Aerospace Optics, Inc.

Trademark Trial and Appeal Board

Apr 12, 2006

No. 76171288 (T.T.A.B. Apr. 12, 2006)

Mailed: April 12, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aerospace Optics, Inc.
________

Serial No. 76171288
_______

Daniel E. Venglarik of Novakov Davis & Munck, P.C. for
Aerospace Optics, Inc.

Henry Zak, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Walters, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Aerospace Optics, Inc. has filed an application to
register, on the Principal Register, the mark shown below,

for goods identified as “illuminated pushbutton switches,
namely pushbutton switches with dimmable illumination for
use in military and civilian aircraft cockpits, aviation
crewstations, ships and command, communications, control
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76171288
2
and intelligence systems” in International Class 9.1 The
application was filed on November 27, 2000, based upon an
allegation of a bona fide intention to use the mark in
commerce. The application was published for opposition on
June 18, 2002 and a notice of allowance subsequently issued
on September 10, 2002. Applicant filed its statement of
use and a specimen on December 9, 2002, alleging first use
anywhere and in commerce as of September 29, 2000. The
examining attorney issued a refusal to register under
Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052 and 1127, on the ground that the mark, as
depicted in the specimen of use, fails to function as a
trademark.
When the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
The sole issue in this appeal is whether the applied-
for mark is used as a trademark to identify the goods
listed in the notice of allowance.

1 The mark is described as comprising “the term ‘SPECTRUM’ with
each letter in a different human visible or night vision imaging
system [NVIS] color, with the colors following the sequence:
blue; blue-green [NVIS green A]; green [NVIS green B]; white or
white with black outline; yellow [NVIS yellow]; amber [aviation
yellow]; orange-red [NVIS red]; and red [aviation red].” The
drawing of the mark is lined for color.
Ser No. 76171288
3
As has been frequently stated, “Before there can be
registration, there must be a trademark.” In re Bose
Corporation, d/b/a Interaudio Systems, 546 F.2d 893, 896,
192 USPQ 213, 215 (CCPA 1978). The starting point for our
analysis is Section 45 of the Trademark Act, as amended,
where “trademark” is defined as “any word, name, symbol, or
device, or any combination thereof used by a person ... to
identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others
and to indicate the source of goods, even if that source is
unknown.” 15 U.S.C. §1127. This section further provides
that a mark shall be deemed to be in use in commerce on
goods when “it is placed in any manner on the goods or
their containers ... or on the tags or labels affixed
thereto ... and the goods are sold or transported in
commerce.” Id. Thus, the mark must be used in such a
manner that it would be readily perceived as identifying
the specified goods and distinguishing a single source or
origin for the goods. In re Safariland Hunting Corp., 24
USPQ2d 1380 (TTAB 1992). The mere fact that a designation
appears on the specimens of record does not make it a
trademark. Id.
A critical element in determining whether matter
sought to be registered is a trademark is the impression
Ser No. 76171288
4
the matter makes on the relevant public. Thus, in a case
such as this, the critical inquiry is whether the asserted
mark would be perceived as a source indicator. See In re
Brass-Craft Mfg. Co., 49 USPQ2d 1849 (TTAB 1998); In re
Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB
1998). To be a mark, the term must be used in a manner
calculated to project to purchasers or potential purchasers
a single source or origin for the goods. In re Volvo,
supra. We determine whether this has been achieved by
examining the specimens of use along with any other
relevant material submitted by applicant during prosecution
of the application. In re Safariland, supra. Here, we
have only the specimens of record, shown below, wherein the
applied-for mark appears in two separate locations inside
applicant’s point-of-purchase display in the form of a
brochure:

Ser No. 76171288
5

The examining attorney argues that the applied-for
mark, in the context of use as seen in the specimens
performs “only an informational function, identical to the
terminology in which the wording is used – to identify
favorable features of the switches, rather than a
particular source of origin.” Br. p. 6. Addressing the
color element of the applied-for mark, the examining
attorney stated:
While the term SPECTRUM is displayed in differing
colors, appearing among these clearly
informational statements regarding the
capabilities and characteristics of the switches,
it would be difficult for consumers to determine
if the word is intended to be used as a mark, or
displayed in a variety of colors as an attention
getting means of conveying the multiple color
capability of such switches, only conveying
information regarding the features or
characteristics of the switches, no different
from the other informational statements among
which it is used. Br. p. 5.
Ser No. 76171288
6

