SVSiDownload PDFTrademark Trial and Appeal BoardAug 25, 2014No. 85539240 (T.T.A.B. Aug. 25, 2014) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: August 25, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SVSi ________ Serial No. 85539240 _______ Angela Holt and Kristi M. Wilcox of Bradley Arant Boult Cummings LLP for SVSi. Alec Powers, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Quinn, Cataldo and Ritchie, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, SVSi, filed an application to register as a mark on the Principal Register the designation NETWORKED AV in standard characters for “electronic transmitters and receivers for Video over IP network” in International Class 9.1 1 Serial No. 85539240 was filed on February 10, 2012 under Section 1(a) of the Trademark Act, asserting January 11, 2012 as a date of first use of the term as a mark anywhere and in commerce. Serial No. 85539240 2 The Trademark Examining Attorney refused registration on the ground that the proposed mark is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). After applicant amended its application to seek registration on the Supplemental Register on November 26, 2012, the Examining Attorney refused registration, under Section 23 of the Trademark Act, 15 U.S.C. § 1091, on the ground that Applicant’s proposed mark is generic and, thus, incapable of identifying Applicant’s goods and distinguishing them from those of others. When the refusal was made final, Applicant appealed. Applicant and the Examining Attorney have filed briefs on the issue under appeal. In support of the refusal to register, the Examining Attorney made of record the following dictionary definition of “network” – Computer Science A system of computers interconnected by telephone wires or other means in order to share information. Also called net;2 and AV – audio-visual.3 Based upon these definitions, NETWORKED AV may be defined, according to the Examining Attorney, as audio-visual equipment for use on a computer network. In addition, the Examining Attorney submitted with his three Office Actions articles retrieved from various Internet web pages. Certain excerpts from these articles follow (emphasis supplied by the Examining Attorney): 2 Education.yahoo.com/reference/dictionary, submitted with May 25, 2012 Office Action. 3 Id. Serial No. 85539240 3 itreviews.com Onkyo Tx-NR509 networked AV receiver review; 3D-ready networked AV receiver;4 amazon.com Pioneer AS-WL300 WiFi Adapter for 2011 Networked AV Receivers - VSX-1021;5 odfeed.net The Networked AV Podcast From Sound and Video Contractor Magazine, the Networked AV Podcast features interviews with AV industry leaders discussing recent installations using networked audio, video and communications and the technology behind today’s networked AV hardware;6 ziogiorgio.com Stewart Audio and Attero Tech showcase new networked AV products at ISE 2012. These new product introductions are…a commitment to bringing the highest quality networked AV products to market….;7 analog.com Yamaha/Blackfin Converge on Prototype for a Networked AV Center;8 wwstereo.com Harman Kardon AVR 1510 5.1 Channel Networked AV Receiver;9 clasifimas.com STRDA5500ES Home cinema 7.1ch Networked AV Receiver HD sound DLNA;10 residentialsystems.com All three companies point out that their transmitters can be connected to the zone outputs of networked AV receivers to 4 Id. 5 Id. 6 Id. 7 Id. 8 Submitted with June 24, 2013 Office Action. 9 Id. 10 Id. Serial No. 85539240 4 create a relatively sophisticated multiroom-audio system;11 hometheatertips.com Network Your Home Theater Whether for devices like AppleTV, Blu-ray players, game consoles, home theater PC’s infra-red repeater systems, networked audio/video baluns, or any number of as yet unforeseen home theater devices, you can bet that eventually you’ll find that “killer app” for net connectivity in the living room;12 wyrestorm.com The AMP-001-010 combines networked AV, local audio input and 2x25w Class D amplification, with the distribution benefits of single wire HDBase;13 and appliedvideo.com Networked AV AVT Vendor Partner Links Video Production and Broadcast Networked AV Systems Video Streaming and Conferencing Digital Signature Product Specials.14 A mark is a generic name if it refers to the class, genus or category of goods and/or services on or in connection with which it is used. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). The test for determining whether a mark is generic is its primary significance to the relevant public. See Section 14(3) of the Act, 15 U.S.C. § 1064. See also In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic 11 Id. 12 Id. 13 Id. Serial No. 85539240 5 Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 228 USPQ at 530. The Examining Attorney has the burden of establishing by clear evidence that a proposed mark is generic and thus unregistrable. See In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the relevant public’s understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). In the case of In re American Fertility Society, supra, our primary reviewing court stated that if the PTO can prove “(1) the public understands the individual terms to be generic for a genus of goods and species; and (2) the public understands the joining of the individual terms into one compound word to lend no additional meaning to the term, then the PTO has proven that the general public would understand the compound term to refer primarily to the genus of goods or services described by the individual terms.” (Id. at 1837.) In the case of In re Dial-A-Mattress Operating Corp., supra, 