Matsushita Electric Corporation of America

Trademark Trial and Appeal Board

Jul 29, 2002

No. 76021398 (T.T.A.B. Jul. 29, 2002)

Paper No. 14
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Matsushita Electric Corporation of America
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Serial No. 76/021,398
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Morton Amster and Holly Pekowsky of Amster, Rothstein & Ebenstein
for Matsushita Electric Corporation of America.
LaVerne T. Thompson, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
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Before Hohein, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Matsushita Electric Corporation of America has filed an
application to register the term "PALM LINK" for "two-way
radios."1
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
"PALM LINK" is merely descriptive of them.
1 Ser. No. 76/021,398, filed on April 10, 2000, based upon an
allegation of a bona fide intention to use such term in commerce.
Applicant subsequently amended the application to set forth May 27,
2000 as the date of first use anywhere and in commerce of such term.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/021,398
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
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 forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) and 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, contrary to applicant's erroneous
contention,2 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,3 the context in which it is being
2 Specifically, applicant contends in its reply brief that the
assertion by the Examining Attorney in her brief that, in determining
mere descriptiveness, a mark must be considered in relation to the
identified goods "is contrary to the Federal Circuit's mandate,"
citing as authority for its contention In re Hutchinson Technology
Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) and In re DC
Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 396 (CCPA 1982).
3 See, e.g., In re Gyulay, supra at 1010 [appellant's reliance on the
statement in In re DC Comics, Inc., supra, that a "descriptive term
'conveys to one who is unfamiliar with the product its functions or
qualities' ... does not aid appellant's argument that a purchaser of
APPLE PIE potpourri would not know that 'apple pie' refers to the
scent"]; In re Abcor Development Corp., supra at 218 ["[a]ppellant's
proposed abstract test is deficient ... in failing to require
consideration of its mark 'when applied to the goods' as required by
Ser. No. 76/021,398
3
used or is intended to be 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 such use. See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979). Thus, "[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).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361, 1362 (TTAB 1992) and In re TMS Corp. of the
Americas, 200 USPQ 57, 58 (TTAB 1978). The distinction,
furthermore, is often made on an intuitive basis rather than as a
result of precisely logical analysis susceptible of articulation.
See In re George Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
the statute"]; and In re Allen Electric & Equipment Co., 458 F.2d
1404, 173 USPQ 689, 690 (CCPA 1972) ["trademark cases must be decided
on the basis of the identification of the goods as set forth in the
application"].
Ser. No. 76/021,398
4
The Examining Attorney insists that the term "PALM
LINK" is merely descriptive of a characteristic, function,
feature, purpose or use of applicant's two-way radios. Notably,
however, she fails to specify what such aspect of applicant's
goods is, asserting instead the general observations that:
The applicant's mark is a composite
mark, where each term [thereof] is
descriptive of a characteristic, function,
feature, purpose or use of the applicant's
goods. The combination ... does not change
the overall descriptiveness of the mark.
There is nothing incongruous or distinctive
about the combination of these terms as
related to the goods. A combination of
terms, each of which is merely descriptive of
a characteristic or feature of a product or
service, is also merely descriptive. In re
Serv-A-Portion, Inc., 1 USPQ2d 1915, 1916
(TTAB 1986).
As support for her position that the terms "palm" and
"link" are merely descriptive of applicant's goods and that the
combination thereof is also merely descriptive of such goods, the
Examining Attorney relies upon various dictionary definitions4
and excerpts from her searches of the "NEXIS" database.
Specifically, the Examining Attorney maintains that the word
"palm" is merely descriptive of two-way radios because
"applicant's goods are palm sized radios," noting that The
4 Although other dictionary definitions of the words "palm" and "link"
are of record, in her brief "[t]he examining attorney requests that
the Board take judicial notice of the dictionary definitions contained
within the examining attorney's appeal brief" and which "in their
printed form are attached as Exhibit A." Such request is approved
inasmuch as 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); 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); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
Ser. No. 76/021,398
5
American Heritage Dictionary of the English Language (4th ed.
