Sharp Kabushiki Kaisha

Trademark Trial and Appeal Board

Mar 30, 2001

No. 75392138 (T.T.A.B. Mar. 30, 2001)

03/30/01
Hearing: Paper No. 20
October 3, 2000 RLS/krd
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sharp Kabushiki Kaisha
a/t/a Sharp Corporation
________
Serial No. 75/392,138
_______
Robert W. Adams of Nixon & Vanderhye P.C. for Sharp
Kabushiki Kaisha a/t/a Sharp Corporation.
Esther A. Borsuk, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Sharp Kabushiki Kaisha a/t/a Sharp Corporation
(applicant), a Japanese corporation, has appealed from the
final refusal of the Trademark Examining Attorney to
register the mark SCANNING STATION for personal computer
software for imaging scanners.1 The Examining Attorney has
refused registration under Section 2(e)(1), arguing that
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/392,138
2
applicant’s mark is merely descriptive of its goods.
Applicant and the Examining Attorney have submitted briefs
and an oral hearing was held. We affirm.
We first deal with procedural issues. The Examining
Attorney has objected to third-party registrations
submitted with applicant’s supplemental appeal brief. It
is the Examining Attorney’s position that, under Trademark
Rule 2.142(d), applicant may not submit such evidence with
its appeal brief. Applicant, on the other hand, points to
the Examining Attorney’s submission of evidence in her
response to applicant’s request for reconsideration as
justification for the submission with its supplemental
appeal brief.2
Generally, the evidentiary record in an application
should be complete prior to the filing of an appeal, and
additional evidence filed after the appeal will normally be
given no consideration. See TBMP § 1207.01. If an
applicant or an Examining Attorney wishes to introduce
additional evidence after an appeal is filed, the applicant
or Examining Attorney may file a request with the Board
1 Application Serial No. 75/392,138, filed November 18, 1997,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
2 We note that applicant filed its main brief before the
Examining Attorney’s response to applicant’s request for
reconsideration.
Ser. No. 75/392,138
3
that the appeal be suspended and the case be remanded for
further examination. See TBMP § 1207.02. However, a
timely request for reconsideration of an appealed action
may be accompanied by additional evidence, and such
evidence is not considered untimely submitted. See
TBMP §1204. This is because a request for reconsideration
filed during the six-month response period following
issuance of a refusal is considered by the Board to have
been filed prior to appeal. This section of the Board
manual further provides:
If the Examining Attorney, upon consideration of
a request for reconsideration (made with or
without new evidence), does not find the request
persuasive, and issues a new final or nonfinal
action, the Examining Attorney may submit
therewith new evidence directed to the issue(s)
for which reconsideration is sought.
Accordingly, the Examining Attorney’s evidence submitted
with her response to applicant’s request for
reconsideration is considered appropriate. Applicant’s
evidence, submitted with its supplemental brief, even
though stated to be in rebuttal of the Examining Attorney’s
evidence, cannot be accepted. If applicant had wanted to
make the registrations of record, it should have sought
remand under Rule 2.142(d). We should hasten to point out,
however, that even if such evidence (copies of third-party
Ser. No. 75/392,138
4
registrations wherein there was no disclaimer of the word
“STATION”) was considered, it would not change the result
herein.
Finally, with respect to the dictionary definitions
attached to the Examining Attorney’s appeal brief, those
are appropriate because we may take judicial notice of such
definitions. See University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
In the first Office action, the Examining Attorney
stated that applicant’s mark was merely descriptive of its
goods under Section 2(e)(1) of the Act, 15 USC §
1051(e)(1), because “the goods are a STATION for SCANNING.”3
In both the final refusal and the Examining Attorney’s
response to applicant’s request for reconsideration, the
Examining Attorney asserted that applicant’s mark was
merely descriptive of its goods because applicant’s
computer software would be used in connection with
“scanning stations.” In this regard, the Examining
Attorney contends that the term “scanning station” is used
3 In this refusal, the Examining Attorney also refused
registration under Section 2(d) of the Act, 15 USC § 1052(d), on
the basis of a registration covering the mark CF SCANSTATION,
“SCANSTATION” disclaimed, for computer software for use in
optical scanning. The Examining Attorney later withdrew that
refusal.
Ser. No. 75/392,138
5
as a generic term for “scanners” and that applicant’s
software would be used with these scanning stations.
Accordingly, the Examining Attorney contends that
applicant’s mark is merely descriptive of the function or
purpose of applicant’s computer software.4
Some of the excerpts upon which the Examining Attorney
relies are noted below:
Payback: The multipurpose machines totally
automated the scanning of resumes, transcripts,
and writing samples into the Notes database,
thereby eliminating stand-along scanning stations
and saving the company $50,000 per year in
printer consumables.
