EmbodyVR Inc.

Trademark Trial and Appeal BoardSep 17, 2020

88342555 (T.T.A.B. Sep. 17, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: September 17, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re EmbodyVR Inc. _____ Serial Nos. 88342553 and 88342555 _____ Daniel J. Noonan of Pirkey Barber PLLC, for EmbodyVR Inc. Mildred Black, Trademark Examining Attorney, Law Office 130, John Lincoski, Managing Attorney. _____ Before Kuhlke, Adlin and Larkin, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: EmbodyVR Inc. (“Applicant”) seeks registration on the Principal Register of the proposed standard character marks PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND for goods ultimately identified as: Downloadable software enabling users to identify the true direction of a sound source; Downloadable software to enhance spatial awareness through sound; Downloadable software to enhance virtual experiences through sound; Downloadable software used to spatialize one or multiple sound sources; Downloadable software to create experiences through placement of sound sources in different directions; Downloadable software used to create Serial Nos. 88342553 and 88342555 - 2 - and personalize sound; Downloadable software used to spatialize sound, in International Class 9.1 The Trademark Examining Attorney has refused registration of Applicant’s marks on the ground that PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND are merely descriptive of Applicant’s goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusals were made final, Applicant appealed and the Examining Attorney and Applicant filed briefs. We affirm the refusal to register in each application. I. Procedural Issue The appeals for Application Serial Nos. 88342553 and 88342555 involve common questions of law and fact and the records are essentially identical. Accordingly, we consolidate and decide the appeals in this single decision. See In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, *2 (TTAB 2020); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1214 (2020). Citations to the application record (in TSDR) and to the appeal (in TTABVUE) are to the file history of Application Serial No. 88342553 except where otherwise noted. II. Mere Descriptiveness A mark is deemed to be merely descriptive of goods, within the meaning of Section 2(e)(1), if it immediately conveys information about a quality, feature, function, or 1 Respectively, Application Serial Nos. 88342553 and 88342555, filed on March 15, 2019, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial Nos. 88342553 and 88342555 - 3 - characteristic of them. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark is merely descriptive must be made “in relation to the goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods, only that it describe a “single feature or attribute” of the goods. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). The Examining Attorney asserts that the proposed marks PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND each “describes a function or purpose of the identified software” because each enables “users to personalize and spatialize audio [and sound].” 6 TTABVUE 5; App. Ser. No. 88342555, 6 TTABVUE 5. The Examining Attorney concludes that “relevant consumers will immediately recognize that the applied-for mark[s] merely describe[] a function or purpose of applicant’s goods, namely, software for personalizing and spatializing audio [and sound] to the individual users.” Id. The Examining Attorney begins by pointing to Applicant’s identifications of goods themselves, each of which identifies software that is used to “spatialize sound,” Serial Nos. 88342553 and 88342555 - 4 - “enhance spatial awareness through sound,” to enhance and create “virtual experiences through sound,” and “to create and personalize sound.” See generally, In re Taylor & Francis (Publishers) Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (PSYCHOLOGY PRESS & Design found merely descriptive of nonfiction books in the field of psychology, in part because the applicant’s “identification of goods expressly states that the series of non-fiction books upon which applicant uses its mark are ‘in the field of psychology.’ The word PSYCHOLOGY therefore is merely descriptive of the subject matter of applicant’s books, as identified in the application ….”). She then turns to Applicant’s descriptive use of the same wording on its website. Excerpts from Applicant’s website are set out below:2 Check out exclusive games on PC and VR with personalized spatial audio created with our Google Resonance SDK; With audio personalized for your ears, you’ll reveal the true details from your recordings and expand your story into new dimensions; and Experience “In Flow” co-creative visual sound experience personalized from your motion to your ears. She also relies on the following definitions:3 Personalized: made or changed in order to be especially appropriate for a particular person;4 2 June 3, 2019 Office Action pp. 6-10. 3 The Examining Attorney’s request for judicial notice of dictionary definitions is granted. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014) (Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or regular fixed editions), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 4 6 TTABVUE 19 (MACMILLAN DICTIONARY (https://www.macmillandictionary.com). Serial Nos. 88342553 and 88342555 - 5 - Personalize: design or produce (something) to meet someone’s individual requirements;5 Spatial: relating to the size, shape, and position of things, and the relation of objects to each other in space;6 Audio: relating to sound that is recorded or broadcast;7 and Sound: a particular auditory impression and the sensation perceived by the sense of hearing.8 Finally she relies on examples of similar merely descriptive uses by third parties to support her position that the wording individually and together merely describes spatializing sound and personalizing it to the specific user. The Examining Attorney highlights the following examples:9 National Science Foundation website featuring an abstract titled “Personalized Spatial Audio via Scientific Computing and Computer Vision.” This abstract discusses how humans spatialize audio and sound. Excerpts include “discerning the spatial origin of sound” and “advantages of spatial sound are important.” (September 4, 2019 Office Action pp. 7–10; emphasis added); ResearchGate Abstract for a Conference Paper, “Sonification of 3D Scenes Using Personalized Spatial Audio to Aid Visually Impaired Persons.” This abstract states that the “sonar-like algorithm utilizes segmented 3D scene images, personalized spatial audio and musical sound patterns.” (September 4, 2019 Office Action pp. 6-7; emphasis added); 5 June 3, 2019 Office Action p. 2 (OXFORD LIVING DICTIONARIES (https://en.oxforddictionaries.com)). 