QUAL-COMM Inc.

Trademark Trial and Appeal Board

May 1, 2000

No. 75183251 (T.T.A.B. May. 1, 2000)

Paper No. 12
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/1/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re QUALCOMM Incorporated
________
Serial No. 75/183,251
_______
Russell B. Miller, Brian S. Edmonston and Thomas R. Rouse for
QUALCOMM Incorporated.
Anil V. George, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Hohein, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
QUALCOMM Incorporated, a Delaware corporation, has filed an
application for registration of the mark “PUREVOICE” for a
“computer hardware signal compression and decompression
vocoders, namely, voice coders and decoders sold as components
of telephones; computer software for signal compression and
decompression.” in International Class 9.1
Registration has been finally refused under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that,

1 Serial No. 75/183,251, filed on October 17, 1996, claiming use
since September 1994 and first use in interstate commerce on September
15, 1996.
Serial No. 75/183,251
2
when used in connection with applicant’s goods, the mark
“PUREVOICE” is merely descriptive of them.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an oral
hearing. We reverse the refusal to register.
It is well settled that a term or phrase is considered to
be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely
descriptive is determined not in the abstract but in relation to
the goods for which registration is sought, the context in which
it is being used on those goods and the possible significance
that the term would have to the average purchaser of the goods
because of the manner of its use. See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979).
However, a mark is suggestive if, when the goods are
encountered under the mark, a multi-stage reasoning process, or
the utilization of imagination, thought or perception, is
required in order to determine what attributes of the goods or
services the mark indicates. See, In re Abcor Development
Serial No. 75/183,251
3
Corp., supra at 218, and In re Mayer-Beaton Corp., 223 USPQ
1347, 1349 (TTAB 1984). There is often a thin line between a
suggestive mark and a merely descriptive designation. In real
life, it is sometimes difficult to divine the exact metes and
bounds separating the highly suggestive mark from the merely
descriptive term, forcing tribunals in this subjective area to
rely heavily upon their collective intuitions. See, In re
Atavio, 25 USPQ2d 1361, 1362-1363 (TTAB 1992); In re TMS Corp.
of the Americas, 200 USPQ 57, 58 (TTAB 1978); and In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
In support of his position, the Trademark Examining
Attorney has submitted excerpts from a dozen LEXIS/NEXIS®
articles where “PureVoice” or “pure voice” appear. We note that
three of these “PureVoice” references are to PCS2 handsets
incorporating applicant’s “PureVoice” codec.3 The other nine
stories do indeed use the terms “pure” followed immediately by
the word “voice.” However, as applicant points out, in each of
these articles, the writer is distinguishing “voice-only”
transmissions from combinations of voice-data-text-video, etc.,
or from voice-over-frame transmissions, or to refer to the
development of real-time Internet Protocol (IP) telephony.
Accordingly, we find that this part of the record does nothing

