Nicholas Piggott

Trademark Trial and Appeal Board

Jul 7, 2016

No. 79140372 (T.T.A.B. Jul. 7, 2016)

This Opinion is Not a
Precedent of the TTAB
Mailed: July 7, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nicholas Piggott
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Serial Nos. 79140372 and 79144500
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Brian M. Davis of VLP Law Group LLP for Nicholas Piggott.

Melissa Vallillo, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
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Before Zervas, Wellington, and Heasley, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Nicholas Piggot (“Applicant”) seeks Principal Register registrations for the marks
RADIODNS HYBRID RADIO (in standard characters) and the stylized version
with a design shown below:

Serial Nos. 79140372 and 79144500
2

each for a long list of goods and services in International Classes 9, 16, 38 and 41.1
Applicant has disclaimed HYBRID RADIO in both applications.
The Examining Attorneys responsible for the two applications each took the
position that the term RADIO DNS is merely descriptive of Applicant’s goods and
services. Accordingly, the standard character mark (Application ‘372) was refused
registration on the ground that the entire mark is merely descriptive under Section
2(e)(1) of the Trademark Act (“the Act”), 15 U.S.C. § 1052(e)(1); and the stylized with
a design mark (Application ‘500) was refused registration in the absence of a
disclaimer of the term RADIO DNS, under Section 6(a) of the Act, 15 U.S.C. §1056(a).2
After the refusals became final, Applicant appealed. With respect to the ‘500
Application only, Applicant filed a motion for reconsideration, which was denied by
the Examining Attorney. Applicant filed briefs for both appeals, which were
consolidated.3 The Examining Attorney responsible for Application ‘372, identified

1 Application Serial No. 79140372 (standard character mark), filed August 21, 2013 and
Application Serial No. 79144500 (stylized with design mark), filed on October 17, 2013. Both
applications were filed under Section 66(a) based on international registrations. The
identifications of goods and services in both applications are the same for classes 16 and 38,
and differ slightly for classes 9 and 41. The identifications are extremely lengthy, so for the
sake of brevity, we refer only to the relevant goods and services from the respective classes
that are common to both applications.
2 The Examining Attorney handling Application ‘372 excluded the following goods in
International Class 16 from the descriptiveness refusal: “pens; pencils; erasers; pen and
pencil cases.” See Office Action issued on September 2, 2015.
3 In its appeal brief for the ‘372 Application, Applicant requested that the appeals be
consolidated. In an order dated February 11, 2016, the Board consolidated the appeals.
Unless specified otherwise, all citations in this decision are made to Applicant’s brief filed
in the ‘372 appeal.
Serial Nos. 79140372 and 79144500
3

above was assigned to Application ‘500. She then filed a single brief addressing both
appeals.
The Record
During the prosecution of the ‘372 Application, the Examining Attorney submitted
the following materials in support of her contention that the wording RADIO DNS is
merely descriptive of the identified goods and services:
• Definitions for the terms “radio” and “domain name system (DNS),” with
the latter being defined as “Hierarchical system of names, standards, and
servers that organizes the internet as an aggregate of domains, and enables
the translation of domain names into their unique four-part Internet
Protocol (IP) addresses.”4

• Printouts from a Wikipedia entry for “RadioDNS” describing it as “a method
for a hybrid radio receiver, meaning one receiving the broadcast radio
signal and connected to the Internet, to find Internet address of the
interactive service corresponding to the radio station actually tuned. It uses
the existing Domain Name System to allow the connected radio receiver to
look up web resources based on their broadcast parameters, such as the
station identifier received within the broadcast signal. The project is open
standard, initially created by a series of broadcasters and manufacturers.”5

The same Wikipedia entry also describes “RadioDNS” as “originally created
as a collaborative project between Global Radio (at that time call GCap
Media) and the BBC, to investigate creating a mechanism for linking
Broadcast Radio and IP delivered web services.”6

• Printout from the BBC website discussing “RadioDNS” technology.7

4 Attached to Office Action issued on January 6, 2014. The provided “domain name system
(DNS)” definition was obtained from BusinessDictionary.com
(www.businessdictionary.com).
5 Id.
6 Id.
7 Id.
Serial Nos. 79140372 and 79144500
4

• Printouts from various websites, including Applicant’s, describing
“RadioDNS” – the following are some excerpts:8

“RadioDNS uses the existing Domain Name System to link your FM, HD,
DAB or DAB+ broadcasts with your presence on the internet. We operate
the DNS root server for radiodns.org to a published trust model.”9

“We will link your radio station and your internet domain together in DNS,
and then RadioDNS Hybrid Radio compatible devices will be able [to]
connect automatically to you via the internet.”10

