Sarcos Investments LC

Trademark Trial and Appeal Board

May 17, 2004

No. 75150061 (T.T.A.B. May. 17, 2004)

Mailed:
17 May 2004
Paper No. 32
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sarcos Investments LC1
________
Serial No. 75150061
_______
Peter M. de Jonge of Thorpe North & Western, LLP for Sarcos
Investments LC.
Patty Evanko, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______
Before Hairston, Holtzman and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On August 14, 1996, Sarcos Investments LC (applicant),
by assignment, applied to register the mark NETCAM in typed
form on the Principal Register for goods ultimately
identified as “video and/or still camera and transmitter
1 The application was originally filed by Stephen C. Jacobsen.
The application was subsequently assigned to applicant. See Reel
and Frame Nos. 1945/0178 and 2749/0881.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75150061
2
for transmitting visual and audio information to a remote
location for recordation and/or real time display” in
International Class 9.
The application (Serial No. 75150061) was originally
based on an allegation of a bona fide intention to use the
mark in commerce. However, after a notice of allowance
issued, applicant eventually filed a statement of use that
contained a specimen and an allegation of a date of first
use anywhere of February 13, 1999, and first use in
commerce of March 15, 2001.
After the statement of use was filed, the examining
attorney issued an Office action refusing to register
applicant’s mark “because the proposed mark is merely
descriptive of the identified goods.” Office action dated
January 18, 2002 at 1.2 15 U.S.C. § 1052(e)(1). The
examining attorney argues that “cam” is an abbreviation for
“camera” and “the term NET is descriptive of applicant’s
goods, because it describes a feature thereof, namely, that
the cameras are network cameras.” Examining Attorney’s
Brief at 5. Applicant maintains that the term “cam” is
“not commonly used to describe any camera” and that its
“goods are not network cameras.” Reply Brief at 7.
2 The Office action also indicated that the “proposed mark
appears to be generic as applied to the goods.”
Ser. No. 75150061
3
After the examining attorney made the refusal final,
applicant appealed to this board.
Before we begin our discussion of the merits of the
case, we must clarify several points that have been
discussed by applicant and the examining attorney. First,
in regard to the refusal to register based on the ground of
descriptiveness, applicant argues there was no change of
circumstances between the time of the initial examination
and the examination that occurred after applicant filed its
statement of use. The Trademark Manual of Examining
Procedure addresses the question of whether an examining
attorney may raise a new ground of refusal when examining
the statement of use. “The examining attorney may not
issue a refusal under Trademark Act §2(e)(1), 15 U.S.C.
§1052(e)(1), unless the refusal is dictated by changed
circumstances from the time of initial examination, or the
failure to issue such a refusal would be a clear error.”
TMEP § 1109.08. Applicant disputes whether there was a
change of circumstances between the time of the initial
examination (1997) and the examining attorney’s Office
action after the statement of use was filed (2002). If an
applicant is dissatisfied with the procedural actions
concerning an examining attorney’s refusal, it can seek
relief by way of a petition to the Director. 37 CFR
Ser. No. 75150061
4
§ 2.146(a)(3); TMEP § 1201.05. However, “[o]n appeal, the
Trademark Trial and Appeal Board will review only the
correctness of the underlying substantive refusal of
registration.” TMEP § 1109.08. Accord In re Sambado &
Sons Inc., 45 USPQ2d 1312, 1314 (TTAB 1997) (expanded
panel) (“Board’s determination on appeal is to be limited
to the correctness of the underlying substantive refusal to
register”). Therefore, we will only consider the merits of
the examining attorney’s refusal and not whether the
examining attorney properly applied the standard for
raising a refusal after the filing of a statement of use.
Second, early in the prosecution of this application,
the examining attorney and applicant discussed the
genericness of applicant’s mark. In her appeal brief (p.
11), the examining attorney clearly stated that “[t]he
issue of genericness is not before the Board … [T]he issue
before the Board is descriptiveness. The reference to the
generic nature of the mark is part of an advisory Section
2(e)(1) paragraph that advises the applicant that an
amendment to Section 2(f) or Section 23 would not be
accepted.” Applicant continues to maintain that its “mark
is not generic.” Applicant’s Brief at 5. We agree with
the examining attorney that the only issue on appeal is
whether the mark is merely descriptive. The reference in
Ser. No. 75150061
5
the Office action dated January 18, 2002 (p. 1), that
“Registration Refused - NETCAM is Generic” was followed by
an explanation that the “proposed mark is merely
descriptive of the identified goods.”3 There was no reason
for the examining attorney to address the issue of
genericness because applicant was not seeking registration
under Section 2(f) or on the Supplemental Register during
the prosecution of the application. Therefore, we will
only address the question of whether applicant’s mark is
merely descriptive for the identified goods.
