Sony Electronics Inc.

Trademark Trial and Appeal Board

Jan 4, 2007

No. 76460006 (T.T.A.B. Jan. 4, 2007)

Oral Hearing: October 26, 2006 Mailed: January 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sony Electronics Inc.
________

Serial No. 76460006
_______

Robert B.G. Horowitz of Cooper & Dunham LLP for Sony
Electronics Inc.

Kevon Chisolm, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Hohein, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Sony Electronics Inc., a Delaware corporation, has
applied to register the mark ROUGH CUT in standard
character form on the Principal Register, as amended, for
“video and data storage system consisting of a storage
drive, data storage tapes, cables and application software
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 76460006
2
used for scanning and creating back-up files for storage of
video and data.”1
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark is merely descriptive of a
feature or quality of applicant’s goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs and
applicant filed a reply brief. In addition, applicant and
the examining attorney presented arguments directed toward
the issue on appeal in an oral hearing held on October 26,
2006.
Applicant contends that its proposed mark is just
suggestive and does not immediately describe its goods or a
characteristic thereof. More specifically, applicant
argues that the examining attorney defines “rough cut” as a
preliminary edit of raw video footage; that, however,
applicant’s goods perform no editing function; that,
rather, applicant’s goods are used solely for storage of
video data at any stage of editing; that purchasers and
users of its goods thus would need to “exercise mature

1 Application Serial No. 76460006 was filed on October 15, 2002,
based on applicant’s assertion of a bona fide intent to use the
mark in commerce on the goods.

Ser No. 76460006
3
thought or follow a multi-stage reasoning process to
determine any descriptive meaning of ROUGH CUT in relation
to [applicant’s] goods” (brief, p. 7); and that, as a
result, the mark ROUGH CUT is, at most, suggestive of the
recited goods. Applicant has relied upon copies of printed
advertisements, reproduced below, for the goods identified
by the subject mark.

Ser No. 76460006
4

Applicant further relies upon the declaration of Mr.
Alan Sund, applicant’s Director of Tape Sales and IT
Storage Solutions. Portions of Mr. Sund’s declaration are
reproduced below:
6. When editing video, a person will take
existing video data and modify it on a computer
using instructions and commands. The person will,
if using a Macintosh OS-based computer (which are
the computers that interface with Sony's ROUGH
CUT goods) use an editing software program…and
Ser No. 76460006
5
modify the video data with same. When a person
reaches a point of completion, he or she will
save the modified video in a storage medium of
some kind, which is either on tape or in a hard
drive. However, should such a person wish to
modify the saved video in the future, the
instructions and commands originally used to
modify the video are not available and much time
will be spent in recreating many of the same
instructions and commands when modifying the
video. As explained below, although Sony's goods
do not play a role in the actions involved with
actual video editing they do solve the above
mentioned problem.

7. Sony's ROUGH CUT goods are comprised of an
AIT2 data storage drive, high density storage
tapes, MEZZO AV storage application software, and
cables for connection to a computer. When used,
the video data is stored onto the storage tapes
with the commands and instructions used in the
editing. This means that if a person ever wishes
to change the video data in the future, he or she
may do so far more easily since the instructions
and commands used in the previous modification
are accessible.

8. Importantly, the ROUGH CUT goods are used to
store video data in any form (i.e., unedited,
fully edited or partially edited) and perform no
other function. Their desirability to users is
that they store all video works with the editing
instructions and commands intact. Their
application is not limited to raw video footage
being stored in the ROUGH CUT goods, the footage
then edited by a computer, and then stored back
in the ROUGH CUT goods. In many cases, finished
videos will be stored using ROUGH CUT goods
without the unedited video data first being
stored.

