Digital Lightwave, Inc.

Trademark Trial and Appeal Board

Sep 16, 2003

No. 75217097 (T.T.A.B. Sep. 16, 2003)

Mailed: 9/16/03
Paper No. 21
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Digital Lightwave, Inc.
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Serial No. 75/217,097
_______
Stefan V. Stein of Holland & Knight, LLP for Digital
Lightwave, Inc.
Patty Evanko, Trademark Examining Attorney, Law Office 112
(Janice O'Lear, Managing Attorney).
_______
Before Seeherman, Hohein and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On December 23, 1996 Digital Lightwave, Inc. filed the
above-identified application for the mark LIGHTWAVE
MANAGEMENT for goods which were subsequently identified as
"electronic testing equipment, namely, telecommunication
line integrity testing apparatus for assessing the
performance of telecommunications networks." The
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/217,097
2
application was based on an asserted bona fide intention to
use the mark in commerce; subsequently applicant filed an
amendment to allege use, asserting first use and first use
in commerce as of November 1997. Applicant has disclaimed
exclusive rights to use the word LIGHTWAVE.
When a final refusal of registration issued pursuant
to Section 2(e)(1) on the ground that applicant’s mark is
merely descriptive of its goods, applicant filed the
instant appeal.
Applicant and the Examining Attorney have filed
briefs.1 An oral hearing was not requested.
The Examining Attorney contends that LIGHTWAVE
MANAGEMENT is merely descriptive of applicant’s goods
because it identifies their purpose or function. In
support of this position, she has made of record the
following definitions:
1 After applicant filed its appeal brief it came to the
attention of the Board that applicant had filed a request for
reconsideration along with its notice of appeal. Although the
original papers were never received by the Office, applicant
submitted by facsimile transmission a copy of the request,
bearing a certificate of mailing by Express Mail. Accordingly,
the Board deemed the request to be timely, suspended proceedings
on the appeal, and remanded the application to the Examining
Attorney for consideration of the request for reconsideration.
After the Examining Attorney ultimately maintained the refusal of
registration and returned the file to the Board for resumption of
proceedings in the appeal, the Board allowed applicant time to
file a supplemental appeal brief if it desired. Applicant did
not submit a supplemental brief, and therefore applicant’s
original brief and the Examining Attorney’s brief are the only
briefs in the file.
Ser No. 75/217,097
3
Lightwave: light in the infrared,
visible and ultraviolet ranges, which
falls between x-rays and microwaves.2
Lightwave system: A device that
transmits light pulses over optical
fibers at extremely high speeds.3
Management: The act, manner, or
practice of managing: handling,
supervision, or control4
Manage: 1. To direct or control the use
of: handle: manage a complex machine
tool.5
The Examining Attorney has also submitted excerpts of
articles taken from the NEXIS database which refer to
applicant and its products:
Digital Lightwave, Inc. (Nasdaq: DIGL),
a leader in the lightwave management
equipment market....
"PR Newswire," October 16, 1997
Digital Lightwave's ASA 312 Network
Information Computer is a lightwave
management product that has the ability
to simultaneously process multiple
protocols to verify and qualify the
performance of telecommunications
networks and embedded equipment.
"PR Newswire," July 17, 1997
Digital Lightwave develops,
manufactures, and sells lightwave
management products, including Network
Information Computers that provide
information concerning the performance
of SONET, ATM and T-Carrier
2 The Computer Desktop Encyclopedia.
3 Tech Encyclopedia.
4 The American Heritage Dictionary of the English Language, 3d
ed. © 1992).
5 Id.
Ser No. 75/217,097
4
telecommunications networks and
transmission equipment and Remote
Access Agents....
"PR Newswire," May 29, 1997
Digital Lightwave specializes in
Lightwave management products for
monitoring SONET, ATM and T-Carrier....
"Network Briefing," May 15, 1997
Digital Lightwave Inc, Clearwater,
Florida builder of computer systems to
provide information on performance of
lightwave telecommunications networks
and transmission equipment....
"Computergram International," May 6,
1997
The company’s lightwave management
products are used by telecommunications
service providers and network equipment
manufacturers to analyze the
performance of lightwave transmission
(fiber optic) networks and to more
effectively implement fiber optic
network expansion.
"PR Newswire," April 16, 1997
Digital Lightwave, Inc. (Nasdaq: DIGL),
an emerging leader in the lightwave
management equipment market....
"PR Newswire," August 6, 1997
Digital Lightwave develops,
manufactures, and sells lightwave
management products, including Network
Information Computers....
"PR Newswire," May 29, 1997
In addition, in response to a request for information
about its goods, applicant has provided excerpts from its
website (www.lightwave.com) which include the following
Ser No. 75/217,097
5
statements, under the heading "Lightwave Managementï››
Technology for OEM Subsystems:
Digital Lightwave develops and
manufactures custom optical subsystems
used to monitor, analyze and facilitate
the management of fiber-optic-based
networks. Based on the company's
reusable core component technology
developed for its leading high-speed
optical diagnostic and analysis
products, these subsystems offer
customized solutions for specific
customer requirements.
Working with its OEM customers, Digital
Ligtwave designs cost-effective ways of
bringing additional intelligence to
optical networks and embedded elements.
By providing customized portable test
instruments, network-integrated
lightwave diagnostics and element-
embedded performance monitoring....
As a pioneer in optical networking
technologies, Digital Lightwave helps
its customers maintain a competitive
