Net Edge Systems, Inc.

Trademark Trial and Appeal Board

Jan 12, 1998

No. 74447060 (T.T.A.B. Jan. 12, 1998)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JAN 12, 98
Paper No. 12
GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Net Edge Systems, Inc.
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Serial No. 74/447,060
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Michael J. Bevilacqua of Hale and Dorr for applicant.
Edward Nelson, Trademark Examining Attorney, Law Office 107
(Janice O’Lear, Acting Managing Attorney).
_______
Before Hohein, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Net Edge Systems, Inc., by assignment from FiberCom,
Inc., is the owner of an application to register the term "ATM
CONNECT" as a trademark for an "internetworking router."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

1 Ser. No. 74/447,060, filed on October 14, 1993, which alleges a bona
fide intention to use the term.
Ser. No. 74/447,060
2
that, when used in connection with applicant’s goods, the term
"ATM CONNECT" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm 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 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 or services. See 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, 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, the context in which
it is being 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 its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Consequently, "[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).
Ser. No. 74/447,060
3
The sole legally pertinent argument urged by applicant
is that the term "ATM CONNECT" is not merely descriptive of an
internetworking router because the term does not immediately
provide any direct information about the nature or quality of
such a product.2 Specifically, applicant contends that:
Routers are computers which determine the
path of network traffic flow. Such computers

