Institute of Electrical and Electronics Engineers, Inc.

Trademark Trial and Appeal Board

Aug 30, 2002

No. 75437901 (T.T.A.B. Aug. 30, 2002)

August 30, 2002
Paper No. 16
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
In re Institute of Electrical and Electronics Engineers, Inc.
_______
Serial No. 75/437,901
_______
Sandra Edelman of Dorsey & Whitney LLP for Institute of
Electrical and Electronics Engineers, Inc.
Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Seeherman, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Institute of Electrical and Electronics Engineers,
Inc., doing business as IEEE, has filed an application to
register the term "1394" for a "publication, namely, standard for
a high performance serial bus."1
Registration has been finally refused on several
grounds. First, that under Sections 1, 2 and 45 of the Trademark
Act, 15 U.S.C. §§1051, 1052 and 1127, the term "1394" "merely
1 Ser. No. 75/437,901, filed on February 20, 1998, which alleges a date
of first use anywhere of December 31, 1991 and a date of first use in
commerce of December 31, 1995.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/437,901
2
identifies a designated industry standard, as used on the
specimen of record," and that, "as [so] used, [it] would not be
perceived as a trademark."2 Second, that under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), the term "1394" is
merely descriptive, when used in connection with applicant's
product, "of the subject matter contained in and addressed by the
applicant's ... serial bus standard."3 Third, and lastly, that
under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a),
"[t]he drawing displays the mark as 1394," but because "this
differs from the display of the mark on the specimen, where it
appears as IEEE Std 1394-1995," applicant must "submit a
substitute specimen that shows use of the mark shown in the
drawing" and "verify, with an affidavit or declaration ..., that
the substitute specimen was in use in commerce at least as early
as the filing date of the application."4
2 Such refusal is alternatively expressed by the Examining Attorney as
a failure of such term to function as a trademark for applicant's
product.
3 Although not so indicated in either the final refusal or any prior
Office Action, the Examining Attorney asserts in his brief that the
mere descriptiveness refusal "is made in the alternative should this
Board not agree with the above determination by the trademark-
examining attorney" regarding the refusal on the ground of failure of
the term "1394" to function as a mark as used on the specimen.
4 While the final refusal also required that applicant, in the
alternative, must "submit a new drawing of the mark that agrees with
the specimen," such refusal nevertheless further indicated that
"applicant may not amend the drawing if the amendment would materially
alter the character of the mark." Inasmuch as it is obvious, however,
that addition of the term "IEEE" to the term "1394" materially alters
the character of the latter (see, e.g., In re Vienna Sausage Mfg. Co.,
16 USPQ2d 2044, 2047 (TTAB 1990); In re Nationwide Industries, Inc., 6
USPQ2d 1882, 1885-86 (TTAB 1988); and Visa Int'l Service Ass'n v.
Life-Code Systems, Inc., 220 USPQ 740, 743-44 (TTAB 1983)),and since
the Examining Attorney's brief focuses solely on the contention that
applicant "has not provided an acceptable specimen of use" and
consequently is silent with respect to the alternative requirement
Ser. No. 75/437,901
3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not held.5 We affirm the mere descriptiveness
refusal, but reverse the other refusals to register.
Turning to the first ground of refusal, the specimen of
record shows the following manner of use of the term "1394":
made in the final refusal, no further consideration will be given
thereto.
5 Although applicant timely requested an oral hearing, it subsequently
withdrew such request.
Ser. No. 75/437,901
4
Applicant, noting in its initial brief that the product in
connection with which it uses the term "1394" is "a specific
technical publication distributed by Applicant that contains a
standard for a high performance serial bus," argues that:
The primary question in determining
whether a mark functions as a trademark is
"whether the designation in question, as
used, will be recognized in and of itself as
an indication of origin for the particular
product." Procter & Gamble Co. v. Keystone
Automotive Warehouse, Inc., 191 USPQ 468, 474
(TTAB 1976). In this case, Applicant's mark
(the number "1394") meets this test since it
has been used in interstate commerce to
identify Applicant's goods, i.e., its
technical publication containing a standard
for a high performance serial bus.
