OSRAM GmbH

Trademark Trial and Appeal Board

Jul 25, 2013

No. 79109383 (T.T.A.B. Jul. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re OSRAM GmbH
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Serial No. 79109383
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Milton Oliver of Oliver Intellectual Property LLC for OSRAM GmbH.

Christine Martin, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
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Before Bucher, Gorowitz, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
OSRAM GmbH has applied for extension of protection to the United States of
its International Registration of the mark BoxLED in standard character form for
the following goods:
Apparatus for lighting, namely electric lamps and
luminaires; lighting apparatus and systems featuring
light emitting diodes (LEDs), namely LED modules,
power supplies and wiring, in International Class 11.1

1 Application Serial No. 79109383 filed on February 1, 2012 under Trademark Act § 66(a),
15 U.S.C. § 1141f(a), based on International Registration No. 1087801 dated May 4, 2011.
Serial No. 79109383

2

The trademark examining attorney refused registration under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark
merely describes the goods. When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
The question before the Board is whether the mark BoxLED, viewed in its
entirety, merely describes the goods identified in the application. “A term is merely
descriptive if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used." In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). If a mark is merely descriptive of any
item listed in an identification of goods, it is proper to refuse registration. In re
Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d 1097, 10
USPQ2d 1879 (Fed. Cir. 1989).
With respect to the meaning of LED, applicant has stated in its application:
LED appearing in the mark means or signifies or is a
term of art for Light Emitting Diode in the relevant trade
or industry or as applied to the goods/services listed in the
application.2
The examining attorney has made of record the following definition of LED:
Short for light-emitting diode. An electronic
semiconductor device that emits light when an electric
current passes through it. They are considerably more
efficient than incandescent bulbs, and rarely burn out.
LEDs are used in many applications such as flat-screen
video displays, and increasingly as general sources of
light.3

2 Applicant’s response of June 28, 2012.
3 Definition from , submitted with Office action of March 22, 2012.
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With respect to the designation “box,” applicant has stated:
“Box” does not describe the goods, but suggests one of
many possible installation contexts for the goods. … The
composite BoxLED is a coined term, originated by
Applicant, which has not, to Applicant’s knowledge, been
used by any other party in the lighting industry.4
We note initially applicant’s objection that “The Examiner has dissected this
unitary mark into the component “LED” and the component “Box”…. According to
the decision In re Hester Industries, Inc., 230 USPQ 797 (TTAB 1986), such
dissection is not appropriate, and assessment of whether or not a mark is
descriptive should be made on the basis of the unitary mark.”5 We see nothing
improper in the examining attorney’s consideration of the individual meanings of
the terms “Box” and “LED,” and Hester Industries does not indicate otherwise. In
Hester Industries, the Board approved a similar approach to analysis of a mark,
saying, “While we do not disagree with the method by which the Examining
Attorney reached his conclusion, as applicant did, we differ as to the result.” 230
USPQ at 798. The Board continued in a footnote:
It is perfectly acceptable to separate a compound mark
and discuss the implications of each part thereof with
respect to the question of descriptiveness provided that
the ultimate determination is made on the basis of the
mark in its entirety. An Examining Attorney's discussion
of each word separately in order to show that the term in
its entirety is descriptive is not the same thing as
dissecting a mark.

4 Applicant’s response of June 28, 2012.
5 Applicant’s brief at 5.
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Id. at fn 5. Numerous cases acknowledge that analysis of the parts of the mark is a
usual technique for determining whether the whole of the mark is merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed.
Cir. 2004); In re Petroglyph Games Inc., 91 USPQ2d 1332 (TTAB 2009); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Tower Tech, Inc., 64 USPQ2d 1314
(TTAB 2002); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re
Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996).
The examining attorney, in arguing that applicant’s mark is merely
descriptive, relies upon an internet advertisement of applicant relating to a product
identified as “BoxLED BACK.” The advertisement states, in part:
BoxLED BACK
For Box Signs and Thin Advertising Panels

The BoxLED Back is the ideal LED solution to light your
box sign. Image is everything, designed to make your
sign stand out amongst your competition.
…
The BoxLED Back lighting system ships in 31.5 foot
chains consisting of 16 modules each with three ultra
bright LEDs….