Applicant argues that “The sections of the Lanham Act
cited by the Examining Attorney as the basis for the
refusal do not specifically require that the specimen use
the mark in some particularly ‘trademark’ manner and
exclusive of all informational function. Section 1 merely
requires ‘specimens or facsimiles of the mark as used ...’,
while Sections 2 and 45 make no mention of specimens at
all.” Br. pp 5-6. Further, applicant argues “Nothing in
either the statute or the rules precludes the use of the
mark in an informational manner, in addition to use as a
trademark.” Br. p. 7. Applicant states that “no defined
standards for evaluating purchasers’ perception of the
manner of use of [sic] mark in determining that the use was
‘merely informational’ were articulated or followed, such
that the decision was arbitrary and capricious.” Br. p. 8
n. 3. Applicant concludes that “Where, as in the subject
application, the subject matter and manner of use of the
mark are sufficient to enable purchasers to recognize the
mark as being a trademark, registration is not precluded by
any informational aspects of the mark and/or its manner of
use.” Br. p. 9. Finally, applicant argues that its use of
the TM symbol next to the applied-for mark is “dispositive
of the question” whether it functions as a trademark,
Ser No. 76171288
7
stating that to “hold that a mark with which the common-law
trademark symbol is associated would NOT be perceived by
purchasers as a trademark is entirely at odds with the
purpose of that symbol.” Br. p. 10.
It is well established that the refusal of failure to
function is properly based on Sections 1, 2 and 45 of the
Act. See, e.g., In re Volvo, supra. In this case, we find
that the manner in which the applied-for mark is used on
the specimens of use is not indicative of trademark use.
In view of the meaning of SPECTRUM, “a continuum of color
formed when a beam of white light is dispersed (as by
passage through a prism) so that its component wavelengths
are arranged in order,”2 and the context of its use, i.e.,
among several terms identifying features of the goods,
(e.g., “spectrum of colors”), prospective purchasers would
not view this word as a source identifier, but rather as
part of the text listing the features of the product. As
used by applicant, and as likely perceived by purchasers
and prospective purchasers, the applied-for mark merely
informs the potential purchaser of an aspect of the goods,
namely, the multiple color feature. The coloring and font

2 Merriam-Webster’s Collegiate Dictionary (10th ed. 1999).
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) (Board may take judicial notice of dictionary
definitions).
Ser No. 76171288
8
are not sufficient to imbue this term, as used, with
source-identifying significance or to set it apart from the
other informational wording. See In re Brass-Craft, supra.
Moreover, as noted by the examining attorney, the colors in
the mark merely manifest and emphasize the information the
word conveys.
The use of the TM symbol on the inner flap location of
one specimen does not change the commercial impression of
the applied-for mark, which as used in the specimen only
informs the consumer of the features of the pushbutton
switches. The “mere intent that a term function as a
trademark is not enough in and of itself, any more than
attachment of the trademark symbol would be, to make a term
a trademark.” In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992)
(THINK GREEN failed to function as a mark for, inter alia,
mailing and shipping cardboard boxes). See also In re
Volvo, supra (DRIVE SAFELY failed to function as a mark for
automobiles and structural parts therefor); In re Remington
Products, Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN
THE USA failed to function as a mark for electric shavers
and parts thereof). Applicant attempts to distinguish
these cases by noting that the subject matter was deemed
unregistrable in each case due to the nature of the mark
itself whereas, in this case, the mark contains both
Ser No. 76171288
9
“informational aspects” and “aspects that communicate to
purchasers that the mark is a trademark” and serves “both
as a trademark (source/quality indicator) AND as an
informational device.”
However, while the applied-for mark has not been
refused as descriptive under Section 2(e)(1) of the
Trademark Act, the fact that the applied-for mark may be
registrable if it were used in a different context is not
the issue. Rather, the applied-for mark, as used, would
not be perceived as a trademark, and the mere addition of
the trademark symbol is not sufficient to transform the
non-trademark use into trademark use. The term fails to
function as a mark not only because of the informational
nature of the term, but also because of the way it appears
on the specimen. The manner in which the applied-for mark
is used on the specimens presents the applied-for mark as
part of the product features and not as a trademark. Even
an inherently distinctive designation is not a trademark if
it is not used in a trademark manner. See McCarthy, J.
Thomas, McCarthy on Trademarks and Unfair Competition §3.3
(4th ed. database updated 2005); see also In re Niagara
Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE
IT, YOU BAKE IT! held not merely descriptive, but refusal
based on failure to function as a service mark affirmed).
Ser No. 76171288
10
In summary, the manner in which the applied-for mark
is being used does not support a finding that potential
consumers would perceive it as a trademark. As used in the
specimens of record, the applied-for mark does not convey
the commercial impression of a mark identifying the source
of origin of applicant’s goods. This conclusion is not
altered by the fact that a TM symbol is displayed in one
location in one of applicant’s brochures adjacent to the
word SPECTRUM. See In re B.C. Switzer & Co., 211 USPQ 644
(TTAB 1981).

Decision: The refusal to register under Sections
1, 2 and 45 of the Act is affirmed.