6 6 TTABVUE 23 (MACMILLAN DICTIONARY (https://www.macmillandictionary.com)). 7 6 TTABVUE 16 (MACMILLAN DICTIONARY (https://www.macmillandictionary.com)). 8 App. Ser. No. 88342555, 6 TTABVUE 23 (MERRIAM-WEBSTER DICTIONARY (https://www.merriam-webster.com)). 9 6 TTABVUE 9. Serial Nos. 88342553 and 88342555 - 6 - ResearchGate, The Conference Paper is titled “Naviton—A Prototype Mobility Aid for Auditory Presentation of Three- Dimensional Scenes to the Visually Impaired.” This paper discusses technologies similar to Applicant’s by stating “[t]he proposed sonification algorithm utilizes reduction of information through scene image segmentation, personalized spatial audio via head-related transfer functions (HRTFs)….” (September 4, 2019 Office Action pp. 8–23; emphasis added); Website for CAMERA Centre for the Analysis of Motion, Entertainment Research and Applications article titled, “Personalized Spatial Audio Content for VR Applications” discussing how to simulate sounds for the individual user in a VR setting. (September 4, 2019 Office Action pp. 28-30; emphasis added); Article from WR Scout titled, “Is Sound the Secret Sauce for Making Immersive Experiences?” The article describes a user’s experience with “spatial audio” technology in a VR setting. (September 4, 2019 Office Action pp. 31–39); and Article in Hindai titled, “Current Use and Future Perspectives of Spatial Audio Technologies in Electronic Travel Aids.” This article describes applications of “spatialized audio” techniques. (September 4, 2019 Office Action pp. 40-66 (emphasis added). The Examining Attorney explains that the wording in the applied-for marks is commonly used in the relevant industry to describe the purpose or function of applicant’s software. 6 TTABVUE 9. Applicant contends the evidence does not support a finding that the proposed marks PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND merely describe a purpose or function with “any degree of particularity” but at most may be suggestive. 4 TTABVUE 7. However, “[a] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or Serial Nos. 88342553 and 88342555 - 7 - services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004). Here, where the proposed marks describe the purpose of the software to spatialize audio or sound to provide personalized audio or sound, they are sufficiently particular to come within the scope of Section 2(e)(1). Chamber of Commerce of the U.S., 102 USPQ2d at 1219. Applicant asserts the dictionary definitions for the individual words have several different dictionary definitions “that are non-descriptive when considered in the context of Applicant’s goods, and consumers considering Applicant’s Mark in the context of Applicant’s goods must use imagination to determine the characteristics or features of the products.” 4 TTABVUE 9. However, as the Examining Attorney explained, the fact “[t]hat a term may have other meanings in different contexts is not controlling,” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012), and “[i]t is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive,” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018). With regard to the third-party uses, Applicant “submits that these international scholarly articles are highly technical, aimed at a very sophisticated but narrow group of tech/health enthusiasts interested in, for example, virtually (sic) reality, electronic travel aids and auditory aids for the visually impaired. These articles are using ‘personalized’, ‘spatial’, and ‘audio’ as fleeting references, not commonly used terms to designate Applicant’s goods.” 4 TTABVUE 9. We first observe that although the contributors to the articles and target audience are international in scope, in the Serial Nos. 88342553 and 88342555 - 8 - context of these technical goods, we find the evidence to be probative of meaning and perception of the terms in the United States. In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003) (foreign wire service excerpts probative given the sophisticated public and the widespread use of personal computers that increase access to such sources); see also In re Bayer AG, 82 USPQ2d at 1835 (foreign publications accessible to the United States probative given “the growing availability and use of the internet as a resource for news, medical research results, and general medical information.”); In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017) (“Various factors may inform the probative value of a foreign website in any given case, such as whether the website is in English (or has an optional English language version), and whether the nature of the goods or services makes it more or less likely that U.S. consumers will encounter foreign websites in the field in question.”). The Examining Attorney responds that “[a]lthough the evidence might be complex, it is in the same field as applicant’s software, and therefore applicant’s consumers who are interested in applicant’s high-tech sound-related software may also be familiar with the evidence of record that is directly related to the function of applicant’s software.” 