Mailed:
August 31, 2011
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hypres, Inc.
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Serial No. 77455602
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Steven M. Hoffberg, of Ostrolenk Faber LLP for Hypres, Inc.
Lief Martin, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
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Before Bucher, Zervas and Mermelstein, Administrative
Trademark Judges.
Opinion by Zervas, Administrative Trademark Judge:
Hypres, Inc. is the owner of an application1 to
register on the Supplemental Register the term DIGITAL RF
(in standard character form) for the following
International Class 9 goods:
Aeronautical radio communication machines and
apparatus; Broadband radios; Devices for wireless
radio transmission; Marine radio communication
machines and apparatus; Microwave transmission
apparatus for delivering radio programs and
1 Application Serial No. 77455602, reciting a bona fide intention
to use the proposed mark in commerce. Applicant filed an
amendment to allege use, claiming first use anywhere on March 20,
2001 and first use in commerce on December 15, 2004.
THIS DISPOSITION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 77455602
2
messages; Mobile radios; Electronic combiners for
connecting antennas and receivers; Electronic
transmitters and receivers for broadband wireless
communications; Mobile data receivers; Radio
transceivers; Transceivers; Wireless transceiver
radio.
The examining attorney refused registration on the
ground that the proposed mark is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). After filing an amendment to allege use,
applicant amended its application to seek registration on
the Supplemental Register. The examining attorney then
refused registration, under Section 23 of the Trademark
Act, 15 U.S.C. §1091(c), on the ground that applicant's
proposed mark is generic and thus incapable of registration
on the Supplemental Register.2 Both applicant and the
examining attorney have filed briefs.
The examining attorney maintains that the proposed
mark “designates a class of radio apparatus, and antennae
therefore, for transmission of digital information via
2 The examining attorney states that mere descriptiveness under
Trademark Act Section 2(e)(1) is also an issue on appeal, and
devotes approximately three pages of his brief to a discussion of
this issue. Mere descriptiveness is not an issue in this appeal
because applicant seeks registration of its proposed mark on the
Supplemental Register, and applicant's amendment to seek
registration on the Supplemental Register is a concession that
the proposed mark is merely descriptive. Plus Products v. Star-
Kist Foods, Inc., 220 USPQ 541, 543 (TTAB 1983); Evans Products
Co. v. Boise Cascade Corp., 218 USPQ 160, 162 (TTAB 1983). In
any event, applications for registration on the Supplemental
Ser. No. 77455602
3
radio frequency” and is therefore generic. He relies on
dictionary definitions of “digital,” “RF” and “radio
frequency” and the following evidence in his brief, which
presumably is his best evidence:
A patent entitled “Digital RF transmitter
system employing both digital precorrection and
analog pre-correction.” (U.S. Patent No.
6,600,516 (issued Jul. 29, 2003), September 24,
2010, Office action, pp. 22-27);
A patent entitled “Digital RF receiver and
method of dynamically adjusting a multicluster
memory buffer.” (U.S. Patent No. 7,295,805
(issued Nov. 13, 2007), September 24, 2010,
Office action, pp. 28-33);
A patent application entitled “Direct RF
digital transceiver and method,” stating that the
invention relates to “RF transceivers, and more
particularly to a digital RF transceiver that is
able to obtain a digital representation of a
received analog RF input signal and perform
substantially all waveform processing of the
received signal in the digital domain.” (U.S.
Patent Application No. 20090036160, accessed via
www.freshpatents.com, September 24, 2010, Office
action, pp. 42-44);
A patent for antenna systems for wireless
communication devices, stating that certain
embodiments of the antenna system as part of a
wireless device such as a cellular telephone,
smart phone or personal digital assistant include
a digital radio frequency (RF) transceiver, which
uses the antenna system to send and receive
digital voice and/or data signals. (U.S. Patent
No. 7,773,041 (issued Aug. 10, 2010), September
24, 2010, Office action, pp. 34-41, 37);
Register are not subject to Trademark Act Section 2(e)(1).
Trademark Act Section 23(a); 15 U.S.C. § 1091(a).
Ser. No. 77455602
4
An article entitled “The Role of Time-Domain
in the Digital RF World” stating that the article
will explore basic measurement tasks “to
establish the critical nature of time in digital
RF”; and that “The digital RF revolution has
introduced an unprecedented number of useful
devices while lowering their cost and power
consumption.” (www.wirelessdesignasia.com,
October 2, 2009, Office action, pp. 4-5);
Advertising material for a “‘Lon Works®’
transceiver for … digital RF transmission.”
