Entropic Communications, Inc.

Trademark Trial and Appeal BoardApr 13, 2009

No. 77146849 (T.T.A.B. Apr. 13, 2009)

Mailed: April 13, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Entropic Communications, Inc. ________ Serial No. 77146849 _______ John M. Kim of IP Legal Advisors for Entropic Communications, Inc. Robin M. Mittler, Trademark Examining Attorney, Law Office 117 (Loretta C. Beck, Managing Attorney). _______ Before Grendel, Kuhlke and Mermelstein, Administrative Trademark Judges. Opinion by Grendel, Administrative Trademark Judge: Applicant, Entropic Communications, Inc., seeks registration on the Principal Register of the mark ENABLING CONNECTED HOME ENTERTAINMENT (in standard character form) for Class 9 goods identified in the application as Broadband network communication integrated circuits installed in set-top boxes, home gateways, television sets and computers to enable said devices to communicate with each other; semiconductor chips and semiconductor devices for THIS OPINION IS NOT CITABLE AS PRECEDENT OF THE TTAB Ser. No. 77146849 2 use in telecommunications products, and software for operating the semiconductor chips and semiconductor devices.1 The Trademark Examining Attorney has issued a final refusal to register applicant’s mark on the ground that it is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). Applicant has appealed the final refusal. Applicant and the Trademark Examining Attorney have filed briefs.2 We affirm the refusal. 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 idea of each and every specific feature of the applicant’s goods or services in order to be considered merely 1 Serial No. 77146849, filed on April 2, 2007. The application was filed based on applicant’s asserted bona fide intention to use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b). 2 We sustain the Trademark Examining Attorney’s objection to the untimely evidence submitted by applicant with its appeal brief. See Trademark Rule 2.142(d), 37 C.F.R. §2.142(d). Ser. No. 77146849 3 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); 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 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. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, 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 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); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). Ser. No. 77146849 4 Applying these principles in the present case, we find on this record that the term ENABLING CONNECTED HOME ENTERTAINMENT is merely descriptive of applicant’s goods as identified in the application, because it directly and immediately describes the function and purpose of applicant’s goods. That is, applicant’s “integrated circuits” and “semiconductor chips” and associated software are designed and used for the purpose of “enabling” the operation of “connected home entertainment” products and systems. First, we find that HOME ENTERTAINMENT is merely descriptive of applicant’s goods. The Trademark Examining Attorney has made of record a dictionary definition of “home entertainment,” i.e.: “the aggregate of appliances, as stereo systems, television, videocassette recorders, or computers, used for diversion in the home.” (Random House Unabridged Dictionary (2006)). According to applicant’s identification of goods, applicant’s integrated circuits are installed in various such “home entertainment” appliances, namely, “set-top boxes, home gateways, television sets and computers.” The term HOME ENTERTAINMENT in applicant’s mark directly identifies this characteristic of the goods, i.e., the category of products Ser. No. 77146849 5 of which applicant’s integrated circuits are components, i.e., home entertainment appliances and devices. We also find that CONNECTED is merely descriptive of applicant’s goods. Of record are dictionary definitions of “connected,” i.e.: “united, joined, or linked”; and “having a connection.” (Id.) According to applicant’s identification of goods, applicant’s integrated circuits are components of home entertainment appliances or devices which “enable said devices to communicate with each other.” We take judicial notice that the word “communicate,” as used in applicant’s identification of goods, is defined as “to be joined or connected.”3 Based on this evidence, we find that the word CONNECTED in applicant’s mark is merely descriptive because it directly describes a feature or characteristic of the home entertainment products and systems of which applicant’s goods are components, i.e., that they are “connected.” Next, in addition to finding that CONNECTED and HOME ENTERTAINMENT each are merely descriptive of applicant’s goods, we also find, more significantly, that the evidence of record establishes that the phrase CONNECTED HOME ENTERTAINMENT, as a whole, is a term of art in the consumer 3 Random House Unabridged Dictionary (2006.) The Board may take judicial notice of dictionary definitions. See University of Ser. No. 77146849 6 electronics field, being the name of a category of products of which applicant’s integrated circuits and semiconductors are components. See e.g., the following excerpts from Internet websites (including applicant’s own website) and from newspaper articles: January 8, 2007 article at online magazine xchange (www.xchangemag.com): Headline: “Microsoft Targets Connected Entertainment with Xbox/TV Integration”; Text: “In addition to grabbing a larger share of the consumer electronics market, Microsoft seeks to control the market for connected home entertainment systems, as some vendors now call them.” May 2, 2006 article at online magazine Broadcast Newsroom (www.broadcastnewsroom.com): Headline: “HANA Showcases Connected Home Entertainment Experience at CONNECTIONS Digital Home Conference”; Text: “The High-Definition Audio-Video Network Alliance (HANA) will demonstrate the next-generation connected home entertainment experience in Pulse-Link Booth #413 at CONNECTIONS: The Digital Home Conference and Showcase….” January 10, 2007 Ventura County Star (California): “By 2010, about 30 million U.S. homes are expected to have a connected home entertainment network. ... The use of music and video from the Internet and the trend to have more consumer electronics at home connected to the Internet are also driving how homes are changing. ... Parks Associates sees these two trends going toward a ‘connected home entertainment ecosystem.’ In such a system, a PC would collect and disseminate information to gaming consoles, televisions, digital video records and stereo systems.” 