Utility Associates, Inc.

Trademark Trial and Appeal Board

Dec 1, 2016

No. 86389465 (T.T.A.B. Dec. 1, 2016)

Hearing: November 17, 2016 Mailed: December 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Utility Associates, Inc.
________

Serial No. 86389465
_______

Stephen M. Schaetzel of Meunier Carlin & Curfman LLC for Utility Associates, Inc.

Christina M. Riepel, Trademark Examining Attorney, Law Office 108 (Andrew
Lawrence, Managing Attorney).1
_______

Before Cataldo, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Utility Associates, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark:

1 Caryn Glasser examined this application during prosecution. Heather Biddulph represented
the United States Patent and Trademark Office (“USPTO”) at oral hearing.
This Opinion is not a
Precedent of the TTAB
for the following goods and services:

Cameras; Cellular phones; Digital cameras; Microphones in
International Class 9; and

Application service provider (ASP) featuring software for use with
wireless mobile devices for use in obtaining, recording, storing and
maintaining data and other records and evidence, including video and
audio; Consulting services in the field of collection of evidence for
forensic purposes; Providing information in the field of collection of
evidence for forensic purposes in International Class 42.2

The Trademark Examining Attorney refused registration of Applicant’s mark
absent a disclaimer of the wording “BODYWORN” because it is merely descriptive,
and thus is an unregistrable component of the mark under 15 U.S.C. §§ 1052 (e)(1),
1056(a). We affirm the refusal to register.
Evidentiary Matter
Applicant attached as exhibits to its appeal brief a printed copy of a news article
dated April 29, 2016, and a printed copy of a third-party registration for the mark
BODYCAM issued on March 18, 2014.3 Trademark Rule 2.142(d) reads as follows:
The record in the application should be complete prior to
the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence filed
with the Board by the appellant or by the examiner after
the appeal is filed.

2 Application Serial No. 86389465 was filed on September 9, 2014 based upon Applicant’s
allegation of its bona fide intent to use the mark in commerce in connection with the recited
goods and services.
“Color is not claimed as a feature of the mark.”
“The mark consists of a unitary composite including a stylized shield design with the words
‘BODYWORN THE ULTIMATE WITNESS’ within a rectangle in the top section of the shield
and two interlocking elements depicting the letters ‘U’ within a circle, surrounded by a
wreath.
3 8 TTABVUE 14-21.
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In her brief, the Examining Attorney objects to these exhibits on the basis that they
were not introduced into the record during prosecution of the involved application
and thus are untimely.4 In its reply brief, Applicant argues that “all such evidence is
ripe for judicial notice and the Board is well served to consider the full record in order
to make the register reflect ‘real world’ usage of the various terms and marks.”5
First, it is well-established that the Board does not take judicial notice of third-
party registrations when an applicant or examining attorney requests that such
notice be taken during the course of an appeal. See, e.g., In re House Beer, LLC, 103
USPQ2d 1073, 1075 (TTAB 2015); In re Fiat Group Marketing & Corporate
Communications S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). See also Trademark
Board Manual of Procedure (“TBMP”) § 1208.04 and authorities cited therein.
Furthermore, the third-party registration submitted by Applicant with its appeal
brief issued in March 2014, prior to the filing date of the involved application.
Applicant could have introduced this registration into the record at any time during
prosecution.
The article submitted by Applicant with its brief appears to have been published on
April 29, 2016, that is, the date Applicant filed its brief. To the extent this article was
not available during prosecution, the proper procedure is to file a request for remand
to introduce such evidence. See, e.g., In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010). See also TBMP §§

4 10 TTABVUE 9-10.
5 11 TTABVUE 8.
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1207.01, 1209.02 and 1209.04. While the Board generally takes judicial notice of
dictionary definitions, encyclopedia entries, census data, standard reference works
and commonly known facts, (See TBMP § 1208.04 and authorities cited therein),
Applicant points to no support for its position that we should extend judicial notice to
include a news article when there exists a well-established mechanism for requesting
remand for its introduction.
Accordingly, Applicant’s request for judicial notice is denied, and the materials
submitted with its brief will not be considered.6
Disclaimer of BODYWORN
The sole issue in this appeal is whether the term “BODYWORN” is descriptive of
Applicant’s goods and services requiring a disclaimer under Sections 2(e)(1) and 6 of
the Trademark Act, 15 U.S.C. §§ 1052(e)(1) and 1056(a).
The Director of the USPTO “may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.” Trademark Act § 6(a), 15 U.S.C. §
1056(a). The USPTO may require a disclaimer as a condition of registration if the
term at issue is merely descriptive of any of the identified goods or services. In re
Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), and, therefore, are subject to disclaimer if the mark