By way of background, applicant further asserts in its
initial brief that:6
Applicant is the world's largest
technical professional society with members
spanning the globe. Applicant is known in
6 Applicant additionally contends therein that:
Significant to note is that Applicant has received a
trademark registration for a solely numeric designation of
another standard it publishes, i.e., the mark "802" for
"[p]ubications, namely, pamphlets of standards and
specifications for local and metropolitan area networks."
(See U.S. Trademark Registration No. 2,342,235 for IEEE
Standard No. 802.) Since the test for trademark protection
has already been met by such a numeric designation under
similar circumstances, it is also met in this case.
We observe, however, that applicant never made of record a copy of the
file history for such registration and, thus, there is no basis for a
comparison of the determination of registrability therein with the
factual situation presented by this appeal. Moreover, even if such
evidentiary information had been provided, it is settled that each
case must be determined on its own merits. See, e.g., In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
["Even if some prior registrations had some characteristics similar to
[applicant's] application, the ... allowance of such prior
registrations does not bind the Board or this court."]; In re Broyhill
Furniture Industries Inc., 60 USPQ2d 1511, 1514 (TTAB 2001); and In re
Pennzoil Products Co., 20 USQP2d 1753, 1758 (TTAB 1991).
Ser. No. 75/437,901
5
the industry to publish nearly 30% of the
world's literature in the electrical,
electronics and computer engineering and
science fields. Applicant's publications are
the most cited publications in its field, and
Applicant's standards are a recognized leader
in the development of global standards in
electrical and computer engineering.
Applicant publishes an annual catalog
identifying the Mark with the subject matter
of the publication it designates, and
Applicant also displays the Mark on its
website as an identifier of this publication.
Thus, the Mark meets the test of being
recognized in and of itself as an indication
of origin for the product it designates--in
this case, Applicant's publication for a high
performance serial bus standard.
However, as the Examining Attorney accurately points
out in his brief, applicant "did not provide any documentation,
exhibits, [printed] information or other evidence in support of
its arguments." Noting, furthermore, that "Section 45 of the
Trademark Act ... defines a 'trademark' as a 'word, name, symbol,
or device, or any combination thereof that is used ... in
commerce to identify and distinguish his or her goods (emphasis
added)" and that, "[b]efore rights in a term as a trademark can
be established, the subject matter to which the term is applied
must be 'goods in trade,'" the Examining Attorney maintains that:
The proposed numerical designation
"1394" is identified in the record as a
publication, namely a "standard." A
"standard" is a type of publication or report
in the field of electrical engineering that
consists of a body of information agreed upon
by the Applicant, The Institute of Electrical
and Electronic[s] Engineers, Inc., (IEEE),
[which is] disseminated and designated for
use by others in the particular relevant and
related fields. The purposes of the standard
include, for example, providing for
uniformity of or for a particular application
or device in the field of electrical
Ser. No. 75/437,901
6
engineering. In this case, the "1394"
standard is an external bus standard that
embodies and supports particular transfer
protocols and transfer rates of speed. Its
application is typically for external buses
on personal computers.
According to the Examining Attorney, such "information
is supported by ... [a] definition [he] made of record" of the
term "IEEE 1394" from the "Webopedia," which touts itself as
"[t]he #1 online encyclopedia dedicated to computer technology,"
and by "56 Nexis stories [he] made of record," which include
reference to the term "1394." The former defines "IEEE 1394" as
follows (underlining and italics in original):
A new, very fast external bus standard
that supports data transfer rates of up to
400 Mbps (400 million bits per second).
Products supporting the 1394 standard go
under different names, depending on the
company. Apple, which originally developed
the technology, uses the trademarked name
FireWire. Other companies use other names,
such as I-link and Lynx, to describe their
1394 products.
A single 1394 port can be used to
connect up to 63 devices. In addition to its
high speed, 1394 also supports isochronous
data--delivering data at a guaranteed rate.
This makes it ideal for devices that need to
transfer high levels of data in real-time,
such as video devices.
Although extremely fast and flexible,
1394 is also expensive. Like USB, 1394
supports both Plug-and-Play and hot-plugging,
and also provides power to peripheral
devices. The main difference between 1394
and USB is that 1394 supports faster data
transfer rates and is more expensive. For
this reason, it is expected to be used mostly
for devices that require large throughputs,
such as video cameras, whereas USB will be
used to connect most other peripheral
devices.
