Listen, Inc.

Trademark Trial and Appeal Board

Sep 22, 2006

No. 76570324 (T.T.A.B. Sep. 22, 2006)

Mailed: September 22, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Listen, Inc.
________

Serial No. 76570324
_______

J. Andrew McKinney, Jr. of Jones, Tullar & Cooper, P.C. for
Listen, Inc.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Drost, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Listen, Inc., a Massachusetts corporation, has applied
to register the mark SOUNDCHECK, in standard character
form, on the Principal Register for the following goods, as
amended:
Quality control electro-acoustic performance
testing equipment for use in a manufacturing
environment, namely, computer hardware,
microphones and computer software all for use in
measuring audio transducer performance and
electronic databases featuring quality control
information on loudspeakers, microphones,
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 76570324
2
telephones, hearing aids and audio systems
recorded on computer software.1

The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant contends its proposed mark is just
suggestive and does not immediately convey to consumers the
nature of the goods. More specifically, applicant argues
that the “phrase ‘sound check’ is most often used in
performance art settings where, for example, a singer might
utter the phrase ‘check’ into a microphone to determine
whether audience members can hear, and so the phrase is
descriptive of an activity”; that, however, applicant’s use
of SOUNDCHECK on its goods “is intended to be suggestive of
that activity” (brief p. 2); and that consumers confronted
with applicant’s mark would not immediately recognize the
specific nature of its goods. Applicant argues in addition
that because Registration No. 1538144 for the mark
SOUNDCHECK, cited by the examining attorney as a bar to

1 Application Serial No. 76570324 was filed January 16, 2004,
asserting July 12, 1995 as the date of first use of the mark
anywhere and in commerce.

Ser No. 76570324
3
registration in the first Office action, is registered on
the Principal Register, applicant’s mark must be deemed
suggestive or distinctive.2
The Examining Attorney maintains that the mark merely
describes a feature or quality of the goods. In
particular, the examining attorney argues that “soundcheck”
is a common term used in connection with determining sound
or acoustic quality; that applicant’s goods include
equipment used to examine the quality and test the sound
performance of audio equipment as well as electronic
databases featuring information about such tests; that
applicant’s goods thus are used to conduct “soundchecks;”
and that, as a result, the mark SOUNDCHECK merely describes
a function, feature or use of the identified goods. With
her Office actions, the examining attorney submitted
dictionary definitions of the words “check” and “acoustic,”
and made of record articles retrieved from the Nexis
database and Internet web pages, including web pages from
applicant's web site. Certain of these dictionary
definitions as well as excerpts from the referenced