6 TTABVUE 10. The identification of goods is not limited and potential consumers would include those sophisticated in the field of audio technology and ordinary consumers looking to enhance their VR audio experiences. We find these third-party examples probative Serial Nos. 88342553 and 88342555 - 9 - to the extent they show use of the terms individually and together in the relevant industry, even if there is limited general consumer exposure. Applicant asserts its own use of the individual terms to describe its goods should be given little evidentiary value in the context of a merely descriptive rejection. On the contrary, Applicant’s own use is especially probative of the mere descriptiveness of the terms. In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“applicant’s own use of the term ERGONOMIC … highlights the descriptive nature of this term…”). See also In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (applicant’s explanatory text in specimens of use relevant to question of mere descriptiveness); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) (“Any competent source suffices to show the relevant purchasing public’s understanding of a contested term or phrase.”) (quoting In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) (“Evidence of the context in which a mark is used on labels, packages, or in advertising material directed to the goods is probative of the reaction of prospective purchasers to the mark.”); In re Omniome, Inc., 2019 BL 503454 *4 (TTAB 2019) (descriptive usage of terms by trademark applicant in its patent filings probative of mere descriptiveness). Cf. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1958 (TTAB 2018) (an applicant’s use of its mark on its website may be the most probative and damaging evidence of the genericness of its claimed mark). Serial Nos. 88342553 and 88342555 - 10 - Applicant points to its use of the phrase in a trademark manner. While that is one more piece of the puzzle it is by no means dispositive of the question. Use of the symbol “TM” in connection with the phrase “cannot make an otherwise unregistrable designation a trademark.” In re Active Ankle Sys., Inc., 83 USPQ2d 1532, 1538 n.5 (TTAB 2007); In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984). In addition, the fact that an applicant may be the first to use a term or specific phrase does not make it nondescriptive. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514- 15 (TTAB 2016). Finally, Applicant points to the third-party registrations listed below which include the words PERSONALIZED or SPATIAL without disclaimer.10 Mark Goods and Services Registration No. SPATIAL CONNECT Computer software enabling a user to connect and view geodatabases or spatial systems 3921737 (cancelled Section 8) SPACIAL Metal and plastic cabinets with sealable doors especially adapted to protect electrical distribution apparatus and industrial automation equipment 3860887 SPATIAL GENERATIONS Computer software for graphical management of burial plot location in a cemetery and other plot attributes 3722167 SPATIAL MSAG Electronic computer databases recorded on computer media 2518149 10 August 8, 2019 Response pp. 12-42. One of the submitted third-party registrations was cancelled and has no probative value other than as evidence that the registration issued. Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019). Serial Nos. 88342553 and 88342555 - 11 - populated with geographic information system data for use in assigning emergency 911 telephone calls to the appropriate emergency service personnel SPATIAL ARRAY Audio equipment, namely, amplifiers, subwoofers, loudspeakers and loudspeaker systems comprised of subwoofers, amplifiers and loudspeakers 3477732 WHERE STANDARDIZED GETS PERSONALIZED Downloadable educational course materials in the fields of grammar, math, reading, science, writing, soft skills job preparation, college application organization, art, music, foreign languages, computer programming, economics, and government, for all grade levels 5287579 YOUR PARTNER IN PERSONALIZED CARE Software as a service (SAAS) services featuring software for use in chronic condition management 4551870 PRENOVC REDEFINING PERSONALIZED CARE Software as a service (SAAS) services featuring software for promoting patient health; Software as a service (SAAS) services featuring software for promoting healthy patient pre- surgical activities to optimize post-surgical health and reduce recovery related complications, educate patients regarding risk stratifications in relation to surgical complication factors, promote healthy lifestyle decision making, and enable multiple medical professionals to monitor patient status and activities 5257451 Serial Nos. 88342553 and 88342555 - 12 - PERSONALIZED EDUCATION STARTS AT ESCHOLAR Business consultation services for the education market 448003211 These third-party registrations have little, if any, probative value. They are for very different marks for very different goods and services. In addition, third-party registrations are not conclusive on the question of descriptiveness as each case must stand on its own merits, and a mark that is merely descriptive must not be registered on the Principal Register simply because other such marks appear on the register. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011). The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). The record is clear: PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND each immediately tells consumers that a feature or purpose of Applicant’s software is to spatialize audio and sound to provide personalized sound. It is sufficient that a proposed mark merely describe a function or purpose of the goods to be, at a minimum, merely descriptive. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens). Chamber of Commerce of the U.S., 102 USPQ2d at 1219; see also Oppedahl & Larson, 71 USPQ2d at 1371 (“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the 11 This registration was submitted in Application Serial No. 88342555 at August 8, 2019 Response p. 38. Serial Nos. 88342553 and 88342555 - 13 - applicant’s goods or services”) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)). Contrary to Applicant’s position, these phrases do not present a unique, incongruous or otherwise nondescriptive meaning. Rather, the individual components of the phrases PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND retain their descriptive meaning in relation to the goods and the combinations result in composites that are themselves merely descriptive. See Fat Boys, 118 USPQ2d at 1516; In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009). This is not a record where there is any doubt that PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND merely describe a feature of Applicant’s software, namely that it personalizes and spatializes audio and sound for the user. Decision: The refusals to register PERSONALIZED SPATIAL AUDIO and PERSONALIZED SPATIAL SOUND as merely descriptive under Section 2(e)(1) are affirmed.