GinganetCo., Ltd.

Trademark Trial and Appeal Board

Jun 30, 2006

No. 76508364 (T.T.A.B. Jun. 30, 2006)

Mailed:
June 30, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ginganet Co., Ltd.
________

Serial No. 76508364
_______

Marilyn Matthes Brogan of Frommer Lawrence & Haug LLP for
Ginganet Co., Ltd.

Sonya B. Stephens, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Hohein, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Ginganet Co., Ltd., a Japanese Corporation, seeks
registration on the Principal Register of the mark
TELEPORT for goods recited in the application, as amended,
as follows:
“telecommunications apparatus and electronic
information transmission apparatus, namely,
telephone apparatus, wire communication
apparatus, carrier equipment, broadcasting
apparatus, wireless communication apparatus,
applied radio apparatus, telemetering and
remote control apparatus, audio frequency
apparatus, and component parts thereof
computer hardware for use in
telecommunications and electronic
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76508364
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information transmission; software for use
in database management, for use in remote
education, for use in linguistic education,
for use with spreadsheets and for use in
word processing; blank and pre-recorded
magnetic data carriers, magnetic card
apparatus and magnetic cards for use in
telecommunications and electronic
information transmission” in International
Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register such designation based upon the ground that the
term is merely descriptive when considered in relation to
applicant’s identified goods, i.e., that the term TELEPORT
immediately informs potential purchasers about the features
and functions of applicant’s goods.
Both applicant and the Trademark Examining Attorney
have fully briefed this appeal, but applicant did not
request an oral hearing before the Board. We affirm the
refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes

1 Application Serial No. 76508364 was filed on March 31, 2003
based upon applicant’s allegation of a bona fide intention to
use the mark in commerce.
Serial No. 76508364
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or uses of the goods or services with which it is used or
is intended to be used. A mark is suggestive, and
therefore registrable on the Principal Register without a
showing of acquired distinctiveness, if imagination,
thought or perception is required to reach a conclusion on
the nature of the goods or services. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the mark in relation to the
goods or services for which registration is sought, the
context in which the mark is used or is intended to be
used, and the significance that the mark is likely to have
on the average purchaser encountering the goods or services
in the marketplace. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Serial No. 76508364
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Applicant maintains that while the involved mark may
impart some information to the prospective purchasers about
applicant’s goods, and hence may well be suggestive of its
goods, it is not descriptive of them. Applicant argues
that when prospective consumers view this mark, they would
need to exercise some imagination or thought to obtain any
direct message about the electronic goods offered by
applicant — that the term “Teleport” does not forthwith
convey any immediate idea of the various electronic goods
offered by applicant:
[W]hile the mark TELEPORT might be
reasonably thought to suggest that the
product to which it applies has to do with
telephones, or telecommunication, or the
like; nonetheless, the mark requires the
consumer to exercise imagination in order to
draw a conclusion as to the nature of
Applicant’s electronic goods.

Applicant’s appeal brief, p. 5.
In further support of its position, applicant argues
that the record does not show that any of applicant’s
competitors “either want or need to use the term in
question in order to describe their electronic goods.”
Applicant contends that this term is not merely descriptive
because “the mark is just as likely to conjure up some
arbitrary connotation” that is completely unrelated to
applicant’s goods. “For example, TELEPORT might bring to
Serial No. 76508364
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mind transportation, time travel, or various services
available only in the realm of science fiction.”
Applicant’s appeal brief, p. 6.
By contrast, the Trademark Examining Attorney begins
with the dictionary definitions of the word “teleport” made
of record, namely, that it refers to a “telecommunications
network that provides access to communications satellites
and other long distance media; telecommunications hub”2 and
“a satellite communication system that beams data into
outer space.”3 She goes on to argue as follows:

2 www.infoplease.com
3 www.netlingo.com.
We also take judicial notice of the relevant portions of
additional entries from three other sources corroborating those
definitions placed into the record by the Examining Attorney:
teleport (1) A project developed by the Port Authority of
New York and New Jersey, Merrill Lynch & Company, and the
Western Union Corporation to provide the New York City
metropolitan area with satellite communications.
(2) A generic reference to a facility capable of
transmitting and receiving satellite signals for other
users. JONES CABLE TELEVISION AND INFORMATION INFRASTRUCTURE
DICTIONARY (4th Ed. 1994).
Teleport: ►n. 1 a center providing interconnections
between different forms of telecommunications, esp. one
that links satellites to ground-based communications.
[ORIGIN: 1980’s: originally the name of such a center in
New York.] 2 an act of teleporting. THE NEW OXFORD AMERICAN
DICTIONARY (2001).
teleports The definition written by Gary Stix in the
August 12, 1986 issue of COMPUTER DECISIONS reads, “High
bandwidth telecommunications distribution systems that
allow major local users to obtain local, private services
and long distance services. The most notable example is
the New York Teleport,” which is located on Staten Island.
Teleports traditionally consist of two things – a fiber
optic / coaxial cable network around a city and a
Serial No. 76508364
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[A]pplicant’s goods are broadly-identified
telecommunications and electronic goods.
Such goods are identified so broadly that
they could clearly be used to either access
or comprise a “teleport” (i.e., be used to
access or comprise a “telecommunications
network that provides access to
communications satellite and other long
distance media” and/or telecommunications
hub” and/or be used to access or comprise “a
satellite communication system that beams
data into outer space”).