6 We note nonetheless that the outcome would be the same even if we considered these
materials. The mark BODYCAM in the third-party registration, and the term “body camera”
discussed in the article, are not present in the involved mark. As discussed further infra, the
mere fact that other terms may be used to describe the goods or services at issue does not
change our determination regarding the descriptiveness of the term BODYWORN.
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is otherwise registrable. Failure to comply with a disclaimer requirement is grounds
for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA
1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007). A term is deemed to be
merely descriptive within the meaning of Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). Whether a mark or a component of a mark 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., 200 USPQ at 218; In re Remacle, 66 USPQ2d 1222,
1224 (TTAB 2002).
In the context of the recited goods and services, customers will most readily
understand BODYWORN to denote something “worn on the body.” The Examining
Attorney asserts that BODYWORN “refers to cameras and related electronic devices
worn on the body typically utilized by law enforcement to record their interactions
with the public and gather video evidence at crime scenes.”7 Applicant acknowledges
that “the goods used in association with this mark are not actually or physically worn
on the body but rather, may be attached to clothing or other articles.”8

7 Examining Attorney’s July 16, 2015 Office action at 1.
8 Applicant’s January 19, 2016 request for reconsideration at 4.
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To support her position that BODYWORN is merely descr ipt ive o f
Applicant’s goods and services, the Examining Attorney submitted copies of Internet
webpages with her December 22, 2014 Office action, excerpted below.9

policefoundation.org

9 December 22, 2014 Office action at 4-14.
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Natlawreview.com
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The Examining Attorney also made of record the following entry from the
open-source Internet reference work Wikipedia: Body worn video –
Body worn video (BWV) also known as body cameras, is a video
recording system that is typically utilized by law enforcement
to record their interactions with the public, gather video
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evidence at crime scenes, and has been known to increase both
officer and citizen accountability. BWCs are notable because
their placement, often on the front of a shirt, provides for first-
person perspective and a more complete chain of evidence. BWV
is a form of closed-circuit television.
10
Wikipedia.org
The Examining Attorney made of record additional Internet webpages
with her February 24, 2016 Office Action, excerpted below.11
How Software Can Support the Challenges of Body-Worn
Cameras
Every day it seems there is a news story about violence from or
against police officers. This has prompted police departments
worldwide to seek new ways to protect their officers and make
the public feel safer. One specific technology that is gaining
praise among police departments and citizens alike is body-
worn cameras.
The Opportunities…
Video captured through body-worn cameras presents powerful
opportunities for both police departments and citizens. They

10 The Board gives guarded consideration to evidence taken from Wikipedia, bearing in mind
the limitations inherent in this reference work. However, so long as the non-offering party
has an opportunity to rebut the evidence by submitting other evidence that may call its
accuracy into question, we do not exclude it. See In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1032 (TTAB 2007). In the case before us, the Wikipedia evidence was
submitted with the Examining Attorney’s initial Office action, and Applicant had an
opportunity to rebut it.
11 February 24, 2016 Office action at 4-25.
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can help provide transparency which in turn may gain trust in
policing activities and make the public feel safer. Being
publicly filmed is known to change both police and citizen
behavior. Last month for example, the San Diego police
department reported that equipping 600 officers with body-
worn cameras has caused a 40.5% decrease in the number of
complaints.
The Challenges…
Of course with any new technology, there are going to be some
challenges. The use of analytics and computing power can be
applied to address the issues and concerns of body-worn
cameras including protecting privacy, analyzing and storing
massive amounts of video and providing real-time alerts.
…
Analyzing and Storing Massive Amounts of Data
The increase in the number of officers wearing body-worn
cameras has also greatly increased the amount of video that
needs to be reviewed. In fact, Oakland has 600 officers
equipped with body-worn cameras that generate 7 terabytes of
data per month, equivalent to 1,500 feature-films. By using
advanced analytics, departments can save both time and money
spent looking at each individual video.
Given the amount of data these cameras generate, police
departments need enormous amounts of storage, which can be
very costly. Some estimates put in-house data storage for police
departments at upwards of $2 million per year. Recently,
Microsoft partnered with Seattle-based body-worn camera
maker, VIEVU to develop the first Criminal Justice
Information Services (CJIS)-compliant cloud storage platform.
Viascience.com