2 “PCS” is short for “Personal Communications System,” the term in
this country for a “Personal Communications Network,” or “PCN.”
3 The word “Codec” appearing in the LEXIS/NEXIS® articles, is a
shorthand expression for a coder/decoder algorithm like applicant’s.
Serial No. 75/183,251
4
to support the refusal for descriptiveness made by the Trademark
Examining Attorney.
The Trademark Examining Attorney has also made of record
and relies upon definitions of the following terms:
(a) the word “pure” which The American Heritage®
Dictionary of the English Language, Third Edition, defines
in relevant part as an adjective meaning: “1. Having a
homogeneous or uniform composition; not mixed: pure
oxygen. 2. Free from adulterants or impurities: pure
chocolate. 3. Free of dirt, defilement, or pollution; 4.
Free of foreign elements. 5. Containing nothing
inappropriate or extraneous: a pure literary style. … 11.
Music. Free from discordant qualities: pure tones. 12.
Linguistics. Articulated with a single unchanging speech
sound; monophthongal: a pure vowel…”
(b) the word “voice” which The American Heritage®
Dictionary of the English Language, Third Edition, defines
in relevant part as a noun meaning: “1. a. The sound
produced by the vocal organs of a vertebrate, especially a
human being. b. The ability to produce such sounds. 2. A
specified quality, condition, or pitch of vocal sound: a
hoarse voice; the child’s piping voice. 3. Linguistics.
Expiration of air through vibrating vocal cords, used in
the production of vowels and voiced consonants. 4. A
sound resembling or reminiscent of vocal utterance: the
murmuring voice of the forest. 5. Music. a. Musical
sound produced by vibration of the human vocal cords and
resonated within the throat and head cavities. b. The
quality or condition of a person's singing: a baritone in
excellent voice. c. A singer: a choir of excellent voices.
d. One of the individual parts or strands in a
composition: a fugue for four voices; string voices
carrying the melody. Also called voice part…”; and,
(c) the word “vocoder” which Newton’s Telecom Dictionary
defines in relevant part as “…(Voice coders) use a speech
analyzer to convert analog waveforms into narrowband
digital signals. They are used in digital cellular phones
… to transmit digitally encrypted speech signals over
normal narrowband voice communications channels. These
devices are used to reduce the bandwidth requirements for
transmitting digitized speech signals…”
Serial No. 75/183,251
5
Based upon this evidence, the Trademark Examining Attorney
contends that the term “PUREVOICE” is merely descriptive
because:
As the Applicant’s goods are used, exclusively, to carry
voice traffic over telephone networks and global computer
information networks, the wording “PUREVOICE” merely
describes a characteristic of the relevant goods…
(Trademark Examining Attorney’s appeal brief, p. 3).
The combined wording “PUREVOICE” is a laudatory phrase that
is descriptive of the Applicant’s voice transmission
hardware and software. In the context of the relevant
goods, the telecommunications and dictionary evidence of
record indicate that “PUREVOICE” is synonymous with wording
such as “clear,” “distortion-free,” “noiseless,” “clean,”
“perfect,” “unadulterated,” and “noiseless,” (sic) which
wording the Applicant concedes is descriptive of the
relevant goods. (Trademark Examining Attorney’s appeal
brief, pp. 4 - 5).
On the other hand, applicant maintains that “PUREVOICE” is,
at worst, suggestive of applicant’s goods:
Applicant’s PUREVOICE mark suggests the clarity and quality
of voice transmissions … The term “pure” is typically
associated with materials, compounds, and other tangible
products, and not with the signal processing arts. Thought
and imagination are therefore required to determine the
nature and function of applicant’s goods. (Applicant’s
brief, p. 5).
Further, applicant argues that at no time during the course of
prosecuting this application has the Trademark Examining
Attorney provided any substantial evidence that the mark is
descriptive. On this point, we agree that the Office has failed
to make a prima facie case for descriptiveness.
The goods as set forth in the identification of goods
involve both integrated circuits (hardware embedded with complex
compression and decompression software) that are critical
Serial No. 75/183,251
6
components of wireless telephone handsets, as well as similar
compression and decompression software, but which is apparently
not restricted to use in wireless telephone handsets. This
listing could clearly include, for example, PureVoice™ encoder
technology that efficiently compresses and decompresses voice
data for computer users on the Internet.
Keeping the above distinctions in mind, it also appears
that the Trademark Examining Attorney has put forth two somewhat
different theories for mere descriptiveness. The first
paragraph from the Trademark Examining Attorney’s brief as cited
above (from page 3 of his brief), seems to be grounded on the
“voice-only” usages reflected in the LEXIS/NEXIS® excerpts. By
contrast, the second above-cited paragraph (from pages 4 and 5
of his brief) refers to several dictionary entries in arguing
that the combination of words, “Pure Voice,” is the equivalent
of an admitted descriptor like “distortion-free.” We find
neither of these arguments compelling as applied to the two
types of goods on which applicant is using its mark.
In an attempt to understand better the underlying
technology as it is applied to PCS telephone handsets, we return
to the definition quoted above for the word “vocoder.” This
definition submitted by the Trademark Examining Attorney is
entirely consistent with applicant’s identification of goods,
and the specimens of record.
Serial No. 75/183,251
7
As seen in the definition of record, if the human voice is
to be transmitted via wireless telecommunication devices, the
initial step is to translate voice signals into a digital
approximation through Analog-to-Digital Conversion (ADC).
The recited definition further suggests that digital signal
processing (both ADC and the further encryption, compression,
etc., of these signals) involves complex technology relying upon
super-fast, number-crunching processors.
Finally, this definition helps to explain the instant
technology within a real-world business environment. The
“bottom line” in any business is to make a profit.
Telecommunication companies compete for finite bands of the
radio spectrum at auctions conducted by the Federal
Communications Commission. To increase capacity, wireless
service providers compress the human voice using speech coding.
Speech coding is the process of digitally encoding voice signals
for the purposes of storage or transmission. By digitizing
speech and using powerful compression algorithms (also known as
speech coders, voice coders or vocoders), the bit rate required
for speech storage or transmission can be greatly reduced. Thus
the performance of the speech coder directly determines system
capacity and the amount of revenue that can be generated. In a
mobile environment, the primary goal of speech coding is to
Serial No. 75/183,251
8
provide acceptable voice quality at the lowest bit rate possible
and at the lowest cost.
We also learn about one particular handset and the way
applicant uses its mark in commerce from the file copy of the
actual packaging for the QUALCOMM® telephone handset:
“… QUALCOMM developed
Code Division Multiple Access
(CDMA) technology …”
Serial No. 75/183,251
9
4
Applicant argues that its high-rate vocoder achieves
optimal compression. Applicant touts its own technology,
incorporated into its Qualcomm® brand handsets (see, e.g.,