Third, at the end of its reply brief (p. 7), applicant
requests that if “the Board find[s] the mark is descriptive
for its goods, [it] requests the Board to allow Applicant’s
mark on the Supplemental Register.” Applicant’s request is
untimely. 37 CFR 2.142(g). Requests to amend to the
Supplemental Register in appeal briefs have not been
accepted. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1047 n.2 (TTAB 2002); In re Taverniti, SARL, 225 USPQ 1263,
3 Other Office actions have consistently maintained that the
refusal was a merely descriptive refusal under § 2(e)(1). See
Office action dated November 25, 2002 at 1 (“In the previous
Office action, registration was refused under Section 2(e)(1) …
because applicant’s mark NETCAM is merely descriptive”); Office
action dated July 28, 2003 at 1 (“The applicant should note that
the refusal is based upon Section 2(e)(1) and that registration
is being refused because the mark is merely descriptive of the
goods. The more stringent generic test that the applicant refers
to in its request for reconsideration is not applicable in this
case”).
Ser. No. 75150061
6
1264 n.3 (TTAB 1985). Here, applicant’s request is
particularly untimely inasmuch as it comes in its reply
brief. Applicant’s relief, if any, is available only by
petition to the Director. Ex parte Simoniz Co., 161 USPQ
365 (Comm’r 1969); TMEP § 1501.06 (“[T]he Director will
deny a petition to reopen prosecution if granting the
petition would require further examination (e.g., to
consider a claim of acquired distinctiveness under
15 U.S.C. §1052(f) or an amendment to the Supplemental
Register)”).
We now address the central issue in this case, which
is whether the mark NETCAM is merely descriptive of
applicant’s goods. For a mark to be merely descriptive, it
must immediately convey knowledge of the ingredients,
qualities, or characteristics of the goods or services. In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205
USPQ 505, 507 (CCPA 1980). Courts have long held that to
be “merely descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
Ser. No. 75150061
7
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
In her brief, the examining attorney has asked that we
take judicial notice of two online definitions. We decline
the examining attorney’s request to take judicial notice of
these online dictionaries, however, we do take judicial
notice of several other dictionary definitions.4 First,
“-cam” is defined as an “abbreviation for camera,
especially a digital or video camera whose images are made
available by a computer network. For instance, a camera
connected to the World Wide Web is a webcam; a camera
mounted on a tower is a towercam; and a camera strapped to
the back of a horse might be called a horsecam.”5 See also
New Oxford American Dictionary (2001) “cam” – “short for
camera” and “net” – “a network, in particular: a
communications or broadcasting network … a network of
interconnected computers.”
Applicant’s goods are “video and/or still camera and
transmitter for transmitting visual and audio information
to a remote location for recordation and/or real time
display.” Applicant’s goods include a camera and a
4 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
5 Dictionary of Computer and Internet Terms, (7th ed. 2000).
Ser. No. 75150061
8
transmitter for transmitting information to a remote
location. The definitions support the conclusion that
“cam” is an abbreviation for camera. “Net” also is a term
used to describe a network. Applicant admits that “net” is
“commonly used to describe a network.” Reply Brief at 7.
When the terms are combined, they would immediately inform
potential purchasers that applicant’s goods are cameras
that can be used in association with a network.