Policeone.com

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Bodycameras.com

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Bja.gov

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Mpdc.dc.gov

Based upon this evidence, we find that BODYWORN merely describes a function,
feature or characteristic of Applicant’s “cameras” and “digital cameras,” namely, that
they may be worn on the body or attached to clothing or equipment worn on the body.
Particularly in the field of law enforcement, the term BODYWORN is used by third
parties to describe cameras that record interactions between police and citizens for
purposes of evidence gathering and accountability. The evidence further establishes
that BODYWORN merely describes a function, feature or characteristic of Applicant’s
“application service provider (ASP) featuring software for use with wireless mobile
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devices for use in obtaining, recording, storing and maintaining data and other
records and evidence, including video and audio.” Specifically, the evidence discusses
the importance of selecting software for evidence management within a departmental
budget (Policeone.com) and the challenges of organizing and storing the enormous
amount of computer data created by body-worn police cameras (Viascience.com).
Because the evidence of record supports a finding that the term BODYWORN merely
describes a function, feature or characteristic of some of the identified Class 9 goods
and Class 42 services, the Examining Attorney’s refusal of registration is proper as
to all of the identified goods and services in those Classes. In re Canron, Inc., 219
USPQ 820, 821 (TTAB 1983); Electro-Coatings, Inc. v. Precision National Corp., 204
USPQ 410, 420 (TTAB 1979); In re Brain Research Foundation, 171 USPQ 825, 826
(TTAB 1971). Each of the component terms “body” and “worn” retains its
descriptive significance in relation to Applicant’s goods and services, and the
combination BODYWORN results in a composite that is itself descriptive. See In
re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive
of real estate brokerage, real estate consultation, and real estate listing services); In
re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL is simply
a compressed version of the descriptive term THE ATL without a space between the
two words. Without the space, THEATL is equivalent in sound, meaning and
impression to THE ATL and is equally descriptive of applicant’s goods”); In re
Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of
providing on-line risk management services in the field of pricing and purchasing
Serial No. 86389465

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decisions for natural gas; the absence of the space does not create a different
meaning or perception of the term).
Applicant argues that “the term “bodyworn,” has multiple meanings and is
therefore not merely descriptive.”12 As Applicant explains,
Various cameras are “worn,” but are still recognized as “bodyworn” or
even body cameras. For example, it is well known to provide small
personal cameras such as a “pocket” video camera or a “wrist camera”
or a so-called “spy camera” that is in the form or shape of a pen. In the
context of the Examining Attorney’s rejection, such devices are
electronic and are also carried or “worn” on the body. A “wrist” camera
is secured to the body in the same manner as a wristwatch, but, that
camera is not considered to be a “bodyworn” by the relevant public.
Rather, it is simply a wrist camera. Similarly, a “pocket” camera is small
enough and even designed to be carried in an article of clothing, but is
also not known as a “bodyworn” by the relevant public. Yet further, the
so-called “spy” camera shaped like a pen would also be considered a
“bodyworn” by the Examining Attorney, but it is not referred to as such.
In fact, the marketplace does not consider any such cameras to be
“bodyworn.” Rather, they are known as a “pocket” camera or a “wrist”
camera or a “spy” camera. Thus, despite such recognized difference in
the marketplace, the Examining Attorney’s position would classify all
such devices as “bodyworn” simply because they are cameras (electronic
devices) that could or are be [sic] worn by a user.