PC/Computing, March 1, 2000
* * * * *
Each floor has two copy and equipment hubs that
cluster Hewlett-Packard Co. LaserJet 8000 Series
printers as well as Tektronix Inc. color printers
and scanning stations.
PC Week, October 25, 1999
* * * * *
Equipment applications include two manual
encoding or manual laser scanning stations, or
automatic laser scanning.
Plant Engineering, September 30, 1999
* * * * *
4 In her brief, while maintaining that applicant’s mark merely
describes the purpose and function or use of applicant’s goods,
the Examining Attorney contends that applicant’s software enables
a personal computer to function as or to become a scanning
station.
Ser. No. 75/392,138
6
PPT Vision featured its PPT861 at SEMICON West, a
high-speed, semi-automated 3D scanning station
capable of 2.5 micron resolution. The PPT861
provides the flexibility to scan a wide range of
in-tray semiconductor packages including...
NDT Update, August 1999
* * * * *
Recycle an older-generation PC and either add it
to a network or attach an Iomega Zip... drive to
it and turn it into a dedicated scanning station.
Older PCs that have Pentium 300 MHz processors
are very reasonably priced and are perfectly
acceptable for basic tasks like scanning.
The Orange County Register, April 12, 1999
* * * * *
This month and next, the Social Security
Administration will get the remaining scanning
stations for its Paperless Office Initiative.
Government Computer News, March 8, 1999
* * * * *
Launch for Domino.Doc starts at $5,995 for a
single indexing and scanning station...
Computer Reseller News, January 18, 1999
* * * * *
The NT-based system includes 60
APPLICATIONXTENDER workstations, a DISKXTENDER
server, and three scanning stations equipped with
Fujitsu scanners that can image up to 40 double-
sided pages per minute.
Inform, January 19995
5 As the dissent notes, the evidence suggests that “scanning
station” may be used to describe different types of equipment.
We have not referred to the other usages in this opinion and
Ser. No. 75/392,138
7
The Examining Attorney has also relied on various
third-party registrations wherein the term “STATION” is
either disclaimed, registered under Section 2(f) of the Act
or placed on the Supplemental Register.
Applicant, on the other hand, argues that its mark is
only suggestive because it requires imagination, thought
and perception to reach a conclusion as to the nature of
its goods. Essentially, applicant argues that “STATION”
has no meaning with respect to computer software, that
scanners and scanning stations are not computer software,
and that the Examining Attorney has not introduced any
evidence showing that “scanning station” is descriptive of
software. Applicant also maintains that the Examining
Attorney is incorrect when she maintains that its software
will be able to transform computers into scanning stations.6
believe that the fact that “scanning station” may be descriptive
or generic of other goods is not relevant to this decision.
6 We also note that applicant, during the time when the Examining
Attorney had refused registration on the basis of the mark CF
SCANSTATION, commented:
The only similarity between the marks arises from the
generic and/or merely descriptive term “scanstation”
that appears in registrant’s mark. Significantly,
however, a disclaimer to exclusive rights to use
“SCANSTATION” was entered in connection with the cited
registration. Thus, the registrant does not have
exclusive rights to the portion of the cited mark upon
which the Trademark Attorney claims there is a
confusing similarity.
Ser. No. 75/392,138
8
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that applicant’s
asserted mark is merely descriptive of its computer
software for use in connection with imaging scanners. The
evidence noted above persuades us that the term “scanning
station” may be used as an alternative way of describing or
naming scanners. Therefore, the term “SCANNING STATION”,
used in connection with computer software for scanners or
scanning stations is, as explained below, merely
descriptive of the use or purpose of that software.
Most of the dissent criticizes the Examining Attorney,
and appears to say that, if the Examining Attorney did not
always correctly articulate how SCANNING STATION was
descriptive of the goods, ordinary consumers for these
goods will not see the mark as merely descriptive. There
are obvious problems with this reasoning.
First, the determination as to whether a mark is
merely descriptive of certain goods must be made on the
basis of the perception of the consumers and potential
purchasers for the identified goods, based on the evidence
of record, and not on whether the Examining Attorney may
have incorrectly described the precise nature and function
Applicant’s Amendment, filed March 29, 1999, p. 2. Later,
applicant maintained that, even if the term “SCANSTATION” is
Ser. No. 75/392,138
9
of applicant’s goods in two instances during prosecution of
the application. Although, as the dissent points out,
Examining Attorneys are trained professionals, they are
professionals in trademark law, not necessarily in the
goods which with a mark being examined may be used or be
intended to be used, such as computer software for imaging
scanners.7
merely descriptive, the Examining Attorney has not proven that
“SCANNING STATION” is.