4 The specimens of record are from applicant’s model QCP-1900
telephone handset. This appears to be a shortened form of QCELP
[Qualcomm Code(book) Excited Linear Prediction] vocoder for a 1900MHz
PCS. As the specimens also explain, in 1989, applicant pioneered CDMA
“… The result is superior voice quality.”
“ &/($592,&(48$/,7<
With the phone’s fast 13 kilobit per second
PureVoiceTM vocoder, you’ll hear everything but
the noise from the other end.
Even the envy in your friend’s voice.”
Serial No. 75/183,251
10
reprint of specimens of record above), and into many of the
digital integrated circuits of an ever-increasing number of
wireless telephone handsets (having other brand names) in this
country, as achieving superior sound quality along with
remarkable power-efficiencies.
As to whether the term “pure voice,” in the sense of
“voice-only,” is merely descriptive of voice coders and decoders
sold as components of wireless telephones, we find that the
Trademark Examining Attorney has established only that “pure
voice” is sometimes used to mean “voice-only” in computer
network settings. However, he has not established that the
combined term is descriptive in the general field of digital
signal processing or as applied to applicant’s specific goods.
The fact that the words “pure voice” may be understood and used
to refer to a “voice-only” network does not establish that it is
likewise descriptive of speech coding technology (e.g., voice
coders and decoders) embedded in digital wireless communications
products,5 even if there exists some relationship between these

(Code-Division Multiple Access) technology -- now the dominant
technology for digital telephones in the United States.
5 Furthermore, to the extent that applicant intends for this mark
to imbue its products with positive attributes, it could well be seen
as a negative feature if potential consumers of applicant’s PCS
handsets were inclined to pick up the connotation of “voice-only” from
the designation “PureVoice.” This is true because an ever-increasing
percent of mobile telephones are designed to receive data.
Accordingly, over the next number of years, one can anticipate that
mobile electronic devices will continue to evolve, permitting easier
bundling of new mobile data devices and services with voice services.
Serial No. 75/183,251
11
goods. See In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797
(TTAB 1994) [showing that the word “virgin” is descriptive of
cocktails did not prove that it was likewise descriptive of non-
alcoholic malt beverages].
With respect to whether the term “pure voice” is equivalent
in meaning to such terms as “distortion-free” or “noiseless” and
hence is merely descriptive of voice coders and decoders sold as
components of wireless telephones, the Trademark Examining
Attorney never cites specifically to any of the dictionary
entries of “pure” or “voice” listed above, as making his case.
On this point, we also agree with applicant: “Applicant can
discern nothing of relevance in these dictionary definitions.”
(Applicant’s brief, p. 6).
While, of course, laudatory terms which attribute quality
or excellence to goods may be merely descriptive of the goods on
which they are used, a term is merely descriptive if it
immediately describes an ingredient, quality, characteristic or
feature of the goods or services, or if it directly conveys
information regarding the nature, function, purpose or use of
the goods or services. See In re Abcor, supra at 217–18. For
example, applying this test to other hypothetical marks for the