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). Ser. No. 77146849 7 January 9, 2008 article/press release at www.reuters.com: Headline: “Gracenote Aligns With Polaroid and Texas Instruments to Power Next-Generation Connected Home Products.” Text: “... Our technology and services are perfectly suited for companies wanting to address the market’s demand for products that enrich their digital entertainment experience through online services and connected home entertainment products.” September 7, 2006 press release from website of Parks Associates (www.parksassociates.com/press/press_releases): “U.S. broadband households are a prime market for connected home entertainment, with over 16 million harboring strong interest in these applications, according to Networks in the Home: Connected Consumer Electronics, a new report from Parks Associates. April 12, 2007 press release regarding applicant itself, at http://rfdesign.com: Headline: “New entity focuses on connected home entertainment”; Text: “San Diego, Calif.-based home networking developer Entropic Communications, Inc. [applicant herein] has inked a definitive agreement to acquire fabless RFIC’s designer RF Magic. ... This merger brings together two independently successful companies in one of the fastest growing segments of the semiconductor market. We can now offer customers a comprehensive product portfolio for the connected home entertainment market,” stated Henry [applicant’s president and CEO]. Likewise on applicant’s own website: Heading: “Connected home entertainment IN and AROUND the house”. Text: “Entropic is a leading technology solutions provider enabling connected home entertainment. We provide the chipsets and associated software that revolutionize the way video and other multimedia content are brought into the house and shared throughout the house using the existing coax infrastructure.” Ser. No. 77146849 8 Applicant’s own merely descriptive use of the term in question is especially probative evidence of mere descriptiveness. Cf. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987). Based on this evidence, we find that CONNECTED HOME ENTERTAINMENT merely describes a particular category of consumer electronics products and/or systems. Applicant’s goods as identified in the application (“...integrated circuits installed in set-top boxes, home gateways, television sets and computers to enable said devices to communicate with each other...”) clearly are directed to this “connected home entertainment” category of products. Applicant’s integrated circuits and semiconductors are components of “connected home entertainment” products and systems, and CONNECTED HOME ENTERTAINMENT directly describes this characteristic of applicant’s goods, i.e., what they are used for. We next find that the word ENABLING in applicant’s mark is merely descriptive of applicant’s goods. The Trademark Examining Attorney has made of record dictionary definitions of “enable” (the present participle of which is “enabling”). Its general meaning is “make something possible; to make something possible or feasible.” More specifically with regard to electronics, it also means Ser. No. 77146849 9 “cause something to start to operate: to make a piece of equipment or computer system functional.” (http://encarta.msn.com). These dictionary definitions establish that the word “enabling” immediately describes what applicant’s integrated circuits and semiconductors do – they are components that make the operation of connected home entertainment products and systems possible, feasible, and functional. Moreover, applicant’s own identification of goods uses the term descriptively, specifically stating that applicant’s products are used “to enable” the operation of connected home entertainment products and systems. Based on this dictionary evidence and on applicant’s own usage of the term in its identification of its goods, we find that ENABLING is merely descriptive of applicant’s goods. Having found that ENABLING and the phrase CONNECTED HOME ENTERTAINMENT each are merely descriptive of applicant’s goods, we also find that the composite, ENABLING CONNECTED HOME ENTERTAINMENT, likewise is merely descriptive. Applicant’s combination of these merely descriptive terms does not create a composite which is incongruous or otherwise inherently distinctive. Rather, the merely descriptive components maintain their mere descriptiveness when combined. The composite immediately Ser. No. 77146849 10 informs purchasers that applicant’s goods enable the operation of connected home entertainment products and systems. Our finding is supported by additional evidence in the record, i.e., applicant's own usage of the phrase in a merely descriptive manner on its website, (http://www.entropic.com), and in its press releases. See, e.g.: “Entropic is a leading technology solutions provider enabling connected home entertainment. We provide the chipsets and associated software that revolutionize the way video and other multimedia content are brought into the house and shared throughout the house using the existing coax infrastructure.” “[Entropic], a leading provider of silicon solutions to enable connected home entertainment, today reported…”; January 8, 2008 press release at www.newsblaze.com: “Entropic Communications, Inc., a leading provider of systems solutions to enable connected home entertainment, in conjunction… January 8, 2008 press release at www.primenewswire.com: [Entropic] develops and markets systems solutions to enable connected home entertainment… Again, applicant’s own merely descriptive use of the term in question is especially probative evidence of mere descriptiveness. Cf. In re Gould Paper Corp., supra. Ser. No. 77146849 11 For all of the reasons discussed above, we find that ENABLING CONNECTED HOME ENTERTAINMENT is merely descriptive of applicant’s goods as identified in the application. The phrase immediately describes the function and purpose of applicant’s goods, i.e., what they are used for. They are components of a particular and recognized category of products, i.e., “connected home entertainment” products and systems, components which serve the purpose of “enabling” the operation of such products and systems. We have considered all of applicant’s arguments to the contrary, but we are not persuaded. When viewed as a whole and considered in connection with applicant’s goods, which are components of the category of goods known as “connected home entertainment” products and systems, ENABLING CONNECTED HOME ENTERTAINMENT is neither vague nor does it require any “mental gymnastics” to ascertain its meaning or significance as applied to the goods. Applicant’s contention to the contrary is based on a tortured dissection of the mark. Moreover, it is not dispositive that applicant might be the first or only user of the phrase. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983). This is especially so where, as here, such use of the phrase by applicant is itself merely descriptive use. In re Gould Paper Corp., Ser. No. 77146849 12 supra. Nor is the fact that the phrase might not appear in a dictionary dispositive, where the merely descriptive significance of the phrase is otherwise established, as it is here. See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977). We conclude that applicant’s mark is merely descriptive, and that registration on the Principal Register therefore is barred under Trademark Act Section 2(e)(1). Decision: The refusal to register is affirmed.