7 Although not particularly relevant to this refusal, the dissent
states that Examining Attorneys do not “examine all types of
goods and services” but rather only “cover a particular, narrow
range of goods or services,” and that they are “highly learned
individuals” in their particular range of goods or services.
First, there are two law offices (those dealing with
electronically filed applications, the E Commerce law offices)
where Examining Attorneys do indeed examine all classes of goods
and services. Moreover, even in the remaining law offices, all
Examining Attorneys handle all types of service mark applications
as well as goods in a number of classes representing different
fields of endeavor. For example, some law offices, aside from
handling service mark applications, examine goods in Classes 3,
16 and 28, covering such diverse and unrelated goods as bleaches,
cleaning and polishing preparations, soaps, cosmetics,
publications, stationery, artists’ materials, playing cards,
toys, games and Christmas tree ornaments. Even those Examining
Attorneys who examine goods in Class 9 also examine goods in
other classes. For Class 9, they may find themselves examining
applications covering such a wide range of products as alarms,
diving equipment, all kinds of scientific instruments, audio and
video recorders, stereo equipment, gambling machines, fire
trucks, football helmets, weather balloons, door bells,
laboratory beakers, circuit breakers, cameras, computer hardware
and software of all types, batteries, telescopes and binoculars,
bullet-proof vests, contact lenses, eyeglasses, electric irons,
electric hair curlers, clock radios, smoke detectors, door
openers, jumper cables, highway safety cones, telephones and dog
whistles, among other goods. As can be seen, these Class 9 goods
alone are in a number of different fields of commerce, certainly
not a “narrow range of goods or services.” Suffice it to say
that Examining Attorneys are not required to have, and may not
necessarily possess, a technical background in the goods in the
Ser. No. 75/392,138
10
Second, although the Examining Attorney did indeed
acknowledge that her reasoning in the first Office action
as to why the mark was merely descriptive was incorrect
(that the mark was merely descriptive because “the goods
are a STATION for SCANNING”), she did correctly state the
reason in the final refusal and in the decision on
applicant’s request for reconsideration, and stated in her
brief that the mark “merely describes the purpose and
function of [applicant’s] goods…” and “the purpose and use
of the applicant’s goods…” (brief, 3, 6).8 Significantly,
there is no question but that applicant was placed on
notice as to the basis for the refusal.
While it is true, as the dissent notes, that software
by itself cannot function as a scanner, it is also true
that scanning hardware cannot work without the use of
software. Software is needed to make a scanner function
properly. Because the purpose or use of the computer
software is to operate a scanner or scanning station, the
term is merely descriptive of this purpose or use of the
goods. We believe that a consumer for software for imaging
applications before them. Nor are they necessarily “experts” in
the operation or functioning of those goods. Moreover, in this
particular intent-to-use case, it should be borne in mind that
there are simply no specimens showing use of the mark or any
product literature pertaining to the goods.
8 The Examining Attorney also made the misstatements in her brief
noted by the dissent.
Ser. No. 75/392,138
11
scanners will know that the scanner requires software and,
thus, upon seeing the mark SCANNING STATION used for
software for imaging scanners, would immediately understand
that the purpose of the software is to run the scanner or
scanning station.
Overlooked, we believe, is that we must make a
determination of mere descriptiveness on the basis of the
evidence of record. A discussion of this evidence bearing
on the issue of mere descriptiveness is conspicuously
lacking from the dissent. If there is evidence of record
demonstrating that the asserted mark is merely descriptive
of its goods, then an application should not be allowed
merely because the Examining Attorney may not have artfully
articulated the precise reasoning for the refusal in the
first Office action of this intent-to-use application, or
made the technically incorrect statement in her brief that
applicant’s software “enable[s] a user to turn a personal
computer into a SCANNING STATION to scan images.”
Because we believe that the record adequately shows
that the mark SCANNING STATION is merely descriptive of
software used in connection with scanners or scanning
stations, the refusal of registration is affirmed.
Ser. No. 75/392,138
12
Hanak, Administrative Trademark Judge, dissenting:
I respectfully dissent. As has been stated
repeatedly, “a term is merely descriptive if it forthwith
conveys an immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978) (emphasis added); Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976).
Moreover, the immediate idea must be conveyed forthwith
with a “degree of particularity.” In re TMS Corp. of the
Americas, 200 USPQ 57, 59 (TTAB 1978); In re Entenmann’s
Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d 90-1495 (Fed.
Cir. February 13, 1991).
As noted by the majority, applicant seeks to register
SCANNING STATION for “personal computer software for
imaging scanners.” (emphasis added). This identification
of goods was set forth in applicant’s initial application,
and the identification has never been questioned by the
examining attorney.
