Dana Innovations

Trademark Trial and Appeal Board

Feb 6, 2007

No. 78576297 (T.T.A.B. Feb. 6, 2007)

Mailed: February 6, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dana Innovations
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Serial No. 78576297
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Bruce B. Brunda of Stetina Brunda Garred & Brucker for Dana
Innovations.

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Bucher and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

This is an appeal by Dana Innovations from the
trademark examining attorney’s final refusal to register
SHAREMUSIC as a trademark for “audio equipment, namely,
modules and connectors for interfacing home audio systems
to portable audio players and recorders; speakers, volume
controls, speaker switches, audio source switches,
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78576297
2
amplifiers and tuners.”1
Registration has been refused pursuant to 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 of the
identified goods. Applicant and the examining attorney
filed appeal briefs.
It is the examining attorney’s position that “the mark
SHAREMUSIC describes the purpose of the identified goods.
Audio equipment is commonly used to share music between
various users and mediums, especially in a digital format.”
(First Office action, p. 2). In response to the examining
attorney’s request for information about its goods,
applicant submitted a product brochure for a “Sonance iPort
In-Wall Docking System for iPod™.” The system is described
as consisting of a chassis, back plates and base cradles, a
wall plate, DC power supply, cables and mounting template.
According to the brochure, “[T]he Sonance iPort makes it
easy for the entire family to use the Apple iPod™ to enjoy
their digital music and digital photo collections
throughout the entire home.”

1 Application Serial No. 78576279, filed February 28, 2005, based
on an asserted bona fide intention to use the mark in commerce.
Applicant subsequently filed an Amendment to Allege Use, alleging
first use of the mark anywhere and first use in commerce on
January 3, 2005. The application also covers articles of
clothing, but these goods are not the subject of the refusal.
Ser No. 78576297
3
In support of his position that SHAREMUSIC is
descriptive of applicant’s goods, the examining attorney
has relied on definitions of the words “share” (“to allow
someone to use or enjoy something that one possesses”) and
“music” (“vocal or instrumental sounds possessing a degree
of melody, harmony, or rhythm”) from The American Heritage
Dictionary of the English Language (4th ed. 2000).2
The examining attorney also submitted materials taken
from various Internet websites. In particular, an article
at www.halfbakery.com titled “Mp3 music share” states:
Share your music with others using FM/infrared
headphones

Hiking in the mountains, dancing on the beach –
two or more people could share music from a
portable Mp3 player (like the i-Pod) by
connecting the player to an FM or infrared
transmitter, and companions could wear headphones
designed to pick up the signal.

Another website www.gamesindustry.biz/news, in announcing
the release of the “Digital Audio Essentials” guide, states
that the guide shows persons how to “[d]ownload and share
music without breaking the law.” At the website
www.sbomagazine.com, there is a description of the free
software application “Quartz Audio Master” which states

2 These particular definitions are those quoted by the examining
attorney in his brief, and are presumably those which he believed
to be most apt.
Ser No. 78576297
4
that “the program is intended for people who want to
record, compose, mix, play and share music using a computer
and a sound card.” Finally, in a posting at the website
www.enotalone.com, a writer offers a review of a
“Y adapter” manufactured by Monster Cable:
Though overpriced, if you are looking for a
Y adapter, this is the one to buy. I use this
adapter to share music by headphones and split
the audio of my audio card to headphones and
speakers, so when I want to listen to my
headphones, I leave the speakers off and vice
versa, so I don’t have to crouch behind the
computer.

Applicant, in urging reversal of the refusal to
register, argues that its mark is at most suggestive.
Specifically, with respect to the examining attorney’s
reliance on the definition of the word “share,” applicant
argues:
There is no evidence or allegation that
Applicant’s goods function to communicate music
or any other information to anyone other than the
user of Applicant’s goods. While Applicant’s
goods may allow multiple users to, for example,
hear music broadcast by an FM station, or
recorded in a music file, there is no showing
that the experience is commonly referred to as
“sharing” the broadcast or music file.
(Brief at 13).

Further, applicant contends that its goods are
“distinguishable” in “structure, common function, and use”
from the equipment referred to in the Internet materials
submitted by the examining attorney. (Brief at 15). Thus,
Ser No. 78576297
5
it is applicant’s position that the Internet materials do
not demonstrate that the mark SHAREMUSIC is descriptive of
applicant’s identified goods.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in
connection with which it is used. In re Abcor Development
Corp., 588 F.2d 811 (CCPA 1978). It is not necessary, in
order to find that a mark is merely descriptive, that the
mark describe each feature of the goods or services, only
that it describe a single, significant quality, feature,
etc. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In
re MBAssociates, 180 USPQ 338 (TTAB 1973). Further, it is
well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
If, however, when the goods or services are
encountered under a mark, a multistage reasoning process,
or resort to imagination, is required in order to determine
Ser No. 78576297
6
the attributes or characteristics of the product or
services, the mark is suggestive rather than merely
descriptive. See In re Abcor Development Corp., supra; and
In re Atavio, 25 USPQ 136 (TTAB 1992). To the extent that
there is any doubt in drawing the line of demarcation
between a suggestive mark and a merely descriptive mark,
such doubt must be resolved in applicant’s favor. In re
Atavio, supra at 1363.
The examining attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
In this case, we cannot say, based on the meanings of
the individual words, “share” and “music,” that the
combination SHAREMUSIC is merely descriptive of applicant’s
goods. Purchasers and prospective customers would have to
use some degree of thought or imagination to understand
that applicant’s audio equipment allows persons to “share
music” in the sense that the equipment allows multiple
persons to listen to music from a Mp3 player such as an
Apple iPod™. See In re Southern National Bank of North
Carolina, 219 USPQ 1231 (TTAB 1983) [MONEY 24 suggestive,
not merely descriptive of banking services, namely,
automatic teller machine services].
Ser No. 78576297
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We have also considered the Internet materials
submitted by the examining attorney which show use of the
words “share music” in connection with audio and related
products. However, the use of the words “share music” in
these materials does not persuade us that the term
SHAREMUSIC is a recognized term used to describe the
identified goods. As applicant points out, none of the
articles appear to pertain to its type of audio equipment.
Furthermore, this evidence does not show descriptive use of
the words “share music.” Thus, we cannot conclude, on the
basis of these uses, that the trade and/or customers regard
either “sharemusic” or “share music” as a descriptive term
for applicant’s audio equipment.
In sum, on this record, we cannot conclude that
SHAREMUSIC is merely descriptive of the goods in this case.
As we have noted, if there is doubt about the merely
descriptive character of a mark, that doubt must be
resolved in applicant’s behalf. Accordingly, we resolve
our doubt in favor of publication of the mark, thereby
allowing any party who believes he will be damaged to file
an opposition.
Decision: The refusal to register under Section
2(e)(1) is reversed.