In addition, applicant submitted with its brief printouts
from the United States Patent and Trademark Office’s
Internet-based Trademark Applications and Registrations
Ser No. 76460006
6
Retrieval (TARR) system of third-party registrations for
the marks ROUGH DRAFT and ROUGH-COTE. According to
applicant, these third-party registrations “support the
conclusion that [applicant’s] ROUGH CUT mark is suggestive
of its goods” (brief, p. 11).
The Examining Attorney maintains that the mark merely
describes a feature or quality of the goods.2 In
particular, the examining attorney argues that the goods
identified in the subject application are “used for
completing rough cuts” (brief, unnumbered p. 3); that the
mark ROUGH CUT “immediately conveys to potential purchasers
that the goods are used for making a rough cut of a film”
(id.); that, “[a]t the very least, applicant’s storage
system allows video editors to store various versions of
‘rough cuts’ so those editors can easily access those rough
cuts and continue the editing process” (brief, unnumbered
p. 5); and that, as a result, the mark ROUGH CUT merely
describes a function or feature of the goods. In addition,
pursuant to Trademark Rule 2.142(d), the examining attorney

2 The examining attorney filed his brief on this appeal nine days
late. With his brief, the examining attorney filed a motion to
accept the brief as timely filed. Applicant’s objection to the
examining attorney’s motion, raised in its reply brief,
subsequently was withdrawn at oral hearing. Accordingly, and in
the interest of coming to a determination on the merits of the
issue on appeal, we will consider the examining attorney’s brief
as timely filed.

Ser No. 76460006
7
objects to the third-party registrations appended to
applicant’s brief on the ground that they were not properly
made of record prior to appeal.
In support of the refusal, the examining attorney has
made of record articles retrieved from the Nexis database
and Internet web pages. Excerpts from these articles and
web pages follow (emphasis added):
On the other hand, running Final Cut Pro, the
PowerBook rendered a three-second cross-dissolve
in just over 13 seconds, barely enough time to
get that fourteenth cup of coffee. For
assembling rough cuts or most simple editing
tasks, software rendering is acceptable at these
processor speeds.
(EMedia Magazine, May 1, 2002)

“The bottom line,” says the ABC’s international
communications manager, Tony Hill, “is making our
people as flexible as possible. Doing a bi-media
[radio and television] assignment, they will
travel with digicam and a laptop with video-
editing software so they can do a rough cut of
images, either sent back via the Internet or on
tape.”
(Sydney Morning Herald, March 11, 2002)

Discovery is in the process of expanding the
pilot to roll out an enterprise wide media
management system with a single repository for
video from B-roll to archives to rough cuts using
Artesia’s digital management software known as
TEAMS. This software takes the logged video and
incorporates it into a central repository of
digital content, including not only video but
also text, music and still photos. The software
Ser No. 76460006
8
is then used to create rough cuts of shows…The
production team on “Living Pulse”, slated to run
internationally on Discovery Health later this
year, used database software to manage its rough
cuts, which had been transported digitally across
the system.

(Electronic Media, September 10, 2001)

No more waiting while tapes rewind; just point
and click to watch any take instantly. You can
even use the StormVision software’s assemble mode
to do a rough cut on the fly….

(Daily Variety, June 25, 1999)

Kennedy says Flashcut is conducting a test with
client Leo Burnett Advertising downloading rough
cuts using a software called Creative Partner
which allows the client to annotate the cut. He
says it has only been used for testing because
the image quality is inferior and, at
conventional speed, is too slow to be efficient.

(Playback, November 20, 1995)

SONY’S ROUGH CUT BUNDLE STARS AS BACKUP SOLUTION
FOR VIDEO EDITORS

“The Rough Cut kit is an engine to reduce re-work
and help satisfy clients. Managers will value
the way this solution boosts productivity and
streamlines workflow. Editors will benefit
because they can focus on delivering their most
effective and creative work – not on re-
digitizing, re-loading, and recreating files.”

The first releases of the Rough Cut video editing
storage kits are designed specifically for the
post-production process using Apple Macintosh™
computer-based systems. It is ideal for
independent videographers, corporate A/V
departments and video production service firms….

Ser No. 76460006
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The Rough Cut video editing storage kit relies on
advanced AIT technology to enable fast, reliable
storage and retrievals….

The kit includes Mezzo ES Generation 4 software
that was specifically developed for project-based
editing storage. Mezzo uses a drag-and-drop
interface that allows users to automatically back
up digital files to free space on their systems,
while preserving their ability to review, restore
and edit earlier sessions….

Sony’s initial AIT-2 Rough Cut video editing
storage solution, identified by the model number
RCUT210MAC1, will be available in May for a
suggested retail price of $1,999, representing a
substantial savings of 30 percent over individual
component purchases.

