Fenmore International Ltd.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75615116 (T.T.A.B. Aug. 6, 2002)

Paper No. 17
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fenmore International Ltd.
________
Serial No. 75/615,116
_______
Lynn M. Jordan of Finnegan Henderson Farabow Garrett &
Dunner, LLP for Fenmore International Ltd.
James T. Griffin, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On January 4, 1999, Corporate Computer Systems Europe
GmbH, a corporation organized and existing under the laws
of Germany, filed the above-referenced application to
register the mark “AAC” on the Principal Register for
“electric, electronic and optical measuring, signaling,
checking (supervision) apparatus and instruments included
in Class 9, in particular electric devices and instruments
for recording, transmission and reproduction of audio and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/615,116
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video signals; apparatus and instruments for recording,
transmission and reproduction of audio signals and parts of
such apparatus included in Class 9; transmission apparatus,
receiving apparatus, apparatus for courtless (sic)
transmission of acoustic signals, coders, decoders,
computer programs stored on data carriers, software, data-
processing devices and their parts included in Class 9.”
As a basis for filing this application, applicant asserted
that it possessed a bona fide intention to use the mark in
commerce in connection with the listed goods. Applicant
also claimed priority based on an application to register
its mark which applicant had filed in Germany on July 1,
1998.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
based on his finding that confusion would be likely with
two registered trademarks. He also refused registration
under Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section
1052(e)(1), on the ground that the mark applicant seeks to
register is merely descriptive of the goods listed in the
application. In support of this refusal, he made of record
a copy of a page from an on-line acronym dictionary which
shows that “AAC” stands for “Advanced Audio Coding.”
Ser No. 75/615,116
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Additionally, the Examining Attorney held that the
identification-of-goods clause in the application was
indefinite. He made suggestions as to how applicant could
amend this clause to satisfy the requirement for a definite
identification of the goods.
Responsive to the first Office Action, applicant
amended the application to identify its goods as follows:
“reproduction instruments, recorders, editors, transmitters
and receivers for audio and video signals and parts of the
aforesaid goods; computer programs for controlling, tuning,
editing, monitoring and reproduction signal transmissions,
blank data cartridges, CD-ROMs, diskettes, disks and tapes,
none of the aforementioned goods being telecommunications
apparatus or access concentrators for similar goods.”
Applicant also argued that its mark is not merely
descriptive and presented arguments that confusion would
not be likely with the two cited registered marks. With
regard to descriptiveness, applicant stated that the
letters “AAC” are acronyms for a number of different
things, “including such things as Air Armorment Center,
Airborne Aircraft Controller, and American Adoption
Congress.”
The Examining Attorney suspended action on the
application pending receipt of a certified copy of
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applicant’s German registration, but continued the refusals
under Section 2(d) and 2(e)(1) of the Act, as well as the
requirement for a more definite identification-of-goods
clause. After applicant submitted the certified copy of
its German registration and withdrew its intention to use
the mark as a basis for the application under Section 1(b)
of the Act, the Examining Attorney made final the
requirement for a more definite identification-of-goods
clause and also made final the refusals to register based
on Sections 2(d) and 2(e)(1) of the Act.
Submitted with the final refusal to register were
excerpts from articles retrieved from the Nexis automated
database of publications which show the letters sought to
be registered as an acronym for “advanced-audio-
compression,” which is a “format for CD quality sound at
low and high bandwidths.”
Following assignment of the application to the above-
identified corporation and a change of attorneys, a timely
Notice of Appeal was filed on August 16, 2001, along with a
request for reconsideration, which included an amendment to
the existing identification-of-goods clause. Applicant
asked that it be replaced with the following: “equipment
for processing, recording, reproducing, editing, storing,
transmitting, and receiving audio signals; equipment and
Ser No. 75/615,116
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computer software for processing, recording, reproducing,
editing, storing, transmitting, and receiving audio data in
a digital form; data cartridges, CD-ROMs, diskettes,
computer disks, audio tapes, memory cards, and other medium
(sic) capable of storing digital data in International
Class 9.”
Applicant argued in its request for reconsideration
that based on the amended identification-of-goods clause,
confusion would not be likely with either of the two cited
registered marks, and further, that applicant’s mark is not
merely descriptive of the goods specified in the amended
application.
