Rosen Product Develop-ment

Trademark Trial and Appeal Board

Sep 9, 2003

No. 75152131 (T.T.A.B. Sep. 9, 2003)

Mailed:
9/9/03
Paper No. 28
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rosen Product Development
________
Serial No. 75/152,131
_______
David P. Cooper of Kolish, Hartwell, Dickinson, McCormack &
Heuser for Rosen Product Development.
Carolyn Pendelton Cataldo, Trademark Examining Attorney,
Law Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Cissel, Seeherman and Drost, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 19, 1998, applicant filed the above-
referenced application to register the mark “ULTRASLIM-
LINE” on the Principal Register for “monitor mounting
devices and visors,” in Class 9. The application was based
on applicant’s claim that it had used the mark in commerce
in connection with these goods since February 20, 1996.
Following a number of exchanges between the Examining
Attorney and applicant, the drawing was amended to show the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/152,131
2
mark as “ULTRA SLIM-LINE,” and the identification-of-goods
clause was amended to identify the goods as “computer
accessories, namely, hardware systems for mounting with
monitors,” in Class 9.1
This application is now before the Board on appeal.
Two issues are presented for our resolution: (1) the
Examining Attorney’s final requirement for a disclaimer,
under Section 6(a) of the Lanham Act, of the term “SLIM-
LINE,” which the Examining Attorney has held to be merely
descriptive of the goods identified in this application, as
amended; and (2) the final requirement for an amendment to
the identification-of-goods clause to specify the component
parts of the “systems” referred to in the amended
identification of goods.
Section 6(a) of the Lanham Act provides that an
applicant may be required to disclaim an unregistrable
component of a mark which is otherwise registerable. The
Examining Attorney contends that the term in question,
“SLIM-LINE,” is unregistrable under Section 2(e)(1) of the
Lanham Act because it is merely descriptive of the products
1 On April 24, 2002, the application was remanded to the
Examining Attorney for clarification of the wording applicant
intended to adopt by an earlier amendment. After applicant
specifically adopted the language shown above, the Examining
Attorney continued and made final the requirement for amendment
to the identification-of-goods clause.
Ser No. 75/152,131
3
with which applicant uses the mark it seeks to register.
The test for determining whether a term is merely
descriptive within the meaning of the Act is well settled.
A term is unregistrable under Section 2(e)(1) if it
describes an ingredient, quality, characteristic, function,
feature, purpose or use of the relevant goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818
(Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB
1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The evidence of record clearly establishes that the
term “SLIM-LINE” is commonly used to describe sleek,
slender or streamlined products or components of products
in many different industries, including the computer
industry. Submitted with the Office Actions of March 22,
1999 and July 24, 2001 were a number of excerpts from
published articles retrieved from the Nexis database. The
term in question is used in these excerpts in a descriptive
context in connection with computer-related goods,
including monitors, and related high-technology products
such as audio components and other electronic devices.
Typical examples include the following: “Other new Office
in the Sky products include an 18-inch slim-line LCD
monitor…”; “12.1-inch, custom-designed, slim-line video
Ser No. 75/152,131
4
monitors…”; and “The CML 151XW is a slim-line lightweight
monitor that offers a high-resolution liquid crystal
display….” Other excerpts show use of “slim-line” in
connection with other electronic or computer-related
products in apparent reference to the same feature or
characteristic, that is, their narrow configuration.
This evidence clearly demonstrates that “SLIM-LINE” is
used to describe a significant, desirable characteristic of
computer monitors. As such, the term would be
unregistrable under Section 2(e)(1) of the Act in
connection with computer monitors. When this term is used
in connection with hardware for mounting slim-line
monitors, the term is likewise unregistrable because it
identifies a significant characteristic or feature of these
products, namely, either that the mounting hardware is
itself slim or narrow, or that the hardware is designed to
accommodate slim-line computer monitors. In fact, the
specimen submitted with the application shows both that the
monitor applicant sells is less than an inch thick (“Our
lightest and thinnest entertainment LCD.”), and that the
mounting hardware designed to attach it to the interior of
aircraft is of a “compact design,” which is only slightly
thicker. “SLIM-LINE” is therefore merely descriptive of a
significant characteristic or feature of the mounting
Ser No. 75/152,131
5
hardware as well as the monitors with which the hardware is
used. In view of this fact, the requirement for a
disclaimer of this unregistrable term is appropriate.
Applicant makes several unpersuasive arguments to the
contrary. One is that the term is only suggestive of a
characteristic of monitors and hardware for mounting with
monitors because it takes a multi-step reasoning process to
understand what the term means in connection with these
products. Applicant has not, however, explained what this
process is. As noted above, the evidence supports the
conclusion that the ordinary meaning of the term
immediately and forthwith conveys significant information
about a feature or characteristic of the products with
which it is used, namely that they are slim or narrowly
configured.
Applicant argues that the Court’s decision in the case
of In re Automatic Radio Mfg. Co., 404 F.2d 1391, 160 USPQ
233 (CCPA 1969) supports registrability of applicant’s mark
in the instant case without the required disclaimer, but we
find that the decision in that case does not require
reversal of the requirement for a disclaimer in the case at
hand. In that case the Court reversed the refusal to
register because the record did not contain evidence that
the term in question was used descriptively in connection
Ser No. 75/152,131
6
with the specific goods identified in the application. In
the instant case, however, as noted above, not only do we
have evidence that “SLIM-LINE” is used to describe a
feature or characteristic of a variety of different high-
technology products, but the record shows that computer
monitors themselves have been described as “slim-line,” and
that the hardware applicant sells for mounting slender
monitors in aircraft likewise features this narrow
configuration.
Applicant’s argument that the disclaimer requirement
is improper because the term “slim-line” has not been shown
to be in use in connection with hardware for mounting
monitors in vehicles is also not well taken. As noted
above, even if the hardware were not itself “slim-line,”
the term would still be unregistrable for the hardware
because a significant feature or characteristic of it is
that it is used to mount “slim-line” monitors.
Additionally, applicant’s argument that the application
should be approved for publication without the required
disclaimer because doubt exists as to whether “SLIM-LINE”
is merely descriptive of the goods specified in the
application, as amended, is also without merit. The
evidence is clear that the requirement for a disclaimer is
proper because the term is unregistrable under Section
Ser No. 75/152,131
7
2(e)(1) of the Act. We have no doubts regarding this
conclusion.
The second issue on appeal is the propriety of the
Examining Attorney’s requirement for further amendment to
the identification-of-goods clause to specify the component
parts of the “systems” identified in the existing language
in the application. Section 1 of the Act requires an
applicant to state the goods in connection with which the
mark is used. The Office has consistently held that this
must be done with a degree of specificity and particularity
which allows for proper examination of the application and
provides the public with fair notice of the extent of the
rights being claimed by the applicant.
In the instant case, the Examining Attorney has
required applicant to specify what is intended to be
included by the indefinite term “systems.” She has
suggested that applicant adopt the following language:
“computer accessories, namely, hardware systems comprised
of [IDENTIFY major component parts] for mounting with
monitors.” We agree with the Examining Attorney that the
term “systems” is indefinite, and that the components of
applicant’s mounting hardware systems should be specified.
Accordingly, the requirement for amendment to the
identification-of-goods clause is affirmed.
Ser No. 75/152,131
8
DECISION: The requirement for applicant to amend the
application to specify the components of its hardware
systems is affirmed, as is the requirement to disclaim the
merely descriptive term “SLIM-LINE.”