Trademark Examining Attorney’s appeal brief, p. 7.
Accordingly, she concludes that applicant’s proposed mark
describes a characteristic, function and/or purpose of the
identified goods.
The dictionary entries contained within the record do
contain references to “teleportation” as a hypothetical
method of transportation in which matter is dematerialized
at one point and recreated at another. However, in the
context of applicant’s “telecommunications apparatus and
electronic information transmission apparatus …,” the
appropriate meaning we focus on is related to satellite
communications. In this setting, teleports are the ground-
based side of the global satellite network. They combine

collection of nearby satellite antennas. The cable network
collects transmissions from larger customers and takes them
to the antennas for shipping to and form distant offices.
Teleport companies are now more successful as local
communications companies than they are as long distance
gateways…. NEWTON’S TELECOM DICTIONARY (19th Ed. 2003).
Serial No. 76508364
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the power of geosynchronous satellites positioned in space
with high-speed terrestrial fiber.
Applicant’s goods are also identified broadly enough
that based solely upon the limited record in this case
(e.g., dictionary definitions), it is reasonable to assume
that, in reality, the various components identified in the
instant application (e.g., apparatus, equipment, media and
software) would be compatible with the needs of enterprises
operating the ground-based portion of global satellite
networks.
Moreover, we note that there are no limitations on the
channels of trade for applicant’s goods. The classes of
customers of applicant’s broadly-identified
“telecommunications apparatus and electronic information
transmission apparatus,” specifically “computer hardware
for use in telecommunications and electronic information
transmission,” could well include companies that operate
teleports. Applicant’s highly technical goods, on their
face, certainly do not appear to be the type of electronic
products that would be marketed to ordinary retail
consumers. In fact, quite the opposite appears to be true.
The type of electronic products listed most likely would be
directed to highly-trained and knowledgeable persons in the
Serial No. 76508364
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telecommunications field. To such persons, the term,
TELEPORT, would “forthwith convey an immediate idea” of the
function, nature or characteristics of the involved goods.
This is a more precise piece of information than simply
that “the mark TELEPORT might be reasonably thought to
suggest that the product to which it applies has to do with
telephones, or telecommunication, or the like.”
Applicant’s brief, p. 5. Moreover, seeing the word
TELEPORT in connection with sophisticated
telecommunications components is most unlikely to conjure
up “transportation, time travel, or various services
available only in the realm of science fiction”
(applicant’s brief, p. 6) in the minds of
telecommunications professionals.
The prototypical services of commercial companies that
operate teleports include audio/video production and
postproduction, requiring “broadcasting apparatus”;
distance learning, requiring “software for use in remote
education”; remote measuring using satellite technology,
requiring “telemetering and remote control apparatus”; the
resale of bandwidth on satellite transponders, fiber
circuits or microwave networks, requiring “telephone
apparatus, wire communication apparatus, carrier equipment,
Serial No. 76508364
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broadcasting apparatus, wireless communication apparatus”;
up-linking and down-linking with the accompanying
amplification, modulation, encryption and related
processes, requiring “software for use in electronic
information transmission”; and format conversion, requiring
“software for use in database management, for use in
linguistic education, for use with spreadsheets and for use
in word processing; blank and pre-recorded magnetic data
carriers, magnetic card apparatus and magnetic cards for
use in telecommunications.”
It is highly likely that any vendors of
“telecommunications apparatus and electronic information
transmission apparatus, namely, telephone apparatus, wire
communication apparatus, carrier equipment, broadcasting
apparatus, wireless communication apparatus, applied radio
apparatus, telemetering and remote control apparatus, audio
frequency apparatus, and component parts thereof computer
hardware for use in telecommunications and electronic
information transmission; software for use in database
management, for use in remote education, for use in
linguistic education, for use with spreadsheets and for use
in word processing; blank and pre-recorded magnetic data
carriers, magnetic card apparatus and magnetic cards for
Serial No. 76508364
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use in telecommunications and electronic information
transmission” who are competing with applicant should also
be free to use the words “teleport” in a highly-descriptive
manner in connection with their goods.
Accordingly, following the urging of applicant,
irrespective of which test we employ to divine the line
between suggestive marks and merely descriptive terms4 --
the “imagination test,” the query about whether or not one
needs to exercise “mature thought or follow a multi-stage
reasoning process,” or a “competitive need” test, etc., --
we find that this term is merely descriptive of the
identified goods.
Decision: The refusal to register based upon Section
2(e)(1) of the Lanham Act is hereby affirmed.

4 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION, § 11.71 (4th ed. 2001).