Carriers will migrate from voice-only services to mobile information,
and then ultimately, mobile e-commerce.
Serial No. 75/183,251
12
present goods, we have no question but that “distortion-free” or
“noiseless” would be merely descriptive thereof.
By contrast, we believe that applicant’s mark “PUREVOICE”
does not directly describe applicant’s goods, but only suggests
the voice quality associated with the use of its compression and
decompression technology. We agree that it requires a multi-
stage reasoning process or imagination in order for customers or
prospective purchasers of applicant's voice coders and decoders
to be able to ascribe any particular significance to the phrase
“PUREVOICE” when used in connection with these goods.
This conclusion is buttressed by the fact that this term
does not appear to be needed by applicant’s competitors in order
to describe their products as it has not been shown that any
third party in the intensely competitive field of wireless
communications has used it in this manner. See Minnesota Mining
and Mfg. Co. v. Johnson & Johnson, 454 F.2d 1179, 172 USPQ 491
(CCPA 1972) [“SKINVISIBLE” for transparent medical adhesive tape
is not needed by competitors]; Sperry Rand Corp. V. Sunbeam
Corp., 442 F.2d 979, 170 USPQ 37 (CCPA 1971) [“LEKTRONIC” for
electric shavers not needed by competitors]; Aluminum
Fabricating Co. of Pittsburgh v. Season-All Window Corp., 259
F.2d 314, 119 USPQ 61, 63 (2d Cir. 1958) [mark “SEASON-ALL,”
unlike the term “ALL-SEASON,” is not merely descriptive of
aluminum storm windows and doors]; In re Reynolds Metals Co.,
Serial No. 75/183,251
13
480 F.2d 902, 178 USPQ 296 (CCPA 1973) [registration of “BROWN-
IN-BAG” for transparent plastic bags is suggestive as it will
not prevent competitors from informing buyers that goods may be
browned in their bags]; Dewalt, Inc. v. Magna Power Tool
Corporation/Yuba Consolidated Industries, Inc., 289 F.2d 656,
129 USPQ 275 (CCPA 1961) [opposer had used the words “POWER
SHOP” descriptively in connection with the sale of multiple-
purpose woodworking saws].
Here, as the specimens of record emphasize, applicant’s own
CDMA technology amplifies certain frequencies and suppresses
others, encrypts information, and filters out interference,
fading, cross-talk and background noise for PCS users. In this
respect, while applicant concedes that the mark “PUREVOICE”
suggests that applicant's goods ensure crystal-clear voice
quality, it persuasively contends that such mark does not
forthwith convey, with sufficient particularity, the purpose,
function or use of applicant’s goods or describe any significant
aspect, feature or quality thereof.
The instant record is most unclear as to whether the term
“pure voice,” in the sense of “voice-only,” is merely
descriptive of computer software for signal compression and
decompression, although this may indeed be the closest question
with which we are faced herein. For example, in an effort to
encourage Internet computer users to purchase applicant’s
Serial No. 75/183,251
14
proprietary compression and decompression software and unique
computer file formats, applicant might well tout its product as
superior in recording, transmitting and/or reproducing the human
voice (“pure voice” or “voice-only”) most accurately.6 In this
event, one could argue that this points to a claimed benefit of
using applicant’s software in a manner that is violative of
Section 2(e)(1) of the Lanham Act. However, we should hasten to
add that while it appears as if the Trademark Examining Attorney
entertained this argument,7 there is no evidence to support such
a theory within the record of this proceeding.
Finally, with respect to whether the term “pure voice” is
equivalent to “distortion-free” or “noiseless” and hence is
merely descriptive of computer software for signal compression
and decompression for networked computers, we find nothing in
the record, as was the case above with applicant’s voice coders
and decoders sold as components of wireless telephones, to
support such an interpretation.
However, to the extent that we retain any doubt as to
whether applicant's mark is merely descriptive or suggestive of
its goods, we resolve such doubt, in accordance with the Board's

6 By contrast, other computer software for signal compression and
decompression may fare better than does applicant’s with non-speech
sounds like music or special sound effects.
7 “… As some of the applicant’s goods may be used in connection
with network services, it would appear that the proposed mark
describes a feature of the applicant’s goods…” (Office Action of
December 15, 1997, p. 1).
Serial No. 75/183,251
15
practice, in favor of the publication of applicant’s mark for
opposition. See, In re Morton-Norwich Products, Inc., 209 USPQ
791 (TTAB 1981); In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB
1972); In re Atavio Inc., 25 USPQ2d 1361, 1363 (TTAB 1992); and
In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984).
Decision: The refusal under Section 2(e)(1) is reversed.
G. D. Hohein
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial and
Appeal Board