Coding Technologies GmbHv.American Audio Components Inc.

Trademark Trial and Appeal Board

Sep 28, 2007

No. 91156766 (T.T.A.B. Sep. 28, 2007)

Hearing: Mailed:
December 6, 2007 September 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Coding Technologies GmbH
v.
American Audio Components Inc.
_____

Opposition No. 91156766
to application Serial No. 76028493
filed on April 17, 2000
_____

Michael K. Hendershot, Joseph V. Norvell and Jennifer A.
Prioleau of Brinks Hofer Gilson & Lione for Coding
Technologies GmbH.

Richard M. Johnson of The Johnson IP Group for American
Audio Components Inc.
______

Before Rogers, Drost and Walsh,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

American Audio Components Inc. (applicant) seeks
registration of the mark AAC in typed form1 for goods
identified as "audio products and parts therefor, namely,
speakers, dynamic handset receivers that convert electronic

1 Subsequent to the filing of this application, the Office has
begun referring to marks without claim to a particular font or
stylization as marks in "standard character form."
This Opinion is Not a
Precedent of the TTAB
Opposition No. 91156766
2
signals into sound, electric buzzers, piezo buzzers
containing a piezoelectric ceramic element, electro-magnetic
transducers that convert magnetic energy into sound, and
microphones." The application is based on applicant's claim
of use of the mark in commerce, with January 1997 asserted
as the date of first use and first use of the mark in
commerce.

Opposer's Claims

Coding Technologies GmbH (opposer) opposes issuance of
a registration to applicant on various grounds. In its main
brief on the case, opposer asserts that this case involves
the questions of whether applicant's mark is unregistrable
as a descriptive term, a deceptively misdescriptive term, or
as a generic term. Brief, pp. 6-8. Applicant does not
dispute that opposer has pleaded alternative claims of
descriptiveness and genericness, but applicant does dispute
the contention that the notice of opposition includes a
claim of deceptive misdescriptiveness. Brief, p. 32.
Opposer, although maintaining that its reference to Section
2(e)(1) of the Trademark Act in its notice of opposition was
sufficient to plead a claim of deceptive misdescriptiveness,
moved to "amplify allegations already included in" the
original notice of opposition and proffered an amended
pleading. Reply brief, p. 18; motion to amend notice of
opposition, p. 3. However, in an order issued after the
Opposition No. 91156766
3
parties had briefed the case but prior to oral arguments,
the Board interlocutory attorney denied opposer's motion to
amend the notice of opposition to the extent it was based on
Fed. R. Civ. P. 15(a). That order left to disposition at
final hearing any question of amendment under Fed. R. Civ.
P. 15(b) due to trial of unpleaded claims by the express or
implied consent of the parties. Further, that order did not
specifically address opposer's contention that no amendment
was necessary because the original notice of opposition
specifically referenced Section 2(e)(1), which provides for
refusal of registration of a proposed mark which is "merely
descriptive or deceptively misdescriptive." Reply brief, p.
18, motion to amend, p. 3. We now address both these
issues.
In essence, opposer is contending that it pleaded a
claim of deceptive misdescriptiveness merely by referencing
the section of the Trademark Act that provides for refusing
registration of a mark on that basis, even though that
section provides two alternative bases for refusal.
Opposer, however, cites no authority in support of the
contention. Moreover, there are numerous examples
illustrating that citation to a section of the statute,
although encouraged and often helpful in clarifying the
nature of a set of allegations in a pleading, may not be
sufficient to plead a claim under that section or place a
Opposition No. 91156766
4
defendant on proper notice of the extent of the claim. For
example, although the Trademark Act provides that dilution
under Section 43(c) may be asserted as a claim in a Board
proceeding, mere reference to that section of the Trademark
Act is insufficient to plead a dilution claim, as proper
pleading of the claim also requires an allegation as to when
the claimant's mark became famous. See Trek Bicycle Corp.
v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001). Also,
Section 2(a) of the Trademark Act encompasses numerous
possible claims and mere reference to the section would not
constitute a sufficient pleading. Cf. McDermott v. San
Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212,
1214 (TTAB 2006) (Board construed pleading as intended to
set forth one or more claims under Section 2(a) but could
not "discern any properly pleaded claim"). In addition, in
cases brought under Section 2(d), the plaintiff must
specifically plead any registrations on which it is relying
and may not rely at trial on unpleaded registrations. See,
e.g., B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500,
1503 (TTAB 2007) ("In its brief, opposer listed a seventh
registration, but it was not pleaded and a copy was not made
of record by notice of reliance (NOR) or through testimony,
so it has not been considered.").
In the case at hand, opposer's pleading of a claim
under Section 2(e)(1) was only sufficient to put applicant
Opposition No. 91156766
5
on notice that opposer would pursue claims of
descriptiveness and genericness. See notice of opposition,
¶ 10 ("The term AAC … is merely descriptive or generic under
Section 2(e)(1) of the Trademark Act …."). The notice of
opposition provided no notice to applicant that deceptive
misdescriptiveness would be pursued at trial. Further,
while the distinction between descriptiveness and
genericness is often a matter of degree2, the distinction
between descriptiveness and deceptive misdescriptiveness is
that the two claims involve proof of contrary facts
(description and misdescription) and the latter claim also
requires proof of an additional element. Specifically,
proof of deceptive misdescriptiveness requires evidence that
consumers would believe a misdescription. Thus, a pleading
that adequately puts a defendant on notice that alternative
claims differing only in degree may be pursued is very
different from a pleading that puts a defendant on notice
that alternative claims involving contrary proofs and
differing elements may be pursued. Accordingly, we do not
find opposer's reliance in its notice of opposition on
Section 2(e)(1) of the Trademark Act to involve an
alternative pleading of deceptive misdescriptiveness.