“It’s not new technology. It uses existing DNS – the robust, callable
technology that makes the internet work alongside the information already
being broadcast on FM, DAB, HD and other radio platforms.”11

“That’s where RadioDNS comes in. Put simply, it uses information that is
already broadcast to create a kind ‘unique ID,’ which, by using standard
DNS technology on the internet, can point your radio quickly and simply to
the broadcaster – and from there, to advertise to the radio what this
broadcaster supports.”12

“We at Radio DNS have adopted an open approach to technology
development, which is inspired by the collaborative nature of Internet
standards. We use existing Internet technologies like DNS, but glue them
together in a way that’s helpful for radio. All the data and interaction goes
directly from the listener to the broadcaster, and not via RadioDNS.”13

8 Attached to Office Action issued on September 2, 2015.
9 Id. at p. 4.
10 Id. at p. 5.
11 Id. at p. 7.
12 Id. at p. 9.
13 Id. at p. 20.
Serial Nos. 79140372 and 79144500
5

.14

Many of the same materials described above were submitted by the Examining
Attorney during the prosecution of the ‘500 Application. In addition, the Examining
Attorney attached the following to an Office action in the ‘500 Application:
• Printouts from the “SearchNetworking” website
(www.searchnetworking.com) defining “domain name system (DNS)” as
“…the way that Internet domain names are located and translated into
Internet Protocol addresses.”15

Applicable Law
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods or services for which it is used. In re Bayer Aktiengesellschaft,

14 Id. at p. 26.
15 Attached to Office action dated April 7, 2014, at p. 8.
Serial Nos. 79140372 and 79144500
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488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor Development, 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each
and every specific feature of the goods or services in order to be considered merely
descriptive; rather, it is sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re Chamber of Commerce of the United
States of America, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract,
but in relation to the goods and services for which registration is sought, the context
in which it is being used on or in connection with the goods and services, and the
possible significance that the mark would have to the average purchaser of the goods
and services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979).16
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the goods
and services, the combination results in a composite that is itself merely descriptive.
See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.

16 Applicant’s reliance on the descriptiveness “tests” set forth in No Nonsense Fashions, Inc.
v. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985) is misplaced. See In re Carlson, 91
USPQ2d 1198, 1203 (TTAB 2009).
Serial Nos. 79140372 and 79144500
7

2004) (PATENTS.COM merely descriptive of computer software for managing a
database of records that could include patents, and for tracking the status of the
records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332
(TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation and real estate listing services); In re
Tower Tech, 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publishing Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
Under Section 6(a) of the Act, “[t]he Director may require the applicant to disclaim
an unregistrable component of a mark otherwise registrable,” such as a component
that is merely descriptive under Section 2(e)(1). Failure to comply with a disclaimer
requirement is a basis for refusing registration. See In re Slokevage, 441 F.3d 957, 78
USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005).
Analysis
The evidence of record establishes that the term RADIO DNS (or RADIODNS,
without space between the terms) is merely descriptive of certain identified goods and
services in each of the applications’ Classes 9, 16, 38 and 41. Specifically, the term
Serial Nos. 79140372 and 79144500
8

(and the entire mark with respect to Application ‘372) is merely descriptive of goods
and services, including: “radios” in Class 9, “printer matter, namely, books,
magazines … in the field of radio” in Class 16, “radio broadcasting and internet
broadcasting” services in Class 38, and the “provision of ongoing radio programs” in
a variety of fields in Class 41. The fact that we identify these particular goods and
services does not mean that the term, or entire mark, is not descriptive of other goods
and services listed in the lengthy identifications. Rather, these are the goods in
common to both applications to which the Examining Attorney has referred. We do
bear in mind, however, that the refusal to registration with respect to Application
‘372 does not include “pens; pencils; erasers; pen and pencil cases” in Class 16 (see
Note 2 supra).
Applicant has disclaimed the literal portion, HYBRID RADIO, in both marks.
Applicant does not dispute that this wording is merely descriptive in the context of
the goods and services, and the evidence shows that a “hybrid radio” is a specific type
of radio that “uses existing FM or HD broadcasts as a robust and reliable way to
deliver audio, but presents them like an app, by using additional meta-data (such as
logos and descriptions) delivered over an IP connection (WiFi, 3G, LTE).”17 One
benefit of a hybrid radio, aside from reducing IP data consumption and battery drain
on portable devices, is that “[i]f the listener loses FM reception, he or she can be