Submitted in support of the request for
reconsideration were copies of marketing materials which
applicant contended establish that its mark is not merely
descriptive and not likely to cause confusion with the two
cited registered marks. Significantly, one of the printed
brochures submitted by applicant identifies “AAC ” as “The
new global audio format,” and states that “… as an MPEG-2
extension and as part of MPEG 4, AAC has proved itself
capable of delivering audio of such outstanding quality
that it is safe to assume it will become the next
successful audio coding algorithm.” The brochure announces
that applicant “is proud to introduce the first MAYAH AAC
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software to record and play AAC formatted files. AAC is
very economical and can reduce transmission and storage
costs by as much as 50%.” The brochure goes on to state
that applicant’s recorder “[r]ecords and stores AAC coded
formats.”
The Trademark Trial and Appeal Board instituted the
appeal, but suspended action on it and remanded the
application to the Examining Attorney for consideration of
applicant’s request for reconsideration. Upon
reconsideration, the Examining Attorney maintained the
refusals under Sections 2(d) and 2(e)(1), as well as the
requirement for a more definite identification of
applicant’s goods. Submitted with the Examining Attorney’s
response to applicant’s request for reconsideration was a
copy of an entry from the on-line Smart Computing
dictionary, which explains that “Advanced Audio Coding
(AAC)” is “[a] new competitor to the MP3 standard. AAC
lets users download CD-quality recordings to their
computers. The new standard promises better compression
and, thus, faster download time span than the now widely
used MP3 standard. AAC’s developers claim the compression
reduces the download time of a 3-minute song from 21
minutes to 9. There are several variations of AAC,
however, and they aren’t interchangeable… There are also
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some players and encoders based on the public domain
version of the AAC format available for free…”
The application file was returned to the Board, and
action on the appeal was resumed. Applicant then timely
filed its brief on appeal. In its brief, applicant
submitted another amended version of the identification-of-
goods clause. Applicant sought to amend its application to
specify its goods as follows: “equipment for processing,
recording, reproducing, editing, storing, transmitting, and
receiving the audio signals, namely personal computers,
optical disk players and recorders, magnetic disk players
and recorders, magnetic tape players and recorders, hard-
drive memories, alarm clocks, radios, analog and digital
portable tape players, analog and digital portable disk
players, analog and digital portable memory players,
electrical wires and cables; software to enhance the
capabilities of multimedia applications, namely
applications to enhance the performance of any multimedia
system; written data cartridges, CD-ROMs, diskettes,
computer disks, RAM memories, semiconductor memories, and
memory cards[,] all featuring entertainment in Class 9.”
The application, along with applicant’s brief, was
forwarded to the Examining Attorney for his brief in
accordance with Trademark Rule 2.142(b). Based on the
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amended version of the identification-of-goods clause
presented in applicant’s appeal brief, the Examining
Attorney withdrew the refusal to register based on
likelihood of confusion. He maintained, however, that the
refusal based on descriptiveness and the requirement for a
more definite identification-of-goods clause are both well
taken. He pointed out that the most recent amendment not
only includes indefinite terminology, but also adds
products which are not within the scope of the
identification in the original application as it was filed.
Applicant timely filed a reply brief. In it,
applicant attempted yet another amendment to the
identification-of-goods clause in the application. This
time, applicant sought to remove the goods which the
Examining Attorney found to be outside the scope of the
original application, and applicant sought to clarify some
of the other products listed in the amendment applicant had
submitted with applicant’s appeal brief.
Applicant did not request an oral hearing before the
Board.
At the outset, we need to clarify which of the various
identification-of-goods clauses proffered by applicant is
being considered in this appeal. Trademark Rule 2.64(a)
provides that an applicant’s response to a refusal of
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registration or a requirement that has been either repeated
or designated as final is limited either to compliance with
the requirement or to an appeal. Ordinarily, unless the
Examining Attorney agrees to it or applicant had been
granted permission by the Board to amend the application
after the appeal had been filed, any such amendments would
not be considered. The proper procedure for the Examining
Attorney to have followed when he was presented with the
amendment applicant included with its appeal brief was to
return the application file to the Board to act on
applicant’s request to amend. This was not done, however.
