56
(TTAB 1991) [term "MULTI-VIS" held merely descriptive of multiple
viscosity motor oil].
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board