The Examining Attorneys carries that interpretation forward when
considering the term “BODYWORN” as part of the subject BODYWORN
& DESIGN mark. However, if we adopt the Examining Attorney’s
position and presume that all such cameras are “bodyworn” cameras,
then the term “bodyworn” has multiple and vague meanings because it
is simply not the case that all personal cameras are “bodyworn” as
shown by “pocket,” “wrist” and “spy” camera examples.13

However, the mere fact that other types of cameras that may be worn or carried on
the body are called by different names, such as pocket cameras or wrist cameras, does
not diminish the descriptive significance of BODYWORN as applied to the identified

12 8 TTABVUE 6.
13 Id. at 8.
Serial No. 86389465

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goods and services. Applicant points to no authority for its apparent position that the
application of the terms wrist camera, pocket camera or, for that matter, body
camera, to similar goods or other types of cameras somehow results in BODYWORN
not being descriptive when used in connection with the goods and services at issue.
Furthermore, that a term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). “The question
is not whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods or
services are will understand the mark to convey information about them.” In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark
Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); In re American Greetings Corp., 226 USPQ
365 (TTAB 1985).
Applicant also argues that the BODYWORN portion of its mark is unitary and
should not be dissected to require a disclaimer of only one term. A mark or portion
of a mark is considered “unitary” when it creates a commercial impression separate
and apart from any unregistrable component. The test for unitariness inquires
whether the elements of a mark are so integrated or merged together that they
cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964,
966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The inquiry
focuses on “how the average purchaser would encounter the mark under normal
marketing of such goods and also ... what the reaction of the average purchaser would
Serial No. 86389465

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be to this display of the mark.” Dena Corp. v. Belvedere International, Inc., 950
F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler
Service, Inc., 184 USPQ 125, 126 (TTAB 1974)). The Court of Appeals for the Federal
Circuit has set forth the elements of a unitary mark:
A unitary mark has certain observable characteristics. Specifically,
its elements are inseparable. In a unitary mark, these observable
characteristics must combine to show that the mark has a distinct
meaning of its own independent of the meaning of its constituent
elements.

In other words, a unitary mark must create a single and distinct
commercial impression.

Dena Corp., 21 USPQ2d at 1052.

If the matter that comprises the mark or relevant portion of the mark is unitary, no
disclaimer of an element, whether descriptive, generic, or otherwise, is required. A
phrase such as Applicant’s mark qualifies as unitary in the trademark sense only if
the whole is something more than the sum of its parts. Dena Corp., 21 USPQ2d at
1052 (finding EUROPEAN FORMULA and design for cosmetic products not unitary
because the “elements are not so merged together that they cannot be regarded as
separate” and the proximity of the words to the design feature “does not endow the
whole with a single, integrated, and distinct commercial impression”).
When prospective purchasers see Applicant’s mark, they would readily understand
it to be comprised of the telescoped words, “body” and “worn” as well as the phrase
“the ultimate witness” and the design of a shield, interlocking letters “U” and
wreath. Prospective purchasers will also perceive BODYWORN as a separate element
of the mark from the phrase “the ultimate witness” and the design elements. This is
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particularly so because BODYWORN appears on a separate line from ‘the ultimate
witness” and in a much larger, more prominent font.14
Finally, in its brief Applicant argues that the term BODYWORN in its mark is
incongruous or a double entendre. However, Applicant does not explain the nature of
the asserted incongruity or second meaning, and neither is apparent from the mark
or the record in this case. In its reply brief, Applicant clarifies that with regard to
incongruity and double entendre, its “position is that the term “BODYWORN” has
multiple meanings,”15 which argument has been addressed above.
Decision: The requirement for a disclaimer of BODYWORN and the refusal of
registration based on Applicant’s failure to submit such disclaimer, are affirmed.
However, in the event that Applicant submits the required disclaimer within
thirty days from the date of this decision, the refusal to register will be set aside,
the disclaimer will be entered, and the application will proceed to publication.16

14 Applicant relies upon the non-precedential decision In re Amquip Rental, LLC, Serial No.
77331303 (December 6, 2010) involving the required disclaimer of the term “CRANE” from
the mark AMQUIP THE CRANE PEOPLE and stylized bird design. However, such decisions
are not binding on the Board and have no precedential effect. See In re Luxuria s.r.o., 100
USPQ2d 1146, 1151 n.7 (TTAB 2011). In addition, the facts of that case are easily
distinguishable from those involved herein inasmuch as the term “CRANE” was part of the
slogan “THE CRANE PEOPLE” whereas the term BODYWORKS appears separate from the
other elements in Applicant’s mark. In addition, and as is often noted by the Board and the
Courts, each case must be decided on its own merits. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also In re Kent-Gamebore Corp., 59
USPQ2d 1373 (TTAB 2001); In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
15 11 TTABVUE 8.
16 The proper format for the disclaimer is: “No claim is made to the exclusive right to use
BODYWORN apart from the mark as shown.”