2000) defines "palm" in relevant part as "[a] unit of length
equal to either the width or the length of the hand." The
Examining Attorney also points out that the record contains
numerous examples, of which the following are representative, of
articles excerpted from the "NEXIS" database which, in pertinent
part, refer to various "palm-size" radios (emphasis added):
"It's a cool, palm-size AM/FM radio
that's perfect for a day at the beach." --
Dayton Daily News, January 7, 2001;
"Panasonic two-way radios are designed
for keeping up with friends and family while
you're shopping, hiking or anywhere on the
go. The palm-size radios are designed to be
shock and splash resistant, thanks to
rubberized trim. A private talk feature
allows the radio to be used as a cordless or
cell phone." -- Orlando Sentinel, October 21,
2000;
"Palm-size two-way radios that use the
new Family Radio Service wavelengths have
become as basic to vacations as sunscreen and
picnic baskets." -- San Francisco Chronicle,
July 22, 2000;
"Whatever you want to call them, palm-
size radios have proven popular in the United
States, where families, friends and couples
have embraced them for quick chats at malls,
cottages or on mountain-bike trails: While
easy to use, their chief benefit is no air-
time or roaming fees--unlike cellphones." --
Maclean's, May 22, 2000; and
"Emboldened by a pair of $90 palm-size
two-way radios that would let them find each
other if separated, or even call for help,
they decided to strap on their skis." -- N.Y
Times, April 6, 2000.
In a similar vein, the Examining Attorney argues that
the term "link" is merely descriptive of "a function of two-way
Ser. No. 76/021,398
6
radios" because a "link" is defined, in relevant part, by an
unnamed on-line dictionary as "a connector; anything that
connects two or more things" and is listed by The American
Heritage Dictionary of the English Language (4th ed. 2000) as
meaning, inter alia, "2a. A unit in a connected series of units:
links of sausage; one link in a molecular chain. b. A unit in a
transportation or communications system. c. A connecting
element; a tie or bond: grandparents, our link with the past."
The Examining Attorney additionally observes that the record
contains several articles excerpted from the "NEXIS" database
which, in pertinent part, refer to two-way radio "link(s)." The
following examples are representative (emphasis added):
"The two-way radio link will allow
superintendents to not only locate their
equipment, but also schedule maintenance on
the equipment." -- Grounds Maintenance, June
2001;
"All vehicles within the Yearsley Group
incorporate the latest vehicle tracking
system and a two-way radio link with Head
Office to ensure full communication is
maintained and up-to-date information can be
passed on to clients." -- Frozen & Chilled
Foods, March 1, 2001;
"HEADLINE: Family connections; Two-way
radios link parents, kids" -- Atlanta Journal
& Constitution, August 11, 2000;
"The $1,500 Qualcomm Globalstar phones
are tri-mode telephones, operating in both
analog and digital cellular mode as well as
via satellite. ....
They will be used to supplement two-way
radio communication links in remote locations
within the county, where cellular phone
service is minimal or nonexistent ...." --
San Diego Union Tribune, May 5, 2000; and
Ser. No. 76/021,398
7
"Most of what the crew knows about the
race, it either hears from the two-way radio
link in Tracy's helmet or gets in code from
transmitters buried in the engine and even on
each tire valve." -- St. Louis Post-Dispatch,
May 30, 1999.
In view thereof, and in light of the specimen of use of
applicant's mark and an advertisement for its "PalmLinkï›› 2-Way
Family Radio Service (FRS) Radios," which is also of record, the
Examining Attorney concludes that:
The evidence of record clearly shows the
applicant's goods are two-way palm sized
radios that provide its [sic] users with a
communications link over short distances.
The applicant's specimen ... shows the
applicant's two-way radio to be palmed [sic]
size. It fits in the palm of the user's
hand. The applicant's advertisement ...
shows that the two-way radio provides a
communications link between two users. The
ad states that it provides the "convenience
of instant communications right in the palm
of your hand." It touts one of the features
as a "2-mile talk range," and that "they can
even be used between cars that are traveling
in a group." No great leaps of imagination
or deep thought process or expertise is
necessary to determine the descriptiveness of
the applicant's mark when used with two-way
radios.