2 H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986) ("The
generic name of a thing is in fact the ultimate in
descriptiveness.”).
Opposition No. 91156766
6
We also do not find deceptive misdescriptiveness to
have been tried by express or implied consent of the parties
and therefore do not find the pleadings to have been amended
under Fed. R. Civ. P. 15(b). At a minimum, amendment of the
notice of opposition under Rule 15(b) would require trial of
the claim opposer would have us deem the pleadings amended
to reflect. As noted, however, one element of the claim of
deceptive misdescriptiveness is proof that consumers would
believe a misdescription. Opposer has offered no evidence
to provide such proof, and therefore has not tried the
claim. Further, we do not find opposer's activities at
trial to have included any indication to applicant that
deceptive misdescriptiveness was being tried as a claim. We
consider, therefore, only whether opposer has proven AAC to
be either descriptive or generic.

The Record and Objections to Evidence

The record developed at trial includes a testimony
deposition from each party and two notices of reliance filed
by opposer, one during its main testimony period and one
during rebuttal.
Opposer took the testimony deposition of Tracey L.
Giertz (Giertz dep.), a paralegal in the law firm of
opposer's counsel. The testimony was used to introduce 36
exhibits consisting of articles or web pages "relating to
the term AAC used in connection with the audio industry
Opposition No. 91156766
7
and/or the term advanced audio coding." Giertz dep. pp. 9-
10. The testimony is somewhat unclear as to the particular
search terms used by the witness to obtain the exhibits
(compare Giertz dep. pp. 149-51, 215, and 217-18) but the
witness did not search for use of AAC outside the audio
industry. Giertz dep. p. 218.
Applicant's counsel objected to every exhibit except
web page reprints from applicant's web site (Giertz exh.
30).3 In its brief, applicant maintained these objections
insofar as it asserts that we "should evaluate the
inadmissibility of these documents surgically in accordance
with the Rules of Evidence and the Rules of this Board."
Brief p. 15. Applicant also appears to argue that because
the Giertz exhibits, as well as all other documents
introduced by opposer's two notices of reliance, have been
impermissibly relied on by opposer for the truth of the
matters asserted in the documents, none of them should be
considered at all and opposer's case should be dismissed as
unsupported by evidence. Brief, pp. 15-16 and 20-21. In

3 Counsel for applicant declined requests from counsel for
opposer to make a running objection to all the exhibits and
insisted on objecting to each as it was introduced. Similarly,
counsel for opposer declined a request from counsel for applicant
to have the witness provide general testimony about the search
for the exhibits, as opposed to detailing each step in searching
for and printing out each exhibit. Under circumstances such as
these, the Board would have preferred that opposer take such
general testimony and applicant make a running objection. Such
an approach would have been more efficient and less costly to the
parties.

