Satcom Electronics, Inc.

Trademark Trial and Appeal Board

Oct 16, 1998

No. 74655796 (T.T.A.B. Oct. 16, 1998)

Paper No. 13
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB OCT. 16,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Satcom Electronics, Inc.
________
Serial No. 74/655,796
_______
Lisa Partain of Fulbright & Jaworski L.L.P. for Satcom
Electronics, Inc.
K. Margaret Le, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney)
_______
Before Hanak, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Satcom Electronics has filed an application to
register the mark SATCOM ELECTRONICS for “portable, low
profile, flat antenna communication systems comprising flat
antenna, low noise block, transmitter and receiver for
home/office based satellite communication and broadcasting
applications; low profile, flat phased array antenna
Ser. No. 74/655796
2
communication systems comprising flat phased array
antenna, transmitter and receiver for mobile based
satellite communication and broadcasting applications;
compact antenna communication systems comprising compact
antenna, transmitter and receiver for personal satellite
communication and broadcasting applications”.1
Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used on applicant’s goods, the mark is merely
descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm.
The Examining Attorney contends that the term SATCOM
refers to “satellite communications” as evidenced by (1)
the 20 excerpted stories from her LEXIS/NEXIS search; and
(2) applicant’s own statement that “[t]he word ‘satcom’ is
merely descriptive of the general satellite communications
industry” (applicant’s response filed December 11, 1995, p.
3).2 As to the word ELECTRONICS, the Examining Attorney

1 Appl. Ser. No. 74/655,796, filed April 4, 1995, alleging a bona
fide intention to use the mark in commerce.
2 Additionally, the Board notes that in applicant’s brief on
appeal, at page 7, applicant states the following: “Similarly,
merely because the word ‘Satcom’ has a distinct meaning in the
satellite communications industry, it does not necessarily follow
that ‘SATCOM ELECTRONICS’, when viewed in its entirety, is merely
Ser. No. 74/655796
3
contends that applicant’s goods include electronic
receivers and transmitters and that the term is merely
descriptive of applicant’s goods as evidenced by (1) the
definition in Webster’s Ninth New Collegiate Dictionary of
the term “electronics” as “2. electronic devices or
equipment”; (2) excerpts from several stories from a
LEXIS/NEXIS search demonstrating use of the words
“electronic transmitter(s)”, “electronic receiver(s)”,
and/or “electronic antenna”, all in connection with
satellites; and (3) a LEXIS/NEXIS excerpt from the January
1995 Journal of Electronic Defense which reads, in relevant
part, as follows:
“The AN/TSC- 143 Prototype Tri-Band Tactical Terminal
will provide a 2.4-m satellite dish, digital
switching, on-board power generator, up and down
converters and other satcom electronics mounted aboard
a High Mobility Multipurpose Wheeled Vehicle (HMMWV).”
Viewed together in light of the above evidence, the
Examining Attorney contends that applicant’s mark
“immediately advises the potential purchasers that the
applicant’s goods are electronics or electronic devices
used in the satellite communications industry or field”.
(Examining Attorney’s brief, pp. 6-7).

