Satcom Electronics, Inc.Download PDFTrademark Trial and Appeal BoardOct 16, 1998No. 74655796 (T.T.A.B. Oct. 16, 1998) Copy Citation 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 Copy with citationCopy as parenthetical citation