2 Besides raising the meritless assertion that, because "the acronym
’ATM’ has a far more widely recognized meaning, i.e. automatic teller
machine ..., it would not be possible for potential purchasers
confronting Appellant’s mark to immediately perceive anything about
the nature of the goods identified by that mark," applicant also
asserts that it is entitled to registration of its mark inasmuch as
the Patent and Trademark Office has previously registered what
applicant characterizes as a large number of similar marks for similar
goods. Applicant, in particular, has attached to its brief copies of
third-party registrations for such marks and goods as "ATMPORT" for "a
network analyzer capable of testing asynchronous transfer mode (ATM)
networks and equipment"; "ATMOSPHERE" for a "multimedia backbone for
an enterprise network of computers and communications equipment,
namely, a cabinet and back plane, input/output modules and power
supplies therein"; "ATMIZER" for, inter alia, "switches and other
interface units for connecting local area networks with asynchronous
transfer mode networks"; "ATMMAN" for "computer software for managing
data communications networks"; and "ATM EXPRESS" (with a disclaimer of
"ATM") for "communications hardware and software for use in management
of computer networks". Although such evidence, not previously having
been made of record, is untimely under Trademark Rule 2.142(d), the
Examining Attorney in his brief has not objected thereto and has,
instead, treated it on the merits. However, as correctly pointed out
by the Examining Attorney, not only are third-party registrations not
conclusive on the question of mere descriptiveness, but a mark which
is merely descriptive is not registrable simply because other arguably
similar marks appear on the register. See, e.g., In re Scholastic
Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977). Moreover, while
uniform treatment under the Trademark Act is of course desirable, each
case must be decided on its own facts. See, e.g., In re Pennzoil
Products Co., 20 USPQ2d 1753, 1758 (TTAB 1991) and cases cited
therein. Here, we obviously are not privy to the file records of the
third-party registrations furnished by applicant and thus have no way
of knowing whether any of them involved an initial refusal on the
basis of mere descriptiveness or instead issued pursuant to the
provisions of Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
We therefore will not speculate, as applicant insists, that "[t]he
fact that all of these marks have been registered ... clearly
indicates that the Patent and Trademark Office does not consider the
inclusion in a mark of the term 'ATM' to be, in and of itself,
sufficient to support a finding that such a mark is merely
descriptive, even when it is used in connection with networking
products."
Ser. No. 74/447,060
4
may recognize communications protocols such
as ATM, but are not synonymous with them. It
is incorrect to conclude, as the Trademark
Attorney has done, that a term which
describes a communications protocol also
describes a component which is merely capable
of recognizing that protocol, particularly in
view of the fact that no evidence has been
provided to show that the term "ATM" is ever
used in reference to routers per se. The
term "ATM" may suggest that the product to
which it is applied has some connection,
however, tangential, with the protocol it
defines, but it does not describe the
product.
The Examining Attorney, on the other hand, maintains
that even if the term "ATM may not be synonymous with
communications protocols," it nevertheless is the case that, as
shown by the record:
ATM is a recognized acronym for
"asynchronous transfer mode" and identifies
the way in which data communications are
measured and managed on a computer network.
A router serves to CONNECT a communications
network and transmit and forward messages.
.... The ATM feature allows the user of the
goods to "CONNECT" or join the computer
network together.
In view thereof, the Examining Attorney contends that, as applied
to an internetworking router, the term "ATM CONNECT serves
[merely] to describe the very character and attributes of the
goods" since "ATM is a method used to connect and transmit data
between a computer and modem and CONNECT [signifies linking to]
the computer network by means of a router."
The Examining Attorney, in support of his position,
relies upon the dictionary definitions which he made of record of
the following terms:
Ser. No. 74/447,060
5
(i) "ATM," which The Computer Glossary
(6th ed.) at 27 defines in relevant part as
"(Asynchronous Transfer Mode) High-speed
packet switching technique suitable for MANs
and broadband ISDN transmission";
(ii) "asynchronous transmission," which
the same dictionary at 26 lists as meaning
the "[t]ransmission of data in which each
character is a self-contained unit with its
own start and stop bits. Intervals between
characters may be uneven. It is the common
method of transmission between a computer and
a modem, although the modem may switch to
synchronous transmission to communicate with
the other modem. Also called start/stop
transmission" and which the Microsoft Press
Computer Dictionary at 29 defines as "[a]
form of data transmission in which
information is sent one character at a time,
with variable time intervals between
characters; generally used in communicating
via modem. Because asynchronous transmission
does not rely on a shared timer that would
enable the sending and receiving units to
separate characters by specific time periods,
each transmitted character consists of a
number of data bits (the character itself)
preceded by a ’begin character’ signal,
called the start bit, and ending in an
optional parity bit followed by 1, 1.5, or 2
’end character’ signals, called stop bits";
and
(iii) "router," which is listed in the
latter reference work as signifying "[a]n
intermediary device on a communications
network that expedites message delivery. On
a single network linking many computers
through a mesh of possible connections, a
router receives transmitted messages and
forwards them to their correct destinations
over the most efficient available route. On
an interconnected set of local area networks
(LANs) using the same communications
protocols, a router serves the somewhat
different function of acting as a link
between LANs, enabling messages to be sent
from one to another."
In addition, as a further aid to understanding the
issue raised by the terminology and product involved in this
Ser. No. 74/447,060
6
appeal, we have taken judicial notice of dictionary definitions
of the following terms:3
(i) "ATM," which The Computer Glossary
(7th ed. 1995) at 21 lists in pertinent part
as connoting "(Asynchronous Transfer Mode) A
high-speed cell-switching network technology
for LANs and WANs that handles data and
realtime voice and video. It combines the
high efficiency of packet switching used in
data networks, with the guaranteed bandwidth
of circuit switching used in voice networks";
which Newton’s Telecom Dictionary (12th ed.
1997) at 60 defines in relevant portion as
meaning "Asynchronous Transfer Mode. Very
high speed transmission technology. ATM is a
high bandwidth, low-delay, connection-
oriented, packet-like switching and
multiplexing technique .... Usable capacity
is segmented into 53-byte fixed-sized cells,
consisting of header and information fields,
allocated to services on demand. The term
’asynchronous’ applies, as each cell is
presented to the network on a ’start-stop’
basis--in other words, asynchronously ....
(Note that ATM is a connection-oriented
network service.)"; and which Webster’s New
World Dictionary of Computer Terms (6th ed.
1997) at 39 similarly sets forth in pertinent
part as being an "[a]cronym for Asynchronous
Transfer Mode. A network architecture that
divides messages into fixed-size units
(called cells) of small size (53 bytes) and
establishes a switched connection between the
originating and receiving stations. ....
The advantage of breaking all transmissions
into small-sized cells is that the network
can transmit voice, audio, and computer data
over a single line without any single type of
data dominating the transmission. ATM’s
connection-oriented design differs from the
Internet’s connectionless design; unlike the
Internet, ATM enables service providers to