descriptive when applied to the identified goods.” (Emphasis
added.)
Ser. No. 74/655796
4
Applicant urges reversal of the refusal on the basis
that the mark SATCOM ELECTRONICS, when viewed in its
entirety, is suggestive, not merely descriptive, of
applicant’s goods, which are “satellite receivers,
transmitters, and the like” (applicant’s brief, pp. 3-4).
Applicant also maintains that the term “electronics” is
such a broad term that it does not convey an immediate idea
of the qualities or characteristics of applicant’s goods.
Applicant, in support of its position, submitted a
definition from Webster’s Third New International
Dictionary of “electronics” as “a branch of physics that
deals with the emission, behavior, and effects of electrons
in vacuums and gases and with the utilization of electronic
devices”. Applicant contends that under this definition,
the word ‘electronics’ does not immediately bring to the
consumer’s mind the goods sought to be covered in
applicant’s application, “namely, flat antennas, low block
noise, transmitters or receivers” (applicant’s brief, p.
5). Finally, applicant contends that “there appears to be
little, if any, need in the industry to use the words
‘Satcom Electronics’ together to describe goods in the
satellite communications industry” as evidenced by the fact
that a LEXIS/NEXIS search of the term “satcom electronics”
Ser. No. 74/655796
5
revealed two stories, while a search of the term “satcom
technologies” revealed 128 stories.
A term is merely descriptive of goods or services,
within the meaning of Section 2(e)(1), if it immediately
conveys information concerning an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term or phrase describe all of
the properties or functions of the goods or services in
order for it to be considered merely descriptive thereof;
rather, it is sufficient if the term or phrase describes a
significant attribute or idea about them. Moreover,
whether a term or phrase is merely descriptive is
determined not in the abstract, but in relation to the
goods or services for which registration is sought, the
context in which it is being used on or in connection with
those goods or services, and the possible significance that
the term or phrase would have to the average purchaser of
the goods or services because of the manner of its use.
See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
See also, In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d
Ser. No. 74/655796
6
1753 (TTAB 1991). Consequently, “[w]hether consumers could
guess what the product [or service] is from consideration
of the mark alone is not the test”. In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant does not dispute that the term “satcom”
refers to the satellite communications industry. Further,
the evidence shows that this is the meaning of “satcom”.
[See, for example, the following LEXIS/NEXIS stories
submitted by the Examining Attorney:
“The message to recall the airborne invasion
force was received on board five aircraft equipped
with satellite communications (satcom) receivers while
the first two waves of transports were assembling
about 200 mi. offshore over the Atlantic, according to
Lt. Col...” (October 10, 1994, Aviation Week and Space
Technology)
“...aircraft will be equipped with a Trimble TNL-
8100 navigation system with nine-channel global-
positioning.
system (GPS) receiver. Later, it will be fitted
with a Honeywell/Racal six-channel satellite-
communications (satcom) system with Canadian Marconi
top-mounted antenna. GPS and satcom certification is
due in May 1995, says project...” (September 21, 1994,
Flight International).]
The dictionary definition of the term ‘electronics’
submitted by the Examining Attorney includes “electronic
devices or equipment”. Even the definition provided by
applicant indicates that “electronics” is a branch of
physics dealing with, inter alia, the “utilization of
electronic devices”. Beyond the two definitions provided
Ser. No. 74/655796
7
to the Board, we take judicial notice of the following
definition of “electronics” in the Random House Compact
Unabridged Dictionary (2d ed.)3: “the science dealing with
the development and application of devices and systems
involving the flow of electrons in a vacuum, in gaseous
media, and in semiconductors.” All of the dictionary
definitions refer to systems, devices and/or equipment.
When SATCOM and ELECTRONICS are combined as SATCOM
ELECTRONICS, the mark, when used in connection with
applicant’s goods (home/office based and mobile based flat
antenna communications systems, and personal compact
antenna communications systems, all including transmitters,
receivers, and antenna) directly describes those goods.
See In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988);
aff’d in op. not for pub., 871 F.2d 1097, 10 USPQ2d 1879
(Fed. Cir. 1989).
Accordingly, we find applicant’s mark is merely
descriptive. Specifically, we agree with the Examining
Attorney that the words SATCOM ELECTRONICS, as applied to
applicant’s goods, immediately convey to consumers that the
goods are electronic devices or equipment in the satellite
communications industry.

3 See Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852
(TTAB 1981); and TBMP §712.01.
Ser. No. 74/655796
8
The cases of In re Hutchinson Technology Inc., 852
F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); and Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054 (TTAB 1989), cited by applicant, do not require
a different result herein. The Hutchinson case, supra,
involved a surname refusal, and the Court’s discussion of
the term “technology” was within the context of whether the
mark HUTCHINSON TECHNOLOGY was primarily merely a surname.
In the case now before the Board, the refusal to register
is based on descriptiveness of the mark SATCOM ELECTRONICS
for goods which clearly include electronic systems and
devices as the term “electronics” is defined in
dictionaries.
In the Concurrent case, supra, the Board found the
mark CONCURRENT TECHNOLOGIES CORPORATION was not merely
descriptive for printed electronic circuit boards based on
the absence of evidence of any descriptive uses of the
terms “concurrent” or “concurrent technologies” including
the fact that there were no dictionary definitions
submitted. The lack of evidence in that case, and the
involved terms “concurrent technologies” are to be
distinguished from the case now before the Board. In the
instant case, there is dictionary evidence of the meaning
of the term “electronics”. The term “electronics” refers
Ser. No. 74/655796
9
to a specific scientific field, whereas the words
“technology” or “technologies” do no identify a branch of
scientific study.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
E. W. Hanak
G. D. Hohein
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board