Applicant argues that its product is “not necessarily
connected to a computer” and applicant’s product is “not
limited to digital video.” Applicant’s Brief at 4. In
order for a term to be merely descriptive, it does not have
to describe all goods or services that are included within
applicant’s identification of goods or services. In re
Pencils, Inc., 9 USPQ2d 1410, 1411 (TTAB 1988) (“We agree
with applicant that the sale of pencils is not the central
characteristic of applicant's services. Nevertheless,
pencils are significant stationery/office supply items that
are typically sold in a store of applicant's type, that is,
a stationery and office supply store. While applicant's
stores may carry a variety of products, pencils are one of
those products, and, thus, the term ‘pencils’ is merely
descriptive as applied to retail stationery and office
supply services”). Accord In re CyberFinancial.Net Inc.,
Ser. No. 75150061
9
65 USPQ2d 1789, 1791 (TTAB 2002) (“[I]f applicant’s mark
BONDS.COM is generic as to part of the services applicant
offers under its mark, the mark is unregistrable”). Here,
applicant’s cameras and transmitters for transmitting video
information to a remote location for recordation or real
time display would include cameras used to transmit video
information over a network for display or recordation. The
fact that applicant’s goods “are not necessarily connected
to a computer” is not significant to the extent that its
goods could clearly be used in association with a network.
Applicant has submitted dictionary excerpts with its
reply brief to show that “netcam” is absent in several
dictionaries and that “cam” is absent from a dictionary.
While we take judicial notice of the absence of the
relevant terms from these dictionaries, they are not
persuasive on the issue of whether applicant’s mark is
merely descriptive.6 To the extent that applicant is
arguing that the term NETCAM is not generic for its goods,
6 We note that the board has been reluctant to consider online
dictionaries submitted at the appeal stage. See In re Total
Quality Group Inc., 51 USPQ 1474, 1476 (TTAB 1999) (“[T]he
definitions have been retrieved from on-line dictionaries which,
according to the Examining Attorney, are not available in a
printed format. Under this circumstance, the Board is reluctant
to take judicial notice of such matter after an ex parte appeal
has been filed”). In this case, however, the entries concern the
simple absence of terms or definitions that are not in dispute.
Ser. No. 75150061
10
we again point out that the issue of genericness is not
before us.
The examining attorney also included NEXIS printouts
that show use of the term NETCAM in a descriptive manner.
See, e.g., Idaho Statesman, October 23, 2000 (“There are
more shows, ranging from technology tips to a showcase of
netcam-produced videos submitted by viewers”); Christian
Science Monitor, October 29, 1999 (“The latest example of
this trend is called netcam. It’s a tiny video device that
plugs into a computer and lets the user send out visual
images”); Wall Street Journal, July 19, 1999 (“Tiny, cheap
video cameras known as netcams are quickly becoming a hot
new accessory for Web users”); Fort Worth Star-Telegram,
July 5, 1999 (“The channel’s programming incorporates
online and television interactivity by encouraging viewers
to participate in its programming live via netcam and chat
rooms”).
We agree with applicant that many of the other
references to “net cams” do not show the involved goods.
Many of these excerpts involve the use of cameras near the
net in sports such as a hockey or tennis. See, e.g.,
Washington Post, November 26, 2000 (“The puck ricocheted
off the netcam”); Sports Illustrated, February 5, 2001
(“After a series of TV gimmicks ranging from the glowing
Ser. No. 75150061
11
puck (a failure) to miked players (a plus) to netcams
(cool)”); Orlando Sentinel, September 1, 2000 (“You can
take a virtual tour of the tournament site, watch the
netcam and test your tennis knowledge”). However, these
excerpts certainly rebut applicant’s argument that the term
“cam” is “not commonly used to describe any camera.” Reply
Brief at 7. These references along with the dictionary
definitions show that the term “cam” would be understood to
mean “camera.”7
Based on this evidence, we conclude that the terms
“net” and “cam” would have clearly descriptive meanings
when they are used in connection with cameras that could
transmit video information to a remote location over a
network. The combining of these terms to form the word
NETCAM would be as descriptive in its entirety as the words
are individually. Nothing about the combination is
incongruous. See In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1017 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe
for cleaning television and computer screens); Abcor Dev.
(GASBADGE at least descriptive for gas monitoring badges);
In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977)
7 Regarding the other evidence in the case, the mere fact that an
excerpt is from a foreign source does not make the publication
per se irrelevant. See In re Remacle, 66 USPQ2d 1222, 1224
n.5 (TTAB 2002).
Ser. No. 75150061
12
(BREADSPRED descriptive for jams and jellies that would be
a spread for bread). Applicant’s term NETCAM, when viewed
in relation to applicant’s goods, immediately informs
prospective purchasers of a feature or characteristic of
the goods, i.e., that they are cameras that can be used
with a network. Therefore, applicant’s mark is merely
descriptive of the goods.
Decision: The refusal to register is affirmed.