Opposition No. 91156766
8
addition, applicant argues that all documents introduced by
opposer "were obviously obtainable" prior to trial and
should have been produced in response to applicant's
discovery requests or in supplemental responses to those
requests. Thus, for this reason, too, applicant asserts
that all of opposer's documents should be excluded. Brief,
p. 17. Finally, applicant argues that certain documents
introduced by opposer's main notice of reliance (exhibits 31
and 33-36) are not the types of documents that may be
submitted by notice of reliance and should not be
considered. Brief, pp. 21-22. Applicant argues in the
alternative that if we consider any of opposer's documents,
our consideration should be limited to what these documents
show on their face and that they not be considered as
establishing the truth of the matters stated therein.
Brief, pp. 18-20.
We reject applicant's exhortation to surgically probe
each document submitted by opposer. Such an approach to the
consideration of evidence is unwarranted by the claims and
facts of this case, and, in any event, is to be avoided by
the Board. See Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1104 (TTAB 2007) ("Thus, we see no compelling
reason to painstakingly go through all of the objections one
by one except insofar as they relate to the outcome
determinative testimony and evidence.") See also, West
Opposition No. 91156766
9
Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ2d 1660, 1663 (Fed. Cir. 1994):
However, whether a particular piece of evidence by
itself establishes prior use is not necessarily
dispositive as to whether a party has established
prior use by a preponderance. Rather, one should
look at the evidence as a whole, as if each piece
of evidence were part of a puzzle which, when
fitted together, establishes prior use. The TTAB
failed to appreciate this. Instead, the TTAB
dissected the evidence to the point that it
refused to recognize, or at least it overlooked,
the clear interrelationships existing between the
several pieces of evidence submitted.

Applicant's objection to all of opposer's documents on
the ground that they "were obviously obtainable" during
discovery but not secured and produced is overruled. See
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas
Inc., 77 USPQ2d 1492, 1500 (TTAB 2005).4 We also overrule
applicant's more specific objection to exhibits 31 and 33-36
to opposer's notice of reliance. We agree with opposer's
contention that these exhibits would be available to the
segment of the public that is relevant to this proceeding.
That public, construing it broadly, would include audio
engineers and technicians and other professionals that deal
with computerized or digital audio compression technologies

4 We add that under new Trademark Rules that will become
effective for Board cases filed on or after November 1, 2007,
though a party will have to make pretrial disclosures about the
witnesses it plans to call and provide general summaries of the
subjects of expected testimony and types of exhibits to be
introduced, the Board will not require a detailed listing of
exhibits in advance of trial and will not require any pre-trial
Opposition No. 91156766
10
for manufacturers of products or devices that include such
technology. Based on the record in this case, discussed in
more detail infra, and based on applicant's identification
of goods, the products applicant sells under its mark are
sold to, among others, such manufacturers. The probative
value of this evidence is another matter entirely and is
discussed infra. We note, however, that lengthy technical
papers presented at conferences or offered by subscription
from abroad, including these five exhibits, may be much less
widely disseminated among the relevant public than articles
appearing in other publications. The Board is entirely
capable of considering such circumstances in the weighing of
evidence.
Turning to the question of whether opposer relies on
the documents introduced into evidence by the Giertz
testimony and its notices of reliance for the truth of the
statements contained in the documents, we agree with
opposer's characterization of the documents as offered to
show that members of the relevant public either use AAC as
an initialism meaning Advanced Audio Coding or are routinely
exposed to articles and publications which employ such use.
Indeed, applicant has admitted that the documents at least
show that "some persons define the letters 'AAC' as meaning
'advanced audio coding' or 'advanced audio compression' and

