Technicolor Delivery Technologies

Trademark Trial and Appeal Board

May 31, 2013

No. 79098503 (T.T.A.B. May. 31, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Technicolor Delivery Technologies
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Serial No. 79098503
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Michelle Visser of Rader Fishman & Grauer PLLC for Technicolor Delivery
Technologies.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Bucher, Holtzman and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Technicolor Delivery Technologies (“applicant”) filed an application on the
Principal Register for the mark MEDIA TOUCH, in standard character form, for
the goods and services set forth below (as amended):
Apparatus for recording, transmission and reproduction of
sound and images, namely, multimedia Internet tablet
computers, communication terminals primarily comprised
of computer hardware, multimedia electronic book
readers, touch panels; telecommunication apparatus,
namely, telephone apparatus; cameras; downloadable
electronic books featuring a wide variety of subjects,
namely, art, science, entertainment, lifestyles, religion,
cartoons, comics, self-help, music, health, exercise, travel
and technology, in Class 9;
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Telecommunication services, namely, electronic
multimedia data transmission services, electronic
information transmission services, particularly via global
communication networks and private or restricted access
networks; communication via computer terminals,
videophone services, namely, providing telephone
communication and electronic video transmission, radio
and television broadcasting services and transmission
services, namely, communication by radio and television
transmissions transmission of data, sounds and images to
users for downloading purposes, in Class 38; and
Providing online, non-downloadable, pre-recorded music
via a computer network, in Class 41.1
The application is based on a request for extension of protection filed under Section
66(a) of the Trademark Act of 1946, 15 U.S.C. § 1144f(a).
The Trademark Examining Attorney refused to register applicant’s mark for
the goods in Class 9 on the ground that it is merely descriptive. Section 2(e)(1) of
the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1). According to the Trademark
Examining Attorney,
… [t]he applicant is providing goods in International
Class 009 that are used to access and consume media,
such as movies, television shows, and books. Users of
these devices control and interact with these goods by
touching icons and targets on a touch screen.
Furthermore, the applicant is providing touch panels that
are used in media devices and electronic books that area
[sic] a form of media that is accessed through a
touch/panel interface.2
A term is merely descriptive if it “immediately conveys … knowledge of the
ingredients, qualities, or characteristics of the goods … with which it is used." In re

1 Applicant disclaimed the exclusive right to use the word “Media” as to the services in
International Classes 38 and 41.
2 Trademark Examining Attorney’s Brief, p. 3 (unnumbered).
Serial No. 79098503

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Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the term is used,
not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). This requires consideration of the context in which the mark is used
or intended to be used in connection with those goods, and the possible significance
that the mark would have to the average purchaser of the goods in the marketplace.
See In re Chamber of Commerce, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); In re Bayer, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture
Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether someone
presented only with the mark could guess the products listed in the description of
goods. Rather, the question is whether someone who knows what the products are
will understand the mark to convey information about them. In re Tower Tech, Inc.,
64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
the question of whether the combination of terms evokes a new and unique
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commercial impression. If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc.
v. Commissioner, 252 U.S. 538, 543 (1920). See also In re Tower Tech, Inc., 64
USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial
cooking towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
information services in the food processing industry). However, a mark comprising
a combination of merely descriptive components is registrable if the combination of
terms creates a unitary mark with a unique, nondescriptive meaning, or if the
composite has a bizarre or incongruous meaning as applied to the goods or services.
See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR &
SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-
RAKE for “a snow removal hand tool having a handle with a snow-removing head at
one end, the head being of solid uninterrupted construction without prongs”). Thus,
we must consider the issue of descriptiveness by looking at the mark in its entirety.
“On the other hand, if one must exercise mature thought or follow a multi-
stage reasoning process in order to determine what product or service
characteristics the term indicates, the term is suggestive rather than merely
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descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See
also, In re Shutts, 217 USPQ at 364-65; In re Universal Water Systems, Inc., 209
USPQ 165, 166 (TTAB 1980). In this regard, “incongruity is one of the accepted
guideposts in the evolved set of legal principles for discriminating the suggestive
from the descriptive mark.” In re Shutts, 217 USPQ at 365. See also In re Tennis in
the Round, Inc., 199 USPQ at 498 (the association of applicant’s mark TENNIS IN
THE ROUND with the phrase “theater-in-the-round” creates an incongruity
because applicant’s services do not involve a tennis court in the middle of an
auditorium).
The word “Media” is defined, inter alia, as follows:
The means of communication, as radio and television,
newspapers and magazines, that reach or influence people
widely.3
The word “Touch” is defined, inter alia, as follows:
To put the hand, finger, etc. on or into contact with
(something) to feel it. … to come into contact with and
perceive (something), as the hand or the like does. … to
bring (the hand, finger, , etc. or something held) into
contact with something.4