Features:
…
- For single sided or double sided box signs
…
Application Information
- Backlighting of single and/or double sided box signs
- Indirect lighting, cove lighting
- Signage and illuminated advertising6

6 OSRAM SYLVANIA webpage at , submitted with Office action of March
22, 2012.
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The examining attorney has also submitted third-party advertisements that refer to
a certain type of illuminated signage as “light box” and “light box sign.”7 We note in
particular an advertisement that uses “BOX SIGN” interchangeably with “light box
sign.”8 That such signs may be illuminated by use of LEDs is clear: “BOX SIGNS
CAN HAVE LED LIGHTS NEON LIGHT OR FLORESCENT”;9 see also references
to goods described as “New Crystal advertising light box, led advertising sign, LED
light box…. Slim advertising light box\led light box\indoor led light box\LED
SIGN\advertising light box!... double side led light box, led advertising sign, led
light double side A4 size, free shipping.”10
The evidence of record indicates that applicant’s goods are suitable for use as
the illumination source for box signs and light boxes. In other words, use of the
goods in such fixtures is a function or purpose of the goods as described in In re
Gyulay, 3 USPQ2d at 1009. A term that identifies the function or purpose of a
product may be merely descriptive. In re Central Sprinkler Co., 49 USPQ2d 1194
(Comm’r Pat. 1998); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006); In re
Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006). The examining attorney takes the
position that when the mark is considered in this context, customers would likely
interpret the mark as descriptive of a type of LED or LED module, i.e., a module

7 See websites at and , submitted with Office
action of August 2, 2012.
8 See website at , submitted with Office action of August 2, 2012.
9 Id.
10 Listing at , submitted with Office action of August 2, 2012.
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that is suitable for use as the light source for a “box” type of illuminated display
such as a box sign or a light box.
Applicant argues that “without reference to extraneous evidence, the term
BoxLED would not suggest to a prospective purchaser that there is only a single
context of use for the LED product, or what specifically that single context of use
should be.”11 This argument is unpersuasive. If the goods are such that they would
be marketed as appropriate for use in particular types of light fixtures such as
luminaires, then that is an appropriate context in which to consider the meaning of
the mark to a typical customer. It is settled that “the question is not whether
someone presented with only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the goods or services are
will understand the mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d at 1316-17. Moreover, it does not matter that applicant’s goods
may have many uses other than as lighting sources for light boxes or box signs. It
is not necessary that a term describe all of the purposes, functions, characteristics,
or features of a product; it is enough if the term describes one significant function,
attribute, or property. In re Oppedahl, 71 USPQ2d at 1371; see also In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001).
Applicant argues that “The Examiner has not produced any evidence that
other parties have used the term BoxLED, or have any need to do so, in order to

11 Applicant’s brief at 5 (emphasis in original).
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accurately describe their products.”12 Had the examining attorney shown that
competitors use the actual term BoxLED on a widespread basis, such a showing
would likely indicate that the mark had become the generic name of the goods.
That is not the standard required of the examining attorney. Moreover, “the fact
that the entire combination of terms sought to be registered is not used in that
exact combination by third parties is not conclusive that the combination is not
merely descriptive.” General Foods Corporation v. Ralston Purina Company, 220
USPQ 990, 993 (TTAB 1984). Accordingly, applicant’s argument is not persuasive.
Applicant points out that its identification of goods makes no reference to
boxes or box signs, and states that “Assumptions concerning the likely use of the
goods are merely speculation, and are not an appropriate basis for a refusal to
register.”13 But the examining attorney had no need to speculate that the goods
could be used in box-type fixtures, because applicant’s own advertising touted such
a purpose; and because the application states that “’box’… suggests one of many
possible installation contexts for the goods.”14 Applicant argues that the Board
should not rely on the examining attorney’s internet evidence, because internet
materials are changeable, while the Board’s decision as to registration “may have
ramifications for a period of ten to twenty years.”15 The possibility that a mark may
lose its descriptive significance with the passage of time is not a valid reason for

12 Id. at 6.
13 Id. at 7.
14 Applicant’s response of June 28, 2012.
15 Applicant’s brief at 7.
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registering a descriptive term today. Section 2(e)(1) is written in the present tense.
As for the admissibility of internet materials as evidence, the probative value of
such materials may always be questioned. However, the Board frequently allows
such materials as evidence in ex parte proceedings, even over an objection, if they
are identified by the full addresses of the submitted web pages and the dates they
were downloaded. (The examining attorney’s internet evidence is so marked.) In
the present case, we find the internet evidence to be probative of the fact that
certain expressions are used in the market and the manner in which they are used.
We also find that the materials obtained from applicant’s website and those of third
parties provide useful information about the nature and purpose of the applicant’s
goods. See TBMP § 1208.03.
Our review of the full record indicates that when applicant’s LED modules
are marketed as suitable for use in box-type lighting fixtures, the mark BoxLED
would immediately convey to the average customer information relating to the
nature and purpose of the goods. Accordingly, we find that applicant’s mark is
merely descriptive of applicant’s goods within the meaning of Trademark Act
Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
Decision: The refusal to register is affirmed.