Northrop Grumman Corp.

Trademark Trial and Appeal Board

Aug 26, 2003

No. 76243647 (T.T.A.B. Aug. 26, 2003)

Mailed: Paper No. 11
August 26, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Northrop Grumman Corporation
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Serial No. 76/243,647
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Douglas W. Kenyon of Hunton & Williams for Northrop Grumman
Corporation.
Danielle I. Mattessich, Trademark Examining Attorney, Law
Office 105 (Tom Howell, Managing Attorney).
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Before Chapman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Northrop Grumman Corporation1, based on an application
originally filed by Newport News Shipbuilding and Drydock
Company, seeks registration, on the Principal Register, of
the mark set forth below.
1 Applicant, in its brief, uses Northrup Grumman; USPTO
Assignment Branch records list Northrop Grumman. We have used
the latter.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser. No. 76243647
2
The application, filed on the basis of the original
applicant’s stated bona fide intention to use the mark in
commerce, lists the services for which the mark will be
used as “engineering, testing and design services in the
field of naval shipbuilding; research and development in
the field of naval shipbuilding.” Northrop Grumman
Corporation is now the applicant, following its acquisition
of the original applicant and its parent; Northrop Grumman
Newport News is now the designation for a division of
Northrop Grumman Corporation. Brief, p. 3 and Assignment
Branch records at Reel/Frame 2528/0572.
The original examining attorney issued a priority
office action requiring only that applicant submit a
disclaimer of the words VIRGINIA ADVANCED SHIPBUILDING AND
CARRIER INTEGRATION CENTER, reasoning that they will be
perceived as descriptive when used in conjunction with
applicant’s identified services. See Sections 2(e)(1) and
Ser. No. 76243647
3
6 of the Lanham Act, 15 U.S.C. §§ 1052(e)(1) and 1056. In
support of the action, the examining attorney attached
dictionary definitions of each of the words in the phrase.
Applicant argued against a perceived refusal to
register its entire mark as descriptive, following which
the examining attorney made clear in a final office action
that the entire mark was not being refused and only a
disclaimer was required. Applicant filed an appeal and
requested reconsideration, offering to disclaim VIRGINIA
and INTEGRATION CENTER but arguing that the remainder of
the phrase was at worst suggestive and therefore
registrable. The proffered disclaimers were rejected and
the request for reconsideration denied. The appeal was
resumed and has been briefed. Oral argument was not
requested.
We must determine whether the examining attorney has
made of record sufficient evidence to establish that the
phrase VIRGINIA ADVANCED SHIPBUILDING AND CARRIER
INTEGRATION CENTER, if used, will be perceived as merely
descriptive when used in conjunction with applicant’s
services. In assessing the evidence and the likely
perception of the term as used by applicant, we do so from
the point of view of the average or ordinary consumer for
applicant’s services. See In re Omaha National
Ser. No. 76243647
4
Corporation, 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir.
1987). Moreover, whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods or services for which registration of the term is
sought, the context in which it is being used (or will be
used) on or in connection with those goods or services, and
the possible significance that the term would have to the
average purchaser because of the manner of its use. See In
re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
In addition to the dictionary definitions, the
examining attorney has made of record 9 of 13 articles
retrieved by a search in a computerized database for the
term VASCIC, each of which includes not only the term
VASCIC but also the phrase VIRGINIA ADVANCED SHIPBUILDING
AND CARRIER INTEGRATION CENTER. Finally, the examining
attorney has made of record reprints of web pages from
three different web sites: first, there are pages from the
Virginia Advanced Shipbuilding and Carrier Integration
Center Board (http://dls.state.va.us/lrc/authorities/
VAShipbldg.htm); second, there are pages from a web site of
applicant’s (http://www.northgrum.com/tech_cd/nn/
nn_vascic.html); and, third, there is a page from “Pilot
Online Special Report: Peninsula Projects”
Ser. No. 76243647
5
(wysiwyg://Main.102/http://www.pilotonlin…ects/newportnews/
vascic/main_vascic.html).
In refusing registration, the examining attorney has
argued that the entire phrase VIRGINIA ADVANCED
SHIPBUILDING AND CARRIER INTEGRATION CENTER is descriptive
and must be disclaimed because “Virginia” is a geographic
term and “immediately conveys to consumers the geographic
place where the services originate”; that “advanced”
immediately conveys to consumers the sophisticated nature
of applicant’s services; that “shipbuilding and carrier”2
immediately conveys the focus of applicant’s services as in
the field of naval shipbuilding; and that “integration
center” immediately conveys that applicant’s services
involve use of a specialized facility for integrating the
technological systems of naval ships. The examining
attorney further argues that the meanings of these terms do
not change when the words are strung together in a phrase,
so that the phrase in its entirety is readily understood
without need of considered thought or supposition. In
addition, the examining attorney argues that the
Commonwealth of Virginia’s General Assembly has
2 There is no dispute between applicant and the examining
attorney, and the record in any event reveals, that “carrier” is
a reference to aircraft carriers and would be so perceived as
such by prospective purchasers of applicant’s services.
Ser. No. 76243647
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specifically defined, in legislation, the nature of an
“Advanced Shipbuilding and Carrier Integration Center.”
Brief, p. 4, quoting from material attached to the denial
of applicant’s request for reconsideration.
It is clear from the record that there is only one
VIRGINIA ADVANCED SHIPBUILDING AND CARRIER INTEGRATION
CENTER in the Commonwealth of Virginia; that it was created