(www.reimesch.de, October 2, 2009, Office action,
pp. 8-9);3
A press release stating that “IntelRa,
headquartered in Seoul, Korea, provides worldwide
market leading digital modules and digital RF
systems for existing and next generation
wired/wireless infrastructure networks for highly
optimized, energy-effective and cost competitive
systems.” (PR Newswire Association, accessed via
Lexis-Nexis, October 2, 2009, Office action,
pp. 10-11);
An article discussing a “superconductor
digital-RF transmitter.” (Journal of Technology
& Science, accessed via Lexis-Nexis, October 2,
2009, Office action, pp. 14-15);
An article discussing an encrypted digital
wireless system, referring to a digital wireless
dual-channel receiver featuring, inter alia,
“digital RF transmission” of audio signals. (AV
3 This web page is from a foreign source. The Board has held
that it “is reasonable to assume that professionals in medicine,
engineering, computers, telecommunications and many other fields
are likely to utilize all available resources, regardless of
country of origin or medium. Further, the Internet is a resource
that is widely available to these same professionals and to the
general public in the United States.” In re Remacle, 66 USPQ2d
1222, 1224 n.5 (TTAB 2002). In this case involving radio
technology specifically directed to scientists and engineers (see
infra), it is reasonable to consider a relevant article regarding
radio technology from an Internet website, in English, from
another country.
Ser. No. 77455602
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Magazine, accessed via Lexis-Nexis, October 2,
2009, Office action, pp. 16-17);
Web page from MIPRO featuring encrypted
receivers having an “encryption key for maximum
security against unauthorized listening, 24-bit
audio quality, true digital RF transmission,” for
receiving signals from wireless microphones.
(www.mipro.com, October 2, 2009, Office action,
pp. 18-19);
Summary of an educational course entitled
“Digital RF Communication Systems.”
(www.besserassociates.com, October 2, 2009,
Office action, pp. 69-71); and
Technical literature describing “Digital RF
Communication Receiver[s]” in general, and
various aspects of “Digital RF” communication
systems.
(http://cp.literature.agilent.com/litweb/pdf/5968
-3579E.pdf, March 3, 2009, Office action, pp. 14
- 46.).
Additionally, we note the article in the record
entitled “Digital RF techniques ease chip integration
challenges” taken from http://www.eetimes.com/, reprinted
at www.design-reuse.com. (October 2, 2009, Office action,
p. 48.) The article states, “Instead of having to struggle
to design and implement analog components, chip designers
can employ digital RF techniques to process RF signals
using familiar and proven tools and processes.” Under the
heading “Digital RF Integration,” the article states
“Digital RF processing has been taking place in stages over
the last decade.” Additionally, it states, “With digital
RF it becomes possible to fully analyze baseband signal
Ser. No. 77455602
6
characteristics …, and a handful of external analog
components enable loop-back tests to reliably assess signal
quality”; and “With each process node shrink and increase
of transistor speed, digital RF processing can accommodate
more and more of the communications spectrum ….”
Further, the webpage at www.electonicproducts.com
entitled “ASGs satisfy digital RF needs” (March 3, 2009,
Office action, p. 9) states,
Suited for testing software defined radio, radar,
WiMAX, WiFi, MIMO, and UWB, AWG5000 series
arbitrary waveform generators (AWGs) let users
generate high-res signals for testing both analog
and digital baseband and IF circuits in mixed-
signal digital RF devices.
Applicant maintains that DIGITAL RF is not generic and
explains that “radio frequency” pertains to signals that
are analog in nature and propagate as electromagnetic
waves; and that “digital” would be perceived by purchasers
as referring to a discrete value. Applicant concludes:
There is thus a significant incongruity between
“digital”, signifying something that can be
expressed discretely in amplitude and time and
can be processed and abstracted according to
established rules (programs), on one hand, and
“RF”, implying something clearly not discrete or
independent on its environment, often defying
attempts to mask its complexity.
***
Because of this incongruity, the composite
mark cannot be “the common or class name for the
goods and/or services.”
Ser. No. 77455602
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Brief at unnumbered p. 3. Applicant also challenges the
relevance of some, but not all,4 of the examining attorney’s
evidence on various grounds, mostly on the basis that the
evidence does not specify a particular product, is for test
equipment, is for a signal generator or is not for radio
equipment. We view this evidence, which does not
specifically state that it involves radio equipment,
relevant to the extent that it discusses digital RF as an
area of technology. This material at a minimum suggests
that an area of technology exits having wide application,
including in connection with applicant’s goods. Also,
applicant states that reliance on material regarding
applicant’s own products “is not evidence against
applicant.” Brief at unnumbered p. 4. To the contrary,
such use by applicant is highly relevant evidence that
applicant itself uses the term in a generic manner and that
applicant’s potential purchasers would likewise consider
the term to be generic.