We agree with applicant, however, that as stated in
both its initial and reply briefs, "the PALM LINK mark clearly
requires the consumer to expend imagination in order to reach any
conclusion about the nature of the goods" and, therefore, it is
not merely descriptive. In particular, while it is plain from
the record that a significant feature or characteristic of
applicant's product is that it is designed to be held in the palm
of one's hand when in use and thus, like other two-way family
radio service radios, is commonly described as a "palm-size"
Ser. No. 76/021,398
8
radio, we concur with applicant that, as further pointed out in
its reply brief:
There is no evidence that the word
"link" by itself, which is merely used in a
general sense to describe a connection, is
commonly understood to refer to two-way
radios in particular. The few excerpts from
the Lexis/Nexis database presented by the
Examining Attorney which use the word "link"
in connection with two-[way] radios are not
enough to establish that the word is
understood as describing a feature of a two-
way radio. ....
More importantly, even if the terms "palm" and "link"
were each considered to be merely descriptive of a significant
characteristic, feature, purpose, function or use of applicant's
goods as contended by the Examining Attorney, "[i]t does not
follow, however, that because the components of a compound mark
are descriptive, ... the mark in its entirety is descriptive."
Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186
USPQ 557, 559 (TTAB 1975). Instead, the issue of whether a
combination of descriptive terms is registrable depends not on
the descriptiveness of the terms individually but whether the
combination thereof creates a new and different commercial
impression. See, e.g., In re Colonial Stores Inc., 394 F.2d 549,
157 USPQ 382, 384-85 (CCPA 1968). Consequently, it is well
established that otherwise descriptive terms may be combined to
form a composite mark which is not merely descriptive and hence
is registrable. For instance, as a stated in In re Medical
Disposables Co., 25 USPQ2d 1801, 1804 (TTAB 1992):
[T]he mere act of combining does not in
itself render the resulting composite a
registrable trademark. Rather, it must be
shown that in combination the descriptiveness
Ser. No. 76/021,398
9
of the individual words has been diminished,
[such] that the combination creates a term so
incongruous or unusual as to possess no
definitive meaning or significance other than
that of an identifying mark for the goods.
See In re Calspan Technology Products, Inc.,
197 USPQ 647 (TTAB 1977).
Here, as applicant points out in its initial brief, the
combination of the terms "palm" and "link" to form its composite
"PALM LINK" mark "does not identify the products being sold -
two-way radios - with any degree of particularity"; instead, it
creates an incongruous or unusual term which does not possess any
definitive meaning as to any characteristics, functions,
features, purposes or uses of applicant's goods. Specifically,
it is applicant's two-way radios which are palm-sized and not, as
the mark "PALM LINK" literally describes, the communications link
provided by such goods. Consequently, in order for purchasers
and prospective customers of applicant's two-way radios to
ascribe any connotation or meaning to the mark, such as its
suggesting a palm-size radio which, due to its two-way capacity,
serves as a communications link, a multi-stage reasoning process
or imagination is necessary.
Our conclusion that applicant's mark is suggestive
rather than merely descriptive is bolstered by the fact that, as
applicant notes in its main brief, "there is no evidence of
others using the term 'PALM LINK' in connection with two[-]way
radios." See, e.g., In re Wells Fargo & Co., 231 USPQ 116, 119
(TTAB 1986) ["the absence from this record of evidence of any
descriptive use of the term 'Express Savings' by others in the
field of banking reinforces our view that the Examining
Ser. No. 76/021,398
10
Attorney's mere descriptiveness holding is in error"]. None of
the seven excerpts made of record by the Examining Attorney from
her search in the "NEXIS" database of the composite term "palm
link" indicates any third-party use of such term in relation to
two-way radios.
Finally, and in any event, to the extent that there may
be any doubt as to whether applicant's "PALM LINK" mark is merely
descriptive or suggestive of its goods, we resolve such doubt, in
accordance with the Board's practice, in favor of the publication
of applicant's mark for opposition. See, e.g., In re Stroh
Brewery Co., 34 USPQ 1796, 1797 (TTAB 1994); In re Morton-Norwich
Products, Inc., 209 USPQ 791, 791 (TTAB 1981); and In re Gourmet
Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
reversed.