as a joint effort of the Commonwealth of Virginia, the city
of Newport News and the Newport News Shipbuilding and
Drydock Company (since acquired by applicant); and that it
is a research and development center. As noted on
applicant’s web site, “[t]he center serves as a proving
ground for advanced shipbuilding and operation technologies
before they are introduced on ships,” and “is a state-of-
the-art facility [for] develop[ing] new technologies for
aircraft carriers, submarines and other advanced
shipbuilding programs.” Indeed, applicant acknowledges in
its brief that as operator and manager of the VASCIC
facility it “is charged with developing new technologies
for aircraft carriers and ships.”
Applicant does not dispute the nature of the center or
its creation as a joint venture, but notes that it has “the
exclusive right to operate and manage the VASCIC facility.”
Applicant asserts several reasons why VIRGINIA ADVANCED
Ser. No. 76243647
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SHIPBUILDING AND CARRIER INTEGRATION CENTER is not
descriptive of the services identified in its application
and which are provided at or through its Newport News,
Virginia facility. First, it asserts that the phrase is
comprised of words that, individually, “suggest, but do not
describe, the services.” Second, applicant asserts, in
essence, that there is no physical shipbuilding or carrier
integration done at the VASCIC center, where applicant
offers “technology services… not the actual shipbuilding
services,” and getting from one to the other is the “mental
leap” that “makes the mark suggestive rather than
descriptive.” Third, applicant argues that there are no
competitors who would need to use the phrase, so “there is
no policy reason to refuse registration.”
As the record demonstrates, the Commonwealth of
Virginia, in enacting legislation to fund the development
of the center now operated and managed by applicant,
denominated it as the VIRGINIA ADVANCED SHIPBUILDING AND
CARRIER INTEGRATION CENTER. It has been referred to by
that name in news stories about the center’s development
and operation. It is referred to by that name on
applicant’s web site. The phrase describes applicant’s
services insofar as it denominates the facility from which
the services are provided. Because the facility is reputed
Ser. No. 76243647
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to be a state-of-the-art facility for research, design,
systems integration and other engineering services, the
identification of applicant’s services as provided from or
through that center serves to identify an attribute of the
services that would be significant to prospective
purchasers of the identified services. Such purchasers
would have no need to engage in any mental processing to
understand that when VIRGINIA ADVANCED SHIPBUILDING AND
CARRIER INTEGRATION CENTER is used in conjunction with
“engineering, testing and design services in the field of
naval shipbuilding [and] research and development in the
field of naval shipbuilding” it will designate a
significant feature or attribute of the services, i.e.,
stat-of-the-art services from a public-private partnership
in Virginia.
We disagree with applicant’s conclusion that the
individual words, which form the phrase VIRGINIA ADVANCED
SHIPBUILDING AND CARRIER INTEGRATION CENTER, are suggestive
rather than descriptive. Moreover, we see nothing
incongruous or ambiguous about the resulting whole, when
the words are joined, that would render the whole
suggestive rather than descriptive.
We also disagree with applicant’s conclusion that the
terms “shipbuilding” and “carrier integration” are not
Ser. No. 76243647
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descriptive because the services it provides through the
VASCIC facility do not include the actual physical building
of a ship that is designed, or physically integrating
systems that would be developed and tested by such
services.3
Any competitor of applicant that is or will be
providing advanced engineering, testing and design
services, or research and development services in the field
of naval shipbuilding, should be free to identify such
services as emanating from an ADVANCED SHIPBUILDING AND
CARRIER INTEGRATION CENTER. Though applicant, as the
manager and operator of the only such facility in Virginia,
may be the only defense contractor that will be able to use
VIRGINIA in conjunction with ADVANCED SHIPBUILDING AND
CARRIER INTEGRATION CENTER, the addition of VIRGINIA to the
longer phrase does not render the whole non-descriptive.
Cf. Washington Speakers Bureau Inc. v. Leading Authorities
Inc., 33 F.Supp.2d 488, 49 USPQ2d 1893, 1899 (E.D. Va.
1999) (“Thus, were a lecture agency to adopt the name ‘The
Speakers Bureau,’ it would be unable to protect this name
as a trademark because the phrase "The Speakers Bureau" is
3 Indeed, the record makes clear that applicant’s Newport News,
Virginia facility actually builds naval ships and is engaged in
carrier integration. It merely happens at a different part of
the shipyard from where the VASCIC center is located.
Ser. No. 76243647
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generic and merely indicates the general nature of services
a lecture agency provides. In the instant case, however,
the addition of ‘Washington’ to the phrase ‘Speakers
Bureau’ converts the generic name to a descriptive mark.”).
Thus, even though applicant may be correct in asserting
that there will be no competitor that will need to use the
entire, specific phrase VIRGINIA ADVANCED SHIPBUILDING AND
CARRIER INTEGRATION CENTER, it does not follow that the
phrase is therefore non-descriptive. See In re Alpha
Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB
2002) (“it is well settled that the fact that an applicant
may be the first or only user of a term does not justify
registration of the term where the only significance
projected by the term is merely descriptive”).
Decision: The requirement under Section 6 of the
Trademark Act, 15 U.S.C. § 1056, for a disclaimer of
VIRGINIA ADVANCED SHIPBUILDING AND CARRIER INTEGRATION
CENTER apart from the mark as a whole, is affirmed.
The refusal of registration in the absence of a
disclaimer will be set aside and the mark published for
opposition if applicant, no later than 30 days from the
mailing date hereof, submits an appropriate disclaimer.
See Trademark Rule 2.142(g).