National Semi-conductor Corp.

Trademark Trial and Appeal Board

Jan 18, 2002

No. 75607525 (T.T.A.B. Jan. 18, 2002)

1/18/02
EWH
Paper No. 21

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re National Semiconductor Corporation
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Serial No. 75/607,525
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Veronica Colby Devitt of Thelen Reid & Priest L.L.P.

Gina M. Fink, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Simms, Seeherman and Hanak, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge.

National Semiconductor Corporation (applicant) seeks
to register in typed drawing form WEBPAD for “wireless
handheld computers for accessing a global computer
network.” The intent-to-use application was filed on
December 15, 1998.
The Examining Attorney has refused registration on
the basis that applicant’s mark, as applied to
applicant’s goods, is merely descriptive pursuant to
Section 2(e)(1) of the Trademark Act.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not
request a hearing.
Ser. No. 75/607,525

A mark is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of the relevant goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed.
Cir. 1986). In order to be held merely descriptive, a
term need not immediately convey information about all of
the significant qualities or characteristics of the
relevant goods or services. A term is merely descriptive
if it immediately conveys information about “one of the
qualities” of the relevant goods or services. Gyulay, 3
USPQ2d at 1010.
There is no dispute that the two individual
components of applicant’s mark -- namely, “web” and “pad”
-- are, taken individually, merely descriptive of
applicant’s “wireless handheld computers for accessing a
global computer network.” In this regard, reference is
made to the following statements made by applicant at
pages 1 and 2 of its Motion for Reconsideration:
“Applicant admits that the prefix of its mark refers to
the World Wide Web. Applicant has also acknowledged that
the suffix is an acronym for Personal Access Device. The
only issue on appeal and on this Motion
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Ser. No. 75/607,525

for Reconsideration is: Whether WEBPAD, a composite of
two descriptive terms, creates a unitary mark with a
separate non-descriptive meaning.” Reference is also
made to page 1 of applicant’s brief where applicant makes
the following statement: “The only issue to be determined
on appeal is: Whether WEBPAD a composite of two
descriptive terms creates a unitary mark with a separate
non-descriptive meaning.”
In arguing that WEBPAD is not merely descriptive
when applied to wireless handheld computers for accessing
a global computer network, applicant makes essentially
five arguments. First, applicant argues at page 5 of its
brief that there are many different meanings for the term
“pad” both as a word and as an acronym. Applicant is
entirely correct. The Examining Attorney’s own evidence
shows that when used as an acronym, PAD can mean a number
of different things besides “personal access device.”
For example, the acronym PAD also refers to “pressure
actuated device” and “projected availability date.”
However, what applicant fails to understand is that the
mere descriptiveness of a term is not judged in the
abstract, but rather is judged in relation to the goods
or services for
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Ser. No. 75/607,525

which applicant seeks registration. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Omaha National Corp., 819 F.2d 1117, 2
USPQ2d 1859, 1861 (Fed. Cir. 1987). When the term PAD is
used in connection with wireless handheld computers for
accessing a global computer network, purchasers of such
devices would not think of a pressure actuated device,
nor would they think of the other definitions of the word
“pad” suggested by applicant at page 5 of its brief such
as “sheets of blank paper fastened together at one edge”
or a “guard for the leg and ankle in sports.” When the
term PAD is used in connection with wireless handheld
computers for accessing a global computer network, the
term PAD would immediately be viewed as an acronym
meaning “personal access device.” Likewise, when used in
conjunction with wireless handheld computers for
accessing a global computer network, the term WEB would
immediately bring to mind this global computer network.
Indeed, as previously noted, applicant has conceded at
page 1 of its Motion for Reconsideration “that the prefix
of its mark refers to the World Wide Web.”
Second, at page 7 of its brief applicant cites the
case of In re Colonial Stores, Inc., 394 F.2d 549, 157
USPQ 382
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Ser. No. 75/607,525