3 It is settled that the Board may properly take judicial notice of
dictionary definitions, including definitions in technical reference
works. See, e.g., In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419,
423 (CCPA 1962); Hancock v. American Steel & Wire Co. of New Jersey,
203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); and 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).
Ser. No. 74/447,060
7
bill by network usage, and is capable of very
high transmission speeds";
(ii) "internetwork," which The Computer
Glossary (7th ed. 1995) at 202 defines as
meaning "[t]o go between one network and
another";
(iii) "internetworking," which Newton’s
Telecom Dictionary (12th ed. 1997) at 344
lists as connoting "[c]ommunication between
two networks or two types of networks or end
equipment";
(iv) "internetworking router," which the
same reference work at 344 sets forth as
meaning, "[i]n local area networking
technology, ... a device used for
communications between networks. Messages
for the connected network are addressed to
the internetwork router, which chooses the
best path to the selected destination via
dynamic routing. .... Also known as a
network router or simply as a router"; and
(v) "router," which The Random House
Personal Computer Dictionary (1996) at 429
lists as meaning "[a] device that connects
two LANs of the same type. Routers are
similar to bridges, but provide additional
functionality, such as the ability to filter
messages and forward them to different places
based on various criteria"; which The
Internet Dictionary (1995) at 172 defines as
connoting "[a] device that physically
connects two networks or a network to the
Internet, converting addresses and sending on
only the messages that need to pass to the
other network"; and which The Computer
Glossary (7th ed. 1995) at 202 sets forth as
signifying "[a] computer system in a network
that stores and forwards data packets between
LANs and WANs. Routers see the network as
network addresses and all the possible paths
between them. They read the network address
in a transmitted message and can make a
decision on how to send it based on the most
expedient route (traffic load, line costs,
speed, bad lines, etc.)."
Upon consideration of the above evidence and arguments,
it is our view that, when applied to an internetworking router,
Ser. No. 74/447,060
8
the term "ATM CONNECT" immediately describes, without conjecture
or speculation, a significant purpose or function of applicant’s
product, namely that it utilizes ATM or asynchronous transfer
mode switching technology to connect computer networks. It is
simply not necessary that a term describe every characteristic,
feature, purpose, function, ingredient, quality or other aspect
of a product in order for it to be merely descriptive. It is
sufficient, instead, if the term, as here, describes one
significant attribute of the product, such as its function or
purpose. See, e.g., In re Venture Lending Associates, 226 USPQ
285, 286 (TTAB 1985); In re Aid Laboratories, Inc., 223 USPQ 357,
358-59 (TTAB 1984); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Plainly, to the computer network engineers, data
communications managers and other technologically sophisticated
individuals who would be responsible for designing and/or
maintaining data communications systems such as ATM networks and
who would be the principal purchasers and/or users of applicant's
internetworking routers, there is nothing in the term "ATM
CONNECT" which is ambiguous, incongruous, indefinite or too
abstract, nor would any imagination, cogitation, mental
processing or gathering of further information be necessary in
order for those persons to perceive precisely the merely
descriptive significance of such term as it relates to a
significant purpose or function provided by applicant’s product.
Such term directly and unequivocally describes, in short, what
applicant's internetworking router principally does, which is to
Ser. No. 74/447,060
9
connect or link computer networks through ATM switching
technology. Clearly, when joined together, the individual terms
comprising the term "ATM CONNECT" have a meaning identical to
that which ordinary usage would ascribe to those terms in
combination. See In re Gould Paper Corp., 824 F.2d 1017, 5
USPQ2d 1110, 1112 (Fed. Cir. 1987).
Accordingly, because the term "ATM CONNECT" conveys
forthwith a significant purpose or function of applicant’s
product, namely, that it connects computer networks using ATM
switching technology, such term is merely descriptive of an
internetworking router within the meaning of the statute. See,
e.g., In re Intelligent Instrumentation Inc., 40 USPQ2d 1792,
1794 (TTAB 1996) [term "VISUAL DESIGNER" is merely descriptive of
computer programs for controlling acquisition of data from
measurement devices for purposes of analysis, display, testing
and automatic control since it immediately describes significant
purpose or function of those programs, which permit new or custom
programming applications to be visually designed].
Decision: The refusal under Section 2(e)(1) is
affirmed.
G. D. Hohein
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board