Ser. No. 75/437,901
7
Representative examples of the relevant "NEXIS"
excerpts are set forth below (emphasis added):7
"[A]nother new device, the PowerFile
C200 from Escient Digital Storage Group,
provides more than one terabyte of digital
storage space .... Billed as the 'world's
first IEEE-1394 based CD/DVD changer,' the
C200 runs on Windows 98 ....
The IEEE 1394 serial bus provides a non-
proprietary high-speed method of
interconnecting digital devices." -- National
Underwriter; December 13, 1999;
"Cirrus Logic announced an agreement to
license IEEE 1394 serial bus firmware from
Digital Harmony Technologies for system-on-
chip designs ...." -- TechWeb News, September
27, 1999;
"The Model 2345 delivers full VME memory
and control from any host equipped with an
IEEE 1394 serial bus port." -- Albuquerque
Tribune, August 2, 1999;
Skipstone Inc. ... developed the first-
ever products for a digital interface known
as 1394 serial bus and used to connect
computers with telephones, radios or
videocassette recorders." -- Austin Business
Journal, April 4, 1997;
"With Pentium II, Intel will offer a new
level [of] performance augmented by systems
sporting an advanced graphics port, high-
performance 1394 serial bus, and Synchronous
DRAM ...." -- TechWire, March 24, 1997;
7 Because 34 of the 56 excerpts made of record by the Examining
Attorney are from the wire services "Business Wire" and "PR Newswire,"
they are of limited probative value inasmuch as there is no evidence
that the stories set forth therein have appeared in publications of
general circulation in the United States. It therefore cannot be
assumed that the excerpts therefrom have had any material impact on
consumer perception or attitude as to the meaning of the term "1394."
See, e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1555
(TTAB 1987) at n. 6 and In re Men's Int'l Professional Tennis Council,
1 USPQ2d 1917, 1918-19 (TTAB 1986). Moreover, of the remaining 22
excerpts, many are duplicative in content and thus their probative
value, in terms of the range of publications in which stories
referring to the term "1394" have appeared, is limited.
Ser. No. 75/437,901
8
"Texas Instruments Inc. intends to
provide the building blocks for a new
generation of technology with a series of
controllers that better implements the 32-bit
PC Card and the 1394 serial bus
specifications." -- InfoWorld, October 28,
1996;
"It also means supporting new, high-
speed external buses such as Universal Serial
Bus and the International Electrical and
Electronics Engineers' 1394 serial bus
standard." -- InternetWeek, April 1, 1996;
and
"Apple wants to showcase its own
implementation of the 1394 serial bus, called
FireWire, and doesn't want Microsoft to get
all the credit." -- InfoWorld, March 11,
1996.
Based on the above evidence, the Examining Attorney
maintains that:
[T]he company Apple uses the trademark
"Firewire" to identify the external bus on
its computers that conform to the 1394
standard. Other companies use their own
trademarks as well to identify the external
buses on their computers that comply with
this standard. Generally, the use of such
standards allows a certain necessary
uniformity that, for example, all
manufacturers of personal computers comply
with in order for end users and computer
network service providers to freely and
efficiently communicate with each other.
Without such standards ... it would be nearly
impossible for users of computers
manufactured by different companies to
transmit and receive data with each other.
In the instant application the Applicant
does not show use of "1394" as a trademark.
It is shown in the record used and provided
by the [A]pplicant as a published standard
for others to use. It does not identify a
single source of goods in commerce but rather
its use [is] in the goods and/or services
provided by sources other than the Applicant
that comply with this agreed upon external
bus standard. The record establishes and the
Ser. No. 75/437,901
9
Applicant does not provide any evidence to
the contrary that this standard is solely
provided for use by others as an electrical
engineering standard for use in the
manufacture of goods and provision of
services by others.
The record as a whole does not show that
the Applicant uses the proposed mark on its
own goods in trade. Rather, the record as a
whole establishes that the Applicant only
publishes a standard or report that provides
the technical specifications of the standard
for use by others to provide goods and/or
services that conform, comply, meet and
fulfill this standard for the purposes of
industry.