The Examining Attorney apparently took the position that he
should consider the amendment applicant had proffered in
its brief, and when he did this, as noted above, he found
that although the amended identification-of-goods clause
still fell short of being sufficiently definite, it
nonetheless provided him with a basis upon which to
withdraw the refusal to register based on Section 2(d) of
the Act.
Because the Examining Attorney treated this amendment
as if it had been properly made, and in view of the fact
that it eliminated one of the grounds for refusing
registration, we have considered the amendment as if it had
been timely made in accordance with the Trademark Rules of
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Practice. The subsequent amendment offered by applicant in
its reply brief, however, has not been considered. The
Examining Attorney did not consider this amendment.
Accordingly, for purposes of this appeal, the
identification-of-goods clause referred to in applicant’s
appeal brief is the version we have considered. We agree
with the Examining Attorney that this amendment fails for
two reasons. First, it includes “alarm clocks” and
“electric wires and cables,” which are all goods outside of
the scope of the goods listed in the application as it was
originally filed. Trademark Rule 2.71(a) permits
amendments “to clarify or limit, but not to broaden,” the
identification of goods. Second, this version of the
identification-of-goods clause refers to “written data
cartridges, CD-ROMs, diskettes, computer disks, RAM
memories, semiconductor memories, and memory cards[,] all
featuring entertainment,” but this terminology does not
indicate what type of entertainment is stored on these
products, and without an indication of the subject matter,
this language does not provide enough information about the
goods to allow accurate determinations of whether confusion
is likely with other marks. The wording proposed by
applicant is simply not specific enough.
Ser No. 75/615,116
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The requirement for an amended identification-of-goods
clause which includes only goods encompassed within the
application as it was originally filed, and which does not
include indefinite terminology, is accordingly affirmed.
We therefore turn to the second issue before us in
this appeal, i.e., whether the mark applicant seeks to
register is merely descriptive of the goods specified in
the application, as amended. The test for registrability
under Section 2(e)(1) of the Lanham Act is well settled. A
mark is merely descriptive, and hence unregistrable, if it
immediately and forthwith describes a significant
ingredient, quality, characteristic, function, feature,
purpose or use of the goods in connection with which the
mark is, or is intended to be, used. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re MetPath
Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979).
Applicant “concedes,” (brief, p. 5), that the letters
it seeks to register “can be used as an abbreviation for
‘advanced audio coding.’” In any event, the evidence
submitted by the Examining Attorney makes this clear.
Further, this record establishes that Advanced Audio
Coding, or “AAC,” is a format for downloading digital
music. As noted above, applicant itself uses this acronym
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descriptively, and indicates in its own promotional
material that the acronym “AAC” stands for “Advanced Audio
Coding,” … “the new global audio format.” In that the
goods listed in the amended identification-of-goods clause
process, record, reproduce, edit, transmit and receive
audio signals, the letters “AAC” describe a key feature or
characteristic of applicant’s products, namely that they
can play and/or record AAC files.
Applicant’s arguments to the contrary are not
persuasive. Applicant notes that the evidence of record
indicates that there are nineteen definitions for this
initialism (including, e.g., “Aerial Ambulance Co.”), and
argues that the purchasing public would not necessarily
associate “Advanced Audio Coding” with its goods. As the
Examining Attorney points out, however, it is well settled
that the descriptiveness of a term must be determined not
in the abstract, but rather in relation to the goods
identified in the application and the possible significance
that the term is likely to have to purchasers of these
products because of the manner in which it is used in
connection with them. In re Abcor Development Corp., 588
F.2d 811,200 USPQ 215 (CCPA 1978). That a term may have
other meanings in different contexts is not controlling on
the question of descriptiveness. In re Bright-Crest, Ltd.,
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supra. In the instant case, the goods are recording and
playback devices and multimedia software which utilize AAC
technology. In connection with these products, purchasers
would clearly associate “Advanced Audio Coding” with the
letters “AAC.” Because this technology is a significant
feature or characteristic of these products, “AAC” is
merely descriptive of them within the meaning of Section
2(e)(1) of the Lanham Act.
DECISION: The requirement for a definite
identification-of-goods clause which does not include
products outside the scope of the application as it was
filed is affirmed. The refusal to register under Section
2(e)(1) of the Lanham Act because the mark is merely
descriptive of the goods set forth in the amended
application is also affirmed.