Orincon Industries, Inc.

Trademark Trial and Appeal Board

Sep 14, 2004

No. 76259604 (T.T.A.B. Sep. 14, 2004)

Mailed: 9/14/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Orincon Industries, Inc.
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Serial No. 76259604
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John M. Kim of Gray Cary Ware & Freidenrich for Orincon
Industries, Inc.
Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Hairston, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The application involved herein was filed on May 18,
2001, by Orincon Industries, Inc. (a California
corporation) to register on the Principal Register the mark
TRAC SYSTEM for goods and services ultimately identified as
follows:
“integrated hardware and software
components consisting of an inductive
loop detector, an inductive loop signal
analyzer, a local controller, a central
processing unit with a portal to the
Internet, a telephone, fiber optic, or
wireless communications interface, and
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76259604
2
traffic management software for
analyzing signals from inductive loops
to determine the identification, speed,
and location of vehicles, tracking the
position of vehicles, and providing
access to traffic statistics” in
International Class 9;
“maintenance of computer hardware” in
International Class 37; and
“leasing of computers, computer
hardware and computer software and
maintenance of computer software” in
International Class 42.
The Examining Attorney has made final her refusal of
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark,
TRAC SYSTEM, when used on applicant’s International Class 9
goods, is merely descriptive thereof.1
Applicant appealed, and both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
Essentially, the Examining Attorney’s position is that
the term “TRAC” is the phonetic equivalent of “track,”
which is defined as “awareness of something occurring or
passing” in The American Heritage Dictionary (Third Edition
1992) and (also in that dictionary) “tracking” is a
1 The Examining Attorney initially refused registration under
Section 2(e)(1) as to all three classes of goods and services,
but she withdrew the refusal as to the two classes of services in
the final Office action dated May 13, 2002.
Ser. No. 76259604
3
transitive verb based on the verb “track”; that the term
“SYSTEM,” is defined as “1. A group of related components
that interact to perform a task. …” in the Tech
Encyclopedia,2 and “is generic for computer goods” (brief,
p. 4); that the combination of the two descriptive words
does not create a new non-descriptive commercial
impression; and that the applied-for mark is “merely
descriptive of a feature of the [identified] goods, which
are a computer system comprised of hardware and software
used to manage traffic and track the location of vehicles
and access traffic statistics” (brief, p. 4). The
Examining Attorney argues that applicant’s computer
hardware and software systems “will be sold to
sophisticated purchasers such as traffic planners and
traffic managers” (brief, p. 5); and that “the purchasers
are specialists in the traffic management field who will
know immediately that the goods are used to observe and
track traffic and traffic patterns” (brief, p. 6).
In support of this position, the Examining Attorney
submitted the definitions referred to above; photocopies of
several third-party registrations in which the term “track”
is disclaimed; photocopies of several excerpted articles
2 The Examining Attorney’s request that the Board take judicial
notice of the definition of the word “system” is granted.
Ser. No. 76259604
4
retrieved from the Nexis database which refer to tracking
software; and printouts of a page from applicant’s web site
showing that applicant refers to its “system” which, inter
alia, “tracks vehicles.”
Applicant essentially contends that, as shown on its
web site, the term “TRAC” does not relate to “track” but
instead is an acronym for “Traffic Reporting And Control”;
that a multi-step process and a degree of imagination and
thought is involved in order for relevant purchasers to
understand applicant’s goods (“integrated hardware and
software components” including “traffic management
software”); that the mark does not “immediately” convey
direct information regarding applicant’s goods; that
applicant’s mark is suggestive rather than merely
descriptive; and that any doubt as to the question of
whether a mark is merely descriptive should be resolved in
applicant’s favor. Applicant submitted printouts of two
pages from its web site.
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services].”
(Emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
Ser. No. 76259604
5
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978). See also, See In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and
In re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990),
aff’d, unpub’d, Fed. Cir. February 13, 1991.
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term (or phrase) is being used or is intended to
be used on or in connection with those goods or services,
and the impact that it is likely to make on the average
purchaser of such goods or services. See In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987); In re Abcor, 200 USPQ at 218; and In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
Viewing this record in its entirety, we find that the
evidence submitted by the Examining Attorney does not
establish a prima facie case that the mark TRAC SYSTEM is
Ser. No. 76259604
6
merely descriptive of applicant’s identified goods,
“integrated hardware and software components consisting of
an inductive loop detector, an inductive loop signal
analyzer, a local controller, a central processing unit
with a portal to the Internet, a telephone, fiber optic, or
wireless communications interface, and traffic management
software for analyzing signals from inductive loops to
determine the identification, speed, and location of
vehicles, tracking the position of vehicles, and providing
access to traffic statistics.”
As to the relevant purchasers (or users) of these
goods, the Examining Attorney has stated that the
purchasers (or, perhaps more accurately, the users) of
applicant’s goods are traffic planners and traffic
managers, and they are specialists who are sophisticated
purchasers/users. Applicant’s web site includes
information on this point, for example, “ORINCON’s
technology accomplishes all this by using inductive loops
already embedded in roads and highways in most
industrialized nations. … ORINCON takes these loops to
their full potential with TRAC and Traffic Reporter.” We
find that the relevant purchasers of the goods are
governmental entities, and the users are traffic planners
and traffic managers.
Ser. No. 76259604
7
None of the excerpted stories retrieved from the Nexis
database show use of the words “TRAC SYSTEM”; and the fact
that various companies utilize some type of computer
program to track inventory or assets or vehicles, etc. does
not establish that the words “TRAC SYSTEM” immediately and
forthwith describe a significant feature of applicant’s
integrated hardware and software components to the relevant
purchasers and users. Rather, purchasers and users would
have to exercise a multi-stage reasoning process to
determine any specific descriptive meaning of TRAC SYSTEM
in relation to applicant’s goods--first perceiving “trac”
to be the phonetic equivalent of “track” and then
ascertaining that applicant’s integrated hardware and
software components identify and track traffic and/or
vehicles. See In re Sundown Technology Inc., 1 USPQ2d 1927
(TTAB 1986); and In re Tennis in the Round Inc., 199 USPQ
496 (TTAB 1978).
In sum, the record before us does not establish that
the term TRAC SYSTEM has a merely descriptive meaning
readily recognized by the relevant purchasers/users with
regard to the identified goods. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054 (TTAB 1989); In re Intelligent Medical Systems
Inc., 5 USPQ2d 1674 (TTAB 1987); and In re TMS Corporation
Ser. No. 76259604
8
of the Americas, supra. That is, the mark TRAC SYSTEM does
not immediately evoke an impression or an understanding of
a feature and/or purpose of applicant’s integrated hardware
and software components. Rather, we conclude that the mark
TRAC SYSTEM requires several steps of thought to determine
any significant feature and/or purpose therefrom.
Moreover, competitors would still be free to utilize the
words “tracking system” in a non-trademark manner.
Finally, if doubt exists as to whether a term is
merely descriptive, as it does in this case, it is the
practice of this Board to resolve doubt in favor of the
applicant. See In re The Stroh Brewery Co., 34 USPQ2d 1796
(TTAB 1995). In this way, anyone who believes that the
term is, in fact, descriptive, may oppose and present
evidence in an inter partes proceeding on this issue to the
Board.
Decision: The refusal to register the mark for the
International Class 9 goods as merely descriptive under
Section 2(e)(1) is reversed. (The application will proceed
to publication for opposition in International Classes 9,
37 and 42.)