17 From “RadioDNS: Hybrid Radio Accelerates” article (www.radioworld.com), attached to
Office action dated April 7, 2014 (Application ‘500) at p. 14.
Serial Nos. 79140372 and 79144500
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switched automatically to streaming until such time as the FM signal improves, and
then automatically switched back to FM.”18
The record further establishes that hybrid radios use the Internet’s “domain name
system” (abbreviated as “DNS”) to locate and translate Internet domain names into
Internet Protocol (IP) addresses. Consequently, in the context of hybrid radios or
services involving hybrid radios, RADIO and DNS are descriptive terms that
immediately convey information about the goods and services. Consumers who are
aware of Applicant’s goods and services will have no trouble understanding the
significance of these terms. As exemplified on Applicant’s website
(www.radiodns.org), “DNS” is not only prefaced with RADIO, but the technology is
touted in a descriptive manner as an integral part of the hybrid radios:19

18 Id.
19 Attached to Office Action issued on September 2, 2015, at p. 4.
Serial Nos. 79140372 and 79144500
10

RADIO and DNS directly describe the type of “radios” in Class 9, i.e., they are
hybrid radios using DNS technology; and further describe the subject matter of the
“printed matter, namely, books, magazines … in the field of radio” in Class 16.
Likewise, in the context of Applicant’s “radio broadcasting and internet broadcasting”
services in Class 38 and “provision of ongoing radio programs” in a variety of fields
in Class 41, consumers will readily understand these terms as describing the type of
communication i.e., radio, and that DNS technology is being employed in the
broadcasting and provision of the radio programs because they the broadcasts are
being linked to the broadcaster’s Internet domain name.
The combination of the two words, RADIO and DNS, does not diminish the
descriptive nature of each word or result in a nondescriptive composite. The lack of
space between RADIO and DNS, i.e., RADIODNS, in Application ‘372, is
inconsequential, as it does not obviate the overall merely descriptive nature of the
two terms. See In re Petroglyph, 91 USPQ2d 1332; In re Carlson, 91 USPQ2d 1198.
Applicant cites to the existence of various third-party registrations containing
either RADIO or DNS in tandem with other terms. These registrations have little
persuasive value. Many of the registered marks are distinguishable and lack
relevance because they contain additional elements that may have been deemed
registrable and thus carry the entire mark, or because they involve goods and services
that differ from those in the involved Applications. In any event, we are not bound by
the past decisions of individual examining attorneys in considering different
applications. Rather, the Board makes its own findings of fact, and that duty may not
Serial Nos. 79140372 and 79144500
11

be delegated by adopting the conclusions reached on past occasions by examining
attorneys. See In re Cordua Rest., Inc., __ F.3d __, 118 USPQ2d 1632, 1635 (Fed. Cir.
2016); In re Loggerhead Tools, LLC, No. 85700986 __ USPQ2d __ (TTAB June 30,
2016); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica
Corp., 231 USPQ 873, 876 (TTAB 1986). In this case, we have ample evidence showing
the two terms RADIO and DNS, and their combination RADIODNS, immediately
impart information about Applicant’s goods and services.
Applicant asserts the record almost exclusively shows “RadioDNS,” being
associated with Applicant’s open source technology. While this may be true, this does
not detract from or diminish the descriptive nature of the term. RADIO DNS will still
be immediately understood by consumers, in the context of the goods and services, as
conveying specific information about the goods and services. Even if Applicant is the
first or only user of the term RADIO DNS, this does not render the term incongruous
or distinctive. See In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); In
re Sun Microsystems, 59 USPQ2d at 1087; TMEP §1209.03(c). Furthermore, in this
regard, we note that there is no claim that the term has acquired distinctiveness
under Section 2(f) and thus that issue is not before us.
Applicant is also correct that to the extent there is any doubt whether the term
RADIO DNS (or RADIODNS or the entire mark in the ‘372 Application) is merely
descriptive of involved goods and services, we should resolve the matter in favor of
Applicant. However, in this case, the record supports our aforementioned findings
and we have no doubt in this regard.
Serial Nos. 79140372 and 79144500
12

Decision: The refusal to register the standard character mark in the ‘372
Application is affirmed with respect to all of the goods and services in International
Classes 9, 16, 38 and 41, excluding “pens; pencils; erasers; pen and pencil cases” in
International Class 16.
The refusal to register the stylized with a design mark in the ‘500 Application for
all identified goods and services in the absence of a disclaimer of RADIO DNS is
affirmed. This decision with respect to the ‘500 Application will be set aside if, within
thirty days of the mailing date of this order, Applicant submits to the Board a proper
disclaimer of RADIO DNS. Trademark Rule 2.142(g). The disclaimer should be
worded as follows:
“No claim is made to the exclusive right to use RADIO DNS apart from the mark
as shown.”