1-888-M-A- T-R-E-S-S for “telephone shop-at-home retail services in the field of mattresses,” the court further clarified the test as follows (Id. at 1810): 14 Id. Serial No. 85539240 6 Where a term is a “compound word” (such as “Screenwipe”), the Director may satisfy his burden of proving it generic by producing evidence that each of the constituent words is generic, and that “the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound.” In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir. 1987). However, where the proposed mark is a phrase (such as “Society for Reproductive Medicine”), the board “cannot simply cite definitions and generic uses of the constituent terms of a mark”; it must conduct an inquiry into “the meaning of the disputed phrase as a whole.” In re The Am. Fertility Soc'y, 188 F.3d at 1347, 51 USPQ2d at 1836. The In re Gould test is applicable only to “compound terms formed by the union of words” where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends “no additional meaning to the term.” Id. at 1348-49, 51 USPQ2d at 1837. We begin by finding that that the genus of goods at issue in this case is adequately defined by Applicant’s identification thereof. Accordingly, we find that “electronic transmitters and receivers for Video over IP network” is the name of a genus of goods. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration”). For purposes of clarification, we hereby take judicial notice of the following definition of “IP” – Internet Protocol: a communications protocol for computers connected to a network, especially the Internet, specifying the format for addresses and units of transmitted data.”15 15 Dictionary.com, unabridged, based on the Random House Dictionary, 2014. The Board may take judicial notice of dictionary definitions, including those in online dictionaries which exist in printed format. In re Premiere Distillery, LLC, 103 Serial No. 85539240 7 Turning to the second inquiry, the public’s understanding of the term, the relevant public consists of the ordinary consumer interested in transmitting and receiving audio-visual information over the Internet or other computer network. As noted above, the evidentiary burden of establishing that a term is generic rests with the USPTO and the showing must be based on clear evidence. Merrill Lynch, 4 USPQ2d at 1143. Based on this record, we find that there is clear evidence to support a finding that the relevant public, when they consider NETWORKED AV in conjunction with the genus of involved goods, would readily understand the term to identify a type of electronic transmitter or receiver used to share, i.e., transmit or receive, video over the Internet or other computer network. The evidence of record clearly establishes that the term AV is a shorthand name for “audio-visual” and that the modifying term NETWORKED is the name for devices with computing capability interconnected by telephone wires or the Internet. Thus, the record in this case establishes that NETWORKED and AV are generic for the recited goods. Accordingly, we must consider the effect of combining these terms. We find the addition of NETWORKED to AV in this case does not create any source-identifying significance and the record clearly establishes that the proposed mark is generic. The record shows that AV is a generic USPQ2d 1483, 1484 (TTAB 2012); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85539240 8 term. The record also establishes that the term NETWORKED, which modifies AV, is also a generic term Therefore, NETWORKED AV is the combination of two generic terms joined to create a compound, notwithstanding the space between its component terms. See In re Eddie Z's Blinds, 74 USPQ2d 1037, 1041-42 (TTAB 2005); and In re American Institute of Certified Public Accountants, 65 USPQ2d 1972, 1982 n. 8 (TTAB 2003). Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.” Gould, 5 USPQ2d at 1111-12. See also In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010). The circumstances of this case are similar to those in 1800Mattress.com where the Federal Circuit affirmed the Board's finding that mattress.com is generic, because the record demonstrated others’ need to use the term. In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009). Here, a competitive need to use “networked av” is demonstrated by the evidence showing that such term is being used by others as the generic name for goods, including receivers and transmitters, used to access audio-visual signals by means of computer networks, including the Internet. Therefore, the combination of these generic terms for transmitters and receivers providing audio-visual signals over the Internet cannot Serial No. 85539240 9 transform the designation into a trademark. See Wm. B. Coleman, 93 USPQ2d at 2026. Nor are we persuaded that because Applicant demonstrates that there is no definition of NETWORKED AV in an Internet dictionary, the term somehow is not generic for the recited goods.16 The fact that a term is not found in a dictionary is not controlling on the question of registrability if the Examining Attorney can show that the term has a well understood and recognized meaning. See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jellies and jams). In view of the above, the Examining Attorney has met his burden to establish that NETWORKED AV is generic and incapable of registration for “electronic transmitters and receivers for Video over IP network.” Decision: The refusal to register is affirmed. 16 Applicant’s May 28, 2013 communication, Exhibit D, retrieved from techdirt.com. Copy with citationCopy as parenthetical citation