edge by providing engineering and
manufacturing expertise in the
development of innovative optical
monitoring and diagnostic
subsystems....
For example, Digital Lightwave has
recently developed an integrated
monitoring and analysis system....
Listed under "Core Technologies" are
"Optical applications: Monitoring,
diagnostics, real-time analysis."
Applicant has also stated, in response to specific
questions raised by the Examining Attorney, that
applicant's electronic testing apparatus uses lightwaves to
Ser No. 75/217,097
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test the integrity of the telecommunication line and that
its apparatus analyzes lightwaves.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Trademark Act,
if it immediately conveys knowledge of a significant
ingredient, quality, or characteristic of the goods with
which it is used. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). The question is not decided
in a vacuum, but in relation to the goods on which, or the
services in connection with which, it is used. See In re
Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215
(CCPA 1978).
There is no question that the term LIGHTWAVE describes
a characteristic of applicant's testing apparatus.
Applicant has acknowledged this descriptiveness by
disclaiming this term in its request for reconsideration,
and also, in its Supplemental Register registration for
DIGITAL LIGHTWAVE for essentially the same goods
(electrical testing equipment, namely, line integrity
testing apparatus),6 applicant has disclaimed exclusive
rights to LIGHTWAVE, an admission that the term is generic
for the services.
6 Registration No. 2,226,814, issued February 23, 1999.
Ser No. 75/217,097
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As for the combined term LIGHTWAVE MANAGEMENT, the
evidence shows that this term is also descriptive of
applicant's goods. As the Examining Attorney has pointed
out, the NEXIS excerpts refer to applicant's goods as
lightwave management products and lightwave management
equipment. Applicant did not specifically discuss these
articles in its appeal brief, but during the course of
prosecution it characterized the references as misuses by
the particular reporters. Although one such reference
might be dismissed as a misuse, here we have evidence of
multiple uses of "lightwave management" as a descriptive
term for applicant's products. Further, applicant's own
materials indicate the descriptive nature of the words.
The purpose of applicant's goods is to do lightwave
diagnostics and performance monitoring, and its systems are
used "to monitor, analyze and facilitate the management of
fiber-optic-based networks." To the relevant customers for
such goods, LIGHTWAVE MANAGEMENT, as used on the goods,
will immediately convey that one feature of the equipment
is to monitor the lightwaves in the fiber-optic-based
networks.
Applicant argues that LIGHTWAVE MANAGEMENT is an
oxymoron because light cannot be controlled and commanded.
However, lightwaves can be analyzed and monitored, and it
Ser No. 75/217,097
8
is the "supervision" meaning of "management" that would be
understood by the relevant consumers. Applicant appears to
take the position that the test of whether the term is
merely descriptive is based on whether one can determine
what the goods are based only on seeing the mark.
Applicant specifically argues that it would require "a
great deal of imagination and luck" for a consumer to
conclude what the products are from viewing the mark.
However, applicant misstates the test for determining
descriptiveness in arguing that imagination would be
required to guess what applicant's goods are from the mark
alone. As indicated above, the question of whether a term
is merely descriptive is not decided in a vacuum. "Whether
consumers could guess what the product is from
consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant also points to the lack of any dictionary
definition of the phrase "lightwave management." However,
the Office is not required to submit evidence that the
entire phrase LIGHTWAVE MANAGEMENT appears in a dictionary
in order to establish that the mark is merely descriptive.
Descriptive phrases are not necessarily found in
dictionaries and, thus, even without such evidence the
phrase as a whole may still be found to be merely
Ser No. 75/217,097
9
descriptive. See, for example, In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985) (VENTURE LENDING
ASSOCIATES merely descriptive of investing services).
Applicant also argues that there is no evidence of
competitors' use of the term. Although descriptive use by
competitors may be evidence that a mark is merely
descriptive, the absence of such evidence does not
necessarily mean that the mark is not descriptive. The
fact that an applicant is the first to use a term in
connection with its goods does not justify registration if
the term is merely descriptive of them. See In re Ruffin
Gaming LLC, 66 USPQ2d 1924 (TTAB 2002); In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB
1983).
Applicant has also made reference to a third-party
registration for MANAGEMENT OF LIGHT, with the word LIGHT
disclaimed, for "micro structured optical surfaces for use
in the field of optics for forming lenses, prisms,
beamsplitters, lenticulars, and reflectors."7 Because of
7 Registration No. 2,263,330. According to the request for
reconsideration, a copy of which was submitted by facsimile
transmission because the original never reached the Office (see
footnote 1), applicant submitted the record "obtained from the
USPTO web site" for this registration. Applicant did not submit
a copy with the facsimile transmission, but we have obtained the
information from the Office records, and have treated the
registration as being of record.
Ser No. 75/217,097
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the differences in these goods and those in applicant's
application, the fact that this mark was registered has no
persuasive value in our determination of whether
applicant's mark is merely descriptive.
Decision: The refusal of registration is affirmed.