disclosure of plans to file notices of reliance. Current rules
Opposition No. 91156766
11
that some products," not including those identified in
applicant's application, "utilize compression technology."5
We have considered the documents for what they show on their
face.
As for opposer's objections to evidence, it has
maintained only one in its brief. We sustain opposer's
objection to the introduction of exhibit 8 to the testimony
deposition of Wilfredo Maglonso (Maglonso dep.), an engineer
who is involved in testing of applicant's products. This
draft proposed settlement agreement should not have been
offered by applicant during the deposition of its witness.
Apart from this exhibit, we have considered the entire
testimony of applicant's witness. However, we have not
found the testimony particularly helpful. Applicant
presented a witness who had difficulty understanding and
responding to questions. "I don't know," "I'm not sure" and
"Maybe" were frequent responses. The essence of the
testimony of this witness was that applicant uses AAC on its
identified products or packaging therefor because those are
the initials of applicant's company name, that these
products do not employ AAC technology, and AAC, as a

applicable to this case certainly do not require this.
5 During the Giertz deposition, counsel for applicant regularly
objected to the documents being introduced as irrelevant because
they did not show use of AAC in conjunction with the products
identified in applicant's involved application. Applicant did
not maintain this objection in its brief. In any event, we find
the documents relevant, even if not particularly probative.
Opposition No. 91156766
12
designation of such technology, does not describe in any way
applicant's products.6
Before considering what the record shows in regard to
the claims in this case, we add to the record the following
definition from the Barron's Business Guides Dictionary of
Computer and Internet Terms (9th ed. 2006) (boldface and
italics in original): "AAC Advanced Audio Coding, an audio
compression format newer and more efficient than MP3. See
www.mpeg.org/MPEG/aac.html."7 Consistent with this
definition is the following from Webopedia.com
(www.webopedia.com/TERM/A/AAC.html) (italics and
underscoring in original):
Short for Advanced Audio Coding, one of the audio
compression formats defined by the MPEG-2
standard. AAC is sometimes referred to as MPEG-2
NBC (not backwards compatible) because it is not
compatible with the MPEG-1 coding scheme. AAC
boasts higher quality audio reproduction than MP3
and requires 30% less data to do so.8

6 Though counsel for applicant failed to establish that the
witness actually understood the difference between AAC and other
forms of audio compression technology, and on cross-examination
it became clear the witness did not understand the differences,
we find the witness to have understood the general concept of
audio compression technology and find his testimony to be, in
effect, that applicant's products do not employ such technology.

7 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d
1500, 1505 n. 15 (TTAB 2007).

8 A reprint of the Webopedia definition was attached to opposer's
notice of opposition and became part of the evidentiary record
when applicant introduced the notice and its attachments as an
exhibit to the Maglonso testimony deposition.
Opposition No. 91156766
13

Genericness of AAC

In determining whether the primary significance of a
term is generic, our primary reviewing court has stated:

…[D]etermining whether a mark is generic …
involves a two-step inquiry: First, what is the
genus of goods or services at issue? Second, is
the term sought to be registered … understood by
the relevant public primarily to refer to that
genus of goods or services?

H. Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). The critical
issue in genericness cases is, therefore, whether members of
the relevant public primarily use or understand the term
sought to be registered to refer to the genus or category of
goods in question. In re Montrachet S.A., 878 F.2d 375, 11
USPQ2d 1393, 1394 (Fed. Cir. 1989); In re Merrill Lynch,
Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987); Dan Robbins & Assocs., Inc. v.
Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979);
Zimmerman V. National Assn. of Realtors, Inc., 70 USPQ2d
1425 (TTAB 2004).
Evidence of the public’s understanding of a particular
term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, listings in
Opposition No. 91156766
14
dictionaries, trade journals, newspapers, and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill, Lynch,
supra; and In re Northland Aluminum Products, Inc., 777 F.2d
1566, 227 USPQ 961 (Fed. Cir. 1985).
On the record present in this case, there can be no
question that AAC is just as generic as the full phrase
Advanced Audio Coding for an audio compression technology.9
On the other hand, opposer's evidence quite simply is not
sufficient to establish that AAC is understood by the
relevant public to primarily refer to the involved genus of
goods. See Eastman Kodak Co. v. Bell & Howell Document
Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912, 1918
(Fed. Cir. 1993) (“the challenger's burden of proof in both
opposition and cancellation proceedings is a preponderance
of the evidence") (internal citation omitted).
In some genericness cases, the specification of the
genus of goods is a subject of dispute. See, e.g., In re
American Institute of Certified Public Accountants, 65
USPQ2d 1972, 1981 (TTAB 2003). In the case at hand, we find
the genus to be cogently specified by applicant's
identification of goods. In re Reed Elsevier Properties
Inc., 77 USPQ2d 1649, 1654 (TTAB 2005) ("we consider
applicant's identification as largely defining the genus of
Opposition No. 91156766
15
services involved in this case"), aff'd 482 F.3d 1376, 82
USPQ2d 1378 (Fed. Cir. 2007). We disagree with opposer's
contention that the genus of goods involved in this case is
specified by the more general and, we find, vague term
"audio products."10 At most, we might consider the genus to
be a bit broader than the identification and to also
encompass electric, electronic or electro-magnetic audio
products similar to those listed in the identification. We
would not, however, consider the relevant genus of goods to
include audio compression technologies employed in
computerized devices, or to include components of those
devices that employ such digital technology.
While we disagree with opposer's contention as to the
genus of the involved goods, we agree with its contention
that the relevant public includes manufacturers,
distributors and consumers of the type of audio products
identified in applicant's application. We also agree with
opposer that under the case law a term may be generic even
if it is not the name of a product, so long as it generic
for a key ingredient, characteristic or feature of the
goods, in other words a generic adjective rather than a

9 It is unnecessary to the resolution of this case to delve into
the particulars of that technology.
10 See, e.g., opposer's argument at p. 43 of its brief that
focuses only on the presence of the words "audio products" and
"parts therefor" in applicant's identification. We cannot
ignore, as opposer has, the qualifying word "namely" followed by
Opposition No. 91156766
16
generic noun. See authorities collected in Opposer's Brief,
p. 45. However, the record in this case does not support
opposer's conclusion that the relevant public would perceive
AAC as a generic adjective identifying a key ingredient,
characteristic or feature of applicant's goods. There is
nothing in the record that indicates that applicant's
electronic or electro-magnetic goods utilize AAC technology
or any audio compression technology, or even that
compatibility of applicant's goods with such technology is
an issue of concern for manufacturers of audio devices such
as digital music players, cell phones, computers or other
similar products that may utilize both the component parts
produced by applicant and employ AAC technology.
Opposer likens this case to that of In re Analog
Devices Inc., 6 USPQ2d 1808 (TTAB 1988)11, wherein the Board
found the term ANALOG DEVICES generic for "at least some of
the goods" in the applicant's lengthy identification,
including, for example, "analog to digital and digital to
analog converters, analog computational circuits and analog
multipliers/dividers." Id. at 1810. Opposer notes, in
making this argument, that the instant applicant's
identification includes "dynamic handset receivers that

a listing of specific items. The list largely defines the genus,
not the more general words used to introduce the list.

11 Affirmed at 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989)(not
a citable decision).
Opposition No. 91156766
17
convert electronic signals into sound" and asserts: "Just
as ANALOG DEVICES is generic for converters utilizing analog
technologies, AAC is generic for a converter capable of
using, or being used as part of or in connection with, the
latest electronic audio technologies." Brief, p. 45.
Opposer's analogy fails, however, because it has put nothing
in the record to show that even this item in applicant's
identification of goods would be expected by the relevant
public to employ AAC technology. Nor is it sufficient to
show that applicant's goods and other components that do use
the technology might be incorporated by, for example, a cell
phone manufacturer in a finished product.
We dismiss the opposition insofar as it asserts a claim
that AAC is generic for one or more items in the involved
application.