In her first Office Action dated September 28, 1998,
the examining attorney contended that the mark SCANNING
Ser. No. 75/392,138
13
STATION “merely describes the goods because the goods are a
STATION for SCANNING.” In her brief dated June 8, 2000,
the examining attorney contended at page four “that the
mark SCANNING STATION is merely descriptive of the
applicant’s software in that the purpose of the software
for image scanners is to enable a user to turn a personal
computer into a SCANNING STATION to scan images.”
At the oral argument, the examining attorney conceded
that the foregoing statements contained in her first Office
Action and in her brief are absolutely wrong. Indeed,
applicant had consistently attempted to educate the
examining attorney as to the inaccuracy of her contentions.
Applicant’s computer software is simply not “a STATION for
SCANNING.” Applicant’s computer software cannot scan
anything. Moreover, applicant’s computer software cannot
“turn a personal computer into a SCANNING STATION to scan
images.” In order to scan images, one must have certain
hardware, namely, a scanner. No amount of computer
software will, by itself, allow one to scan images or to
convert a personal computer into a scanner.
Ser. No. 75/392,138
14
Despite having considered the application on at least
four occasions,9 the examining attorney, until the oral
hearing, still had a totally erroneous view of the
9 First Office Action; second Office Action; response to
applicant’s request for reconsideration; and preparation of her
brief.
Ser. No. 75/392,138
15
qualities and characteristics of applicant’s computer
software. Obviously, examining attorneys are highly
trained professionals who scrutinize marks to a far greater
degree than do ordinary purchasers. If after studying
applicant’s mark in relation to applicant’s goods on at
least four occasions, the examining attorney nevertheless
came away with totally erroneous ideas as to the qualities
or characteristics of applicant’s goods, then I fail to see
how it can be said with any degree of candor that an
ordinary consumer, upon seeing applicant’s mark in
connection with applicant’s goods, would forthwith gain an
immediate idea of the qualities or characteristics of
applicant’s goods. At an absolute minimum, the inability
of the examining attorney to correctly understand any
quality or characteristic of applicant’s computer software
based upon a lengthy consideration of applicant’s mark in
relationship to applicant’s goods indicates that there are
doubts as to whether applicant’s mark is merely descriptive
of its goods. When such doubts exist, it has been the
practice of this Board to resolve the doubts in favor of
the applicant on the issue of mere descriptiveness. In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Some final comments are in order. The majority states
that “most of the dissent criticizes the examining
Ser. No. 75/392,138
16
attorney.” This is simply not true. Earlier I noted that
“examining attorneys are highly trained professionals” who
perform their jobs with a great deal of care. To be
perfectly clear, this comment was intended to apply not
only to examining attorneys in general, but also to the
particular examining attorney handling this case.
If there is any criticism directed at examining
attorneys, the criticism comes not from the dissent, but
rather from the majority. The majority correctly notes
that a determination of whether a mark is merely
descriptive must be made from the perspective of ordinary
purchasers of the goods or services for which the mark is
sought to be registered. The majority then goes on to note
that examining attorneys are simply “professionals in
trademark law, not necessarily in the goods which with a
mark being examined may be used.” In short, while not
explicitly saying so, the majority is implicitly saying
that compared to ordinary purchasers, examining attorneys
are not as knowledgeable about the goods or services which
they deal with on a daily basis. While this may be true
with regard to highly specialized goods such as heart
implant devices, it certainly is not true with regard to
common office products such as scanners.
Ser. No. 75/392,138
17
Thus, if an examining attorney carefully studies a
mark used in connection with common goods or services and
still is unable to correctly identify any quality or
characteristic of such goods or services, then I simply
fail to see how it can be said that an ordinary consumer
would be able to immediately and correctly identify any
quality or characteristic. This is particularly true given
the fact that ordinary consumers spend just a matter of
seconds glancing at a mark, whereas examining attorneys
carefully scrutinize marks.
One additional point needs to be clarified. Had the
examining attorney simply misconstrued the qualities or
characteristics of applicant’s goods in the first Office
Action and then later corrected herself, I would not be
dissenting. However, the examining attorney’s
misunderstanding of the qualities and characteristics of
applicant’s software continued throughout the examination
process and indeed even in her brief. The majority would
have one believe that the examining attorney “got it right”
at all times after the first Office Action. This is simply
wrong. As noted earlier, in her brief dated June 8, 2000
the examining attorney contended at page four “that the
mark SCANNING STATION is merely descriptive of the
applicant’s software in that the purpose of the software
Ser. No. 75/392,138
18
for image scanners is to enable a user to turn a personal
computer into a SCANNING STATION to scan images.” As
previously noted, this is a totally erroneous statement.
Moreover, the examining attorney at the oral hearing
conceded that it is a totally erroneous statement.10
10 Footnote 7 of the majority opinion is perplexing because the
dissenting opinion does not contain the statements set forth in
the first sentence of footnote 7.