2 Registration No. 1538144 was issued on May 9, 1989 for the mark
SOUNDCHECK for “magazines directed to individuals working with
technical support systems – namely, audio, video, lighting and
related areas.” Section 8 affidavit accepted; Section 15
affidavit acknowledged. The refusal to register under Section
2(d) of the Act was withdrawn in the final Office action issued
on July 19, 2005.
Ser No. 76570324
4
articles and web pages are reproduced below (emphasis
added):
…At the other end of the Hayward warehouse/music
studio, band mate Andrew “A.J.” Freschi leans
toward a microphone for a sound check. (Alameda
Times-Star, July 12, 2004)
The apprentices learn how to focus lights, hook
up microphones, set up and operates sound boards
and perform soundchecks. (The Santa Fe New
Mexican, April 17, 2004)
Joking that the previous song had been the band’s
soundcheck for the evening, Landreth then took to
the microphone for the first time with the title
track to his 1995 release, “South of I-10.” (The
Boston Globe, March 19, 2004)
In the meantime, courts do what they can to
protect the audio record: daily sound checks in
every courtroom, spot-checks to make sure
recorded information is being captured on disk
and using backup…. (The Sunday Oregonian,
February 8, 2004)
A stop by the soundboard after the set revealed
that Jagged Edge didn’t even make it to
soundcheck. That might have helped. (The
Houston Chronicle, December 29, 2003)
Although I haven’t been an Apple iPod owner from
its inception, I have been a big fan starting
with the 3rd generation 30gb model. I followed
that up with my current 4th generation model. I
wasn’t that excited about the mini or the photo
versions, but the newer shuffle did intrigue me…I
found myself needing to adjust volume up or down
every other song sometimes. This is strange
since iTunes has a sound check feature built in.
Go figure. (www.the-gadgeteer.com)
The DVD-LC also features a 5.1-channel Dolby
Digital system sound check and interactive on-
screen directions for both cleaning and
soundchecks in 8 languages….
(www.crutchfield.com)
Ser No. 76570324
5
The examining attorney also submitted the following
information from the Internet website of applicant and one
of its affiliates:
With SoundCheck, you are no longer constrained by
the limitations of proprietary hardware-based
systems for testing headphones, microphones,
loudspeakers, telephone handsets, hearing aids
and associated subcomponents. SoundCheck is a
modern, Windows®-based system designed for both
R&D and Production testing. Utilizing powerful
measurement algorithms, SoundCheck can perform
comprehensive tests, e.g. frequency response,
phase, sensitivity, distortion, rub and buzz,
impedance, directional characteristics and
Thiele-Small parameters in a matter of seconds.
(www.listeninc.com)
LISTEN Inc. was formed by Steve Temme who has
been associated with Bruel & Kjar for several
years. Using his electroacoustics knowledge and
experience, Steve has developed this highly
versatile, software-based system for the
production line testing of loudspeakers,
microphones, hearing aids, telephones and other
acoustic transducers….SoundCheck has been
optimized for fast production testing, and
performs very rapid frequency response and
distortion tests, typically in less than 2 to 4
seconds….(www.bksv.com)
In addition, the examining attorney recites several
definitions of the term “check” and “acoustic.” Based upon
these definitions, “check” may be defined, inter alia, as
“to examine the accuracy, quality, or condition of” or “an
examination to check accuracy, quality, or condition.”
Ser No. 76570324
6
“Acoustic” may be defined, inter alia, as “relating to
sound or hearing.”3
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/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 feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the

3 The examining attorney cites to the Compact Oxford English
Dictionary (www.askoxford.com) for these definitions.
Ser No. 76570324
7
mark alone is not the test." See In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
It is settled that excerpts from articles taken from
the Nexis database are competent evidence of how a mark may
be perceived. See In re Shiva Corp., 48 USPQ2d 1957 (TTAB
1998). It is further settled that material obtained from
the Internet is acceptable in ex parte proceedings as
evidence of potential public exposure to a term. See In re
Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). In the
instant case, the evidence made of record by the examining
attorney, which consists of Nexis articles and Internet
material, establishes that, as applied to applicant's
goods, the term SOUNDCHECK would immediately describe,
without conjecture or speculation, a significant
characteristic or feature of the goods, namely, that they
are used to examine the acoustic performance of
loudspeakers, microphones, and audio systems recorded on
computer software. In other words, prospective purchasers,
upon confronting the term SOUNDCHECK used in connection
with applicant's goods, would immediately perceive that a
significant feature or characteristic of its goods is to
evaluate, i.e. check, the acoustic, i.e. sound, qualities
of various goods that generate, reproduce, transmit or
amplify sound. Applicant’s mark merely describes goods
Ser No. 76570324
8
used to perform a “sound check” on various audio related
goods.
Applicant’s assertions regarding the third-party
registration for the mark SOUNDCHECK, previously cited as a
bar to registration under Section 2(d) of the Act, are of
little probative value in determining the registrability of
the mark at issue in this case. First, we note that the
goods identified in that registration are completely
different from the goods identified in the application at
issue herein. Further, and as often noted by the Board,
each case must be decided on its own set of facts, and we
are not privy to the facts involved with these
registrations. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”] See also In re Best Software Inc., 58 USPQ2d 1314
(TTAB 2001). While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based upon the record before us, whether applicant's mark
is registrable.
We further note applicant’s argument that its mark
evokes the activity of a singer checking the volume of a
Ser No. 76570324
9
microphone prior to a performance; and that the mark thus
is suggestive, rather than merely descriptive, of its
goods.” Applicant’s Brief, p. 2. Applicant's argument
regarding the possible connotation of its mark, however, is
unpersuasive in view of the above-referenced Nexis and
Internet excerpts demonstrating that SOUNDCHECK immediately
conveys a significant quality or feature of applicant’s
acoustic performance testing equipment.
Accordingly, we find that applicant's mark is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.