Descriptiveness of AAC

A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an

Opposition No. 91156766
18
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it is
being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that
“[t]he 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 and services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002).
Finally, we note that a mark need not describe all of
the goods or services for which registration is sought.
Registration must be refused if the mark is merely
Opposition No. 91156766
19
descriptive of any of the goods or services for which
registration is sought. See In re Quik-Print Copy Shop,
Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980), In re
Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB
1998).
In cases involving claims that initials are
descriptive, such as the case at hand, it must be shown not
only that the initials represent words that are descriptive,
but also the initials themselves "have become so generally
understood as representing descriptive words as to be
accepted as substantially synonymous therewith." Modern
Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293,
295 (CCPA 1956). See also, Racine Industries Inc. v. Bane-
Clene Corp., 35 USPQ2d 1832 (TTAB 1995). In the case at
hand, although defendant's witness has testified that AAC is
used by applicant as a mark because it represents the words
American Audio Components, opposer does not claim that AAC
is descriptive because it would be perceived as
substantially synonymous with those words. Rather, as
discussed in our consideration of opposer's genericness
claim, opposer claims that AAC would be seen as
substantially synonymous with the words Advanced Audio
Coding. We agree with opposer that the record supports such
a contention. However, for largely the same reasons we have
discussed in our evaluation of opposer's claim of
Opposition No. 91156766
20
genericness, particularly insofar as opposer argued that AAC
should be refused registration as, essentially, a generic
adjective, we find that opposer has failed to carry its
burden as plaintiff in this proceeding and shown by a
preponderance of the evidence that AAC would be perceived as
descriptive of any of the goods identified in the
application.
We do not doubt that many, if not most, individuals in
the audio products industry would think of an audio
compression technology when confronted with AAC in the
abstract. Likewise, many individuals in other industries
that may utilize this technology in finished products such
as computers or the audio systems of motor vehicles also
would be most likely to think of the technology when
confronted by AAC in the abstract. However, as already
noted, the descriptiveness of a term, whether words or
initials, is not analyzed by considering the term in the
abstract but is analyzed by considering the term in
conjunction with the identified goods.
Opposer has shown that AAC would immediately convey
information about an ingredient, quality, characteristic, or
feature of finished products such as cell phones, digital
music players, computers and even motor vehicles with
advanced audio systems, to prospective purchasers or users
of such products. Opposer has not, in contrast, shown that
Opposition No. 91156766
21
AAC would immediately convey information about applicant's
identified goods to prospective purchasers thereof, who are
a different class of customer than prospective purchasers of
the finished products listed above.
Applicant's identified products are not finished
products in and of themselves. They are components used in
other products. Maglonso dep. p. 8. Thus, the primary
purchasers of such products would be sophisticated
manufacturers of cell phones, computers, motor vehicles and
other finished products. An often-repeated contention in
opposer's brief is that applicant's customers "will readily
understand that Applicant's goods somehow support, enhance,
or are merely just compatible with the AAC technology used
in Applicant's customers' products." Brief, p. 19 (emphasis
added). We find no support in the record for this
contention. Sophisticated purchasers would be expected to
know the difference between the many component parts that
they purchase to manufacture finished products. We would
not expect such purchasers to purchase components on the
presumption that they "somehow" would support a technology
being used in the finished product in which the component
would be utilized. Opposer took no testimony from any
prospective purchaser of applicant's products and has
repeatedly advanced mere argument about what they might be
Opposition No. 91156766
22
thinking when considering a purchase of applicant's
products.
While there is nothing in the record to show that
applicant's products would be sold to general consumers as
opposed to manufacturers of end products, we note that
applicant's identification does not limit applicant's
channels of trade or classes of customers. We must,
therefore, consider the possibility that applicant's
products could be sold at retail in outlets that sell such
electronic or electro-magnetic components and that general
consumers who may wish to repair or modify products they
have purchased might be included among applicant's possible
customers. We conclude, however, that members of the
general public skilled enough to attempt repairs or
modifications of such items as cell phones, computers or car
audio systems and would know how and where to find component
parts they would need, would also be sophisticated
purchasers. They would be no more likely than manufacturers
to purchase applicant's products on the mere thought that
they "somehow" would enhance or support a particular audio
compression technology. Certainly, there is no evidence
that they would.

Decision

The record is clear that AAC is a generic and
descriptive term when used in connection with audio
Opposition No. 91156766
23
compression technology and devices employing the technology.
Limited, however, to use in connection with applicant's list
of electronic or electro-magnetic component parts, it has
not been shown to be either generic or descriptive. The
opposition is dismissed.