The Court of Appeals for the Federal Circuit, our
primary reviewing court, has held that “[t]he critical
4 The evidence that applicant challenges was submitted by the
examining attorney in connection with the descriptiveness
refusal; applicant is silent with respect to the evidence
submitted with the final Office action on the genericness
refusal. As noted below, we rely on all of the evidence in the
record.
Ser. No. 77455602
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issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought
to be protected to refer to the genus of goods or services
in question.” H. Marvin Ginn Corp. v. Int'l Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). Ginn explains that:
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus
[category or class] of goods or services at
issue? Second, is the term sought to be
registered or retained on the register understood
by the relevant public primarily to refer to that
genus of goods or services?
Id. The Office bears the burden of establishing
genericness based on clear evidence of generic use. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1835 (Fed. Cir. 1999).
Turning to the first step of the Ginn test, i.e., the
genus of goods, the examining attorney states that “the
mark designates a class of radio apparatus, and antennae
therefore, for transmission of digital information via
radio frequency.” Brief at unnumbered p. 7. He also
states that the proposed mark is “a generic designator for
applicant’s class of goods, namely, digital RF
communication apparatus.” Brief at unnumbered pp. 6 and 8,
respectively. Applicant has not stated in its brief what
it regards the genus of the goods. The identification of
Ser. No. 77455602
9
goods includes a variety of goods, extending from broadband
radios5 to transceivers6 to electronic combiners. We
therefore find that the genus of goods at issue in this
case is defined as “communications equipment for sending
and/or receiving radio frequencies and converting them to
digital form.”
Next, we must determine whether the designation
DIGITAL RF is understood by the relevant purchasing public
primarily to refer to that genus of goods. Ginn, 228 USPQ
at 530. “Evidence of the public's understanding of the
term may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Pierce, Fenner and
5 Merriam-webster.com defines “broadband” as
1: operating at, responsive to, or comprising a wide
band of frequencies
2: of, relating to, or being a high-speed
communications network and especially one in which a
frequency range is divided into multiple independent
channels for simultaneous transmission of signals (as
voice, data, or video).
We take judicial notice of this definition. The Board may take
judicial notice of dictionary definitions. 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).
6 Merriam-webster.com defines “transceiver” as “a radio
transmitter-receiver that uses many of the same components for
both transmission and reception.” We take judicial notice of
this definition of “transceiver.”
Ser. No. 77455602
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Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). We have considered all of the evidence in the
application, including the evidence submitted in connection
with the mere descriptiveness refusal of the proposed mark.
“The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” Ginn, 228 USPQ at 530. In
this case, the relevant public consists of those involved
in the design, operation and purchase of radio apparatus.
Specifically, members of the relevant public include
engineers and scientists in the government and in
commercial wireless communication markets such as satellite
and tactical communications, signals intelligence,
electronic warfare and software defined radio. See
applicant’s brochure and article entitled “Hypres Delivers
Two Digital-RF Receiver Systems to U.S Office of Naval
Research …” at www.reuters.com, submitted with the
Amendment to Allege Use. See also response dated September
1, 2009, stating, “… an ordinary purchaser of these goods,
which is typically an engineer or technician ….”
The evidence of record establishes that “digital RF”
is an abbreviation for “digital radio frequency,” and that
certain radio apparatus have as a feature the ability to
Ser. No. 77455602
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convert radio waves into digital signals. Digital RF
apparatus can convert digital signals to analog (and vice
versa) for transmission over radio frequencies.
Additionally, the evidence reveals references to “digital
RF transmitters,” “digital RF transceivers” and “digital RF
receivers.” There are also references to the “digital RF
revolution,” “digital RF transmission,” “digital RF
techniques,” “digital RF processing,” “digital RF devices”
and “digital RF communication systems.” These references
reflect that “digital RF” is broadly used to identify radio
transmitting and receiving equipment which can convert
digital signals to analog and vice versa. The examining
attorney therefore has established prima facie that the
relevant public would understand that the designation
refers to the genus of goods, namely, communications
equipment which uses digital RF.
Applicant has offered no evidence in response to the
examining attorney’s position that the designation is
generic. As noted, applicant’s arguments dispute only the
relevance and probity of the examining attorney’s evidence.
We are not persuaded by these arguments, and in any event,
we would come to the same conclusion based on the evidence
which applicant does not dispute. We therefore find that
the examining attorney has established prima facie by clear
Ser. No. 77455602
12
evidence that the designation “DIGITAL RF” is generic for
applicant’s goods.
DECISION: The refusal to register is affirmed and
registration of applicant’s proposed mark is refused.