(http://news.sel.sony.com/pressrelease/3501)

Applicant argues in reply that the evidence relied
upon by the examining attorney supports applicant’s
contention that its goods are used solely for storage of
video images; that its goods do not perform any editing
functions; and that, as a result, the mark ROUGH CUT is
suggestive of applicant’s goods. In addition, applicant
argues that the examining attorney asserted for the first
time in his brief that because applicant’s goods may be
used to store “rough cuts,” the mark is merely descriptive
thereof; and that applicant submitted the third-party
registrations with its brief in order to address that new
argument. Applicant requests that, in view of the
foregoing, the Board suspend the instant appeal and remand
Ser No. 76460006
10
the case to the examining attorney for consideration of the
third-party registrations.
We first turn to the examining attorney’s objection
and to applicant’s request for suspension of the appeal and
remand to the examining attorney for further examination.
We note initially that, as contended by the examining
attorney, the third-party registrations appended as
exhibits to applicant’s main brief are manifestly untimely.
See Trademark Rule 2.142(d) (the record in the application
should be complete prior to the filing of an appeal). We
note in addition that inasmuch as the issue on appeal is
fully briefed, and the applicant and examining attorney
have presented arguments thereupon at oral hearing, this
matter is ripe for decision. We further note, however,
applicant’s assertion that it submitted the exhibits at
issue in response to an argument raised by the examining
attorney for the first time in his brief on appeal. An
examination of the prosecution history of the involved
application reveals this to be the case. Thus, while we do
not find that suspension of the appeal and remand to be
appropriate at this time, we will exercise our discretion
to deem the third-party registrations to be made of record
and consider them for their probative value with regard to
the issue on appeal.
Ser No. 76460006
11
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality, feature or
characteristic thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
In the instant case, the evidence made of record by
the examining attorney and applicant supports a finding
that, as applied to applicant's goods, the term ROUGH CUT
Ser No. 76460006
12
would immediately describe, without conjecture or
speculation, a significant characteristic or feature of the
goods, namely, that they may be used to store video images
in “rough cut” form. Articles submitted by the examining
attorney from the Nexis database establish that the term
“rough cut” describes video data in partially edited form.
It is settled that excerpts from articles taken from the
Nexis database are competent evidence of how a mark may be
perceived. See In re Shiva Corp., 48 USPQ2d 1957 (TTAB
1998). The press release from applicant’s Internet
website, made of record by the examining attorney and
reproduced above, establishes that the goods identified by
applicant’s ROUGH CUT mark are useful, inter alia, to video
editors “by preserving their ability to review, restore and
edit earlier sessions….” Applicant’s press release further
describes the goods as “The Rough Cut video editing storage
kit.” Material obtained from the Internet is acceptable in
ex parte proceedings as evidence of potential public
exposure to a term. See In re Fitch IBCA, Inc., 64 USPQ2d
1058 (TTAB 2002). In addition, applicant’s printed
advertisement for its goods under the ROUGH CUT mark
indicate that the goods provide “advanced video editing
storage.” Thus, prospective purchasers, upon confronting
the term ROUGH CUT for applicant's goods, would immediately
Ser No. 76460006
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perceive that the goods are used to store video images,
including “rough cuts,” for possible further editing.
The third-party registrations submitted by applicant
for the marks ROUGH DRAFT and ROUGH-COTE for unrelated
goods are of little help in determining the registrability
of the mark at issue in this case. As often noted by the
Board, each case must be decided on its own set of facts,
and we are not privy to the facts involved with these
registrations. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”] See also In re Best Software Inc., 58 USPQ2d 1314
(TTAB 2001). While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based upon the record before us, whether applicant's mark
is registrable.
We note applicant’s argument that its goods do not
perform any editing function; and that, as a result, the
ROUGH CUT mark is just suggestive thereof. However, in
setting forth its argument, applicant appears to ignore the
above-referenced evidence demonstrating that ROUGH CUT
immediately conveys a significant feature or characteristic
Ser No. 76460006
14
of applicant’s goods, namely, that they may be used to
store partially edited video data, or “rough cuts.”
Applicant’s insistence that its goods do not create “rough
cuts” is simply unpersuasive in light of the above-
referenced evidence that its ROUGH CUT mark merely
describes a type of video data that may be stored by its
goods for ease of any further editing.
Accordingly, we find that applicant's mark is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.