(CCPA 1968) where the Court held that the mark SUGAR &
SPICE was not merely descriptive of bakery goods because
it also had a second meaning, namely, a portion of a well
known children’s nursery rhyme. However, when applied to
wireless handheld computers for accessing a global
computer network the term WEBPAD has no double meaning.
It readily informs consumers that applicant’s goods are
personal access devices to access the web (i.e. the World
Wide Web).
Third, applicant argues at page 2 of its brief that
it was the first company to use the term WEBPAD, and that
the vast majority of stories made of record by both
applicant and the Examining Attorney use WEBPAD in a
trademark manner to refer to applicant’s product.
However, there are a number of stories where the term
WEBPAD is used in a descriptive manner to refer to the
products of other companies. The mere fact that
applicant was the first user of the term WEBPAD and that
most uses of this term refer to applicant’s product does
not mean that the term is not merely descriptive in that
it forthwith conveys an immediate idea of the qualities
or characteristics of applicant’s goods. If applicant is
of the belief that most users of the term WEBPAD have now
come to view this term as a trademark
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Ser. No. 75/607,525

referring to applicant’s particular wireless handheld
computers for accessing a global computer network,
applicant is entirely free to seek to register this term
pursuant to the provisions of Section 2(f) of the
Trademark Act by proving that the term WEBPAD had
achieved a secondary meaning referring primarily to
applicant’s particular products.
Fourth, at pages 6 and 7 of its brief, applicant
argues that competitors do not need to use WEBPAD to
describe their products because, according to applicant,
there are other descriptive terms such as “set-top
boxes”; “internet access devices”; “mobile computers”; or
“wireless web access devices.” The fact that there are
other terms which may be descriptive of applicant’s goods
does not mean that WEBPAD is not likewise merely
descriptive of applicant’s goods.
Finally, applicant argues at pages 4-8 of its reply
brief that there are “numerous recent third-party
registrations in Class 9 that comprise the prefix WEB
with a descriptive term. These registrations are no less
descriptive of their associated goods than is applicant’s
mark.” Three comments are in order. First, while we
will not discuss individual third-party registrations, it
appears
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Ser. No. 75/607,525

clear that numerous of these third-party registrations
involve marks which are at most suggestive and not merely
descriptive of their respective goods. Second, even if
some of these third-party registrations involve marks
which were merely descriptive and which were registered
without resort to the provisions of Section 2(f), this
does not mean that applicant is likewise entitled to
register a mark which is merely descriptive of its
goods. While the PTO strives for uniform treatment, it
does not always achieve this goal. Moreover, it need
hardly be said that this Board is not bound by the
actions of Examining Attorneys if they allowed third-
party registrations which were merely descriptive to be
registered without resort to Section 2(f). Finally,
while applicant does not articulate this argument, if
applicant at a later time were to argue that the
existence of these third-party registrations consisting
of various WEB marks somehow has caused consumers to
view WEB marks, including WEBPAD, as trademarks, this
argument would be without merit. Consumers are totally
unaware of what is registered with the PTO. See Smith
Brothers v. Stone Manufacturing, 476 F.2d 1004, 177 USPQ
462, 463 (CCPA 1973) (“But in the absence of any evidence
showing the extent of
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Ser. No. 75/607,525

use of any of such marks or whether any of them are now
in use, they [the third-party registrations] provide no
basis for saying that the marks so registered have had,
or may have, any effect at all on the public mind ...”).
One concluding comment is in order. At page 8 of
its brief and again at page 8 of its reply brief,
applicant correctly argues that any doubt on the issue of
mere descriptiveness should be resolved in its favor.
Suffice it to say that based upon this record, we have no
doubt that consumers seeing the term WEBPAD on wireless
handheld computers for accessing a global computer
network would immediately understand that the term WEB
refers to this global computer network (which applicant
admits) and that the term PAD would be understood as an
an acronym meaning personal access device (again, a point
which applicant admits).
Decision: The refusal to register is affirmed.

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