3 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
1193 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also the definition from
thefreedictionary.com attached to the August 3, 2011 Office action.
4 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
2001. See also the definition from thefreedictionary.com attached to the August 3, 2011
Office action.
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Thus, the literal meaning of the term MEDIA TOUCH is contact with media. We
now analyze whether based on the evidence of record MEDIA TOUCH has any
meaning in the electronics industry.
In his March 5, 2012 Office action, the Trademark Examining Attorney
submitted two news articles posted on the Internet reviewing applicant’s MEDIA
TOUCH products. The wirelessgoodness.com website has the following information:
Technicolor’s Media Touch 2.0 Android tablet combines
IPTV, VoIP and other acronyms
… The company’s Media Touch 2.0 TVA200 Android
Tablet, which made its way through the FCC today,
features a 7” 800 x 480 capacitive touch screen, Freescale
ARM Cortex A8 CPU running at 800MHz, front facing
camera, WiFi and optional 3G.
… PCCW customers can use the Media Touch tablet to
play IPTV, place video calls, and connect to the Internet.
Down the road, Technicolor expects other service
providers to offer customized versions for [sic] of the
Media Touch tablet that adds [sic] value to triple or quad-
play service packages.
Applicant contends that this evidence is sufficient to show that “applicant is
providing goods with touch panel/interfaces that are used to access and consume
media.”5 However, the evidence is not sufficient to prove that the mark MEDIA
TOUCH directly and immediately conveys information about the character, quality,
or features of the applicant’s products. Based on the record herein, we agree with
applicant that the mark MEDIA TOUCH used to identify the goods in the
application, specifically Internet tablet computers and electronic touchscreens, does
not immediately impart with any degree of particularity information about the

5 Trademark Examining Attorney’s Brief, p. 4 (unnumbered).
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goods. In short, it cannot be said that MEDIA TOUCH readily and immediately
calls to mind or evokes an understanding of any quality, characteristic or feature of
Internet tablet computers and touchscreen electronics. There is no evidence of the
term MEDIA TOUCH having any meaning in the electronics industry. “The
concept of mere descriptiveness … must relate to general and readily recognizable
word formulations and meanings, either in popular or technical usage contexts, and
should not penalize coinage of hitherto unused and somewhat incongruous word
combinations whose import would not be grasped without some measure of
imagination and ‘mental pause.’” In re Shutts, 217 USPQ at 364-65.
With all the millions of websites, the Examining Attorney submitted two
websites both introducing applicant’s MEDIA TOUCH products to the American
market. There is no other evidence regarding MEDIA TOUCH in the record. This
leads to the conclusion that the term MEDIA TOUCH is not a natural or obvious
way to describe Internet tablet computers or touchscreen electronics. Thus, the
import of the term MEDIA TOUCH would not be grasped without some measure of
imagination or mental pause. In re Shutts, 217 USPQ at 365. With the mark
MEDIA TOUCH, applicant appears to have applied an imaginative twist that rises
above the level of mere descriptiveness and does not remove a desired
characterization from the lexicon.
Based on the record before us, the term MEDIA TOUCH possesses enough
incongruity or creativity to raise doubts as to whether it is merely descriptive
because its meaning would not be grasped without some measure of imagination
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and thought. Accordingly, the term MEDIA TOUCH in connection with Internet
tablet computers and touchscreen electronics does not readily and immediately
evoke an impression and understanding of the goods at issue.
We recognize that there is often a thin line separating merely descriptive
from suggestive terms and that judgments in these cases are frequently subjective.
However, where there is doubt in the matter, the doubt should be resolved in
applicant's behalf. In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984)
and authority cited therein.
In view of the foregoing, we find that the mark MEDIA TOUCH is suggestive,
not merely descriptive, of touchscreen electronics.
Nevertheless, in view of the definition of the word “Media” as “a means of
communication” and the fact that applicant’s goods in Class 9 are, inter alia,
multimedia Internet tablet computers, communication terminals and “downloadable
electronic books featuring a wide variety of subjects, namely, art, science,
entertainment, lifestyles, religion, cartoons, comics, self-help, music, health,
exercise, travel and technology,” we find that the word “Media” is merely descriptive
and must be disclaimed. Section 6(a) of the Trademark Act of 1946, 15 U.S.C. §
1056(a), and Trademark Rule 2.142(g) (“An application which has been considered
and decided on appeal will not be reopened except for the entry of a disclaimer
under Section 6 of the Act of 1946”). This finding is corroborated by the news
articles noting that consumers will be able to use applicant’s “Media Touch tablet to
play IPTV, place video calls, and connect to the Internet.”
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Accordingly, we affirm the refusal to the extent that the mark may not be
registered without a disclaimer of the word “Media.” See In re Country Music
Association Inc., 100 USPQ2d 1824, 1835 (TTAB 2011).
Decision: The refusal to register is affirmed to the extent that the word
“Media” in the mark is merely descriptive.
Applicant is allowed thirty days from the mailing date of this decision to
submit the required disclaimer of “Media” to the Board, in which case this decision
will be set aside and the application will be forwarded to publication.6

6 The standard printing format for the required disclaimer text in this application is as
follows: “No claim is made to the exclusive right to use ‘Media’ apart from the mark as
shown.” TMEP §1213.08(a)(i) (April 2013).