We disagree with the Examining Attorney, however, that
the specimen does not evidence use of the term "1394" in the
manner of a mark in connection with applicant's product. As
persuasively pointed out in its reply brief, applicant's product
is its published standard, which the specimen shows is designated
by the term "1394" and is entitled "IEEE Standard for a High
Performance Serial Bus" (bold in original):
The specimen of record shows that
Appellant uses the 1394 mark on and in
connection with the goods identified in the
application, i.e., a "publication, namely,
standard for a high performance serial bus."
Indeed, the specimen is the cover page of the
publication. .... Thus, contrary to the
Examining Attorney's argument that Appellant
does not use the proposed mark on its own
goods in trade, the standard publication is
the good in trade and the mark is used on the
good.
The Examining Attorney also points out,
correctly, that others in the industry use or
refer to the 1394 standard in connection with
the sale of their goods to indicate that
their goods or services conform to the
standard. But this third[-]party use does
not render Appellant's use on the standard a
non-trademark use. These are downstream
Ser. No. 75/437,901
10
users who have purchased Appellant's standard
publication product for use in the
manufacture of their goods, and these users
are indicating to the consuming public the
application of the 1394 standard in the
manufacture of their goods.
This downstream use is analogous to a
manufacturer who purchases a third party's
trademarked ingredient or component of a
product and then labels that product as made
with or containing that ingredient or
component. As the McCarthy treatise
explains, a product may "have multiple marks
owned by different firms .... Such multiple
marking is entirely appropriate so long as
the separate identifying function of both
marks is apparent to the customer, either
explicitly or implicitly." McCarthy on
Trademarks and Unfair Competition § 7:8 (4th
ed. 2002) (citing, e.g., Safe-T Pacific Co.
v. Nabisco, Inc., 204 U.S.P.Q. 307 (T.T.A.B.
[1979]); Yard-Man, Inc. v. Getz
Exterminators, Inc., 157 U.S.P.Q. 100
(T.T.A.B. 1968).
Accordingly, that manufacturers and other users of applicant's
publication for its "1394" standard may label or promote their
goods or services as conforming to such standard does not, per
se, make applicant's use of the term "1394" on its publication a
non-trademark use or otherwise mean, in the absence of the term's
being merely descriptive, that it fails to function as a mark for
applicant's standard for a high performance serial bus.
Turning next, therefore, to the refusal on the ground
of mere descriptiveness, it is well settled that a term is
considered to be merely descriptive of goods or services, within
the meaning of Section 2(e)(1) of the Trademark Act, if it
forthwith conveys information concerning any significant
ingredient, quality, characteristic, feature, function, purpose,
subject matter or use of the goods or services. See, e.g., In re
Ser. No. 75/437,901
11
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). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, 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 such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test." In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant argues that the term "1394" does not describe
any purpose, function, characteristic or feature of its standard
for a high performance serial bus. In particular, as stated in
its initial brief, applicant asserts that (bold in original):
The Mark is not a general term
describing all standards published by the
Applicant, but instead identifies a unique
standard for a high performance serial bus.
Moreover, the Mark describes no quality or
function of the publication. Use of the Mark
"1394" refers to a specific standard
published by Applicant in much the same way
that the registered trademark "KLEENEX"®
refers to a specific brand of facial tissue.
Thus, rejection of the Mark "1394" for
Ser. No. 75/437,901
12
descriptiveness would be analogous to
rejection of the Mark "KLEENEX"® as merely
descriptive of all brands of facial tissue,
which would clearly be improper.
In addition, as set forth in its reply brief, applicant contends
that (bold in original):
Here ... 1394 does not have any
descriptive significance when used in
connection with a high performance serial bus
standard. The designation 1394 is arbitrary,
and the Examining Attorney does not offer any
evidence that the mark is descriptive of any
aspect of the goods. The Examining Attorney
does refer to an explanation [from
"Webopedia"] of the 1394 standard made of
record ... and the Nexis stories made of
record ..., but these references almost
uniformly point to Appellant IEEE as the
source of the standard and in no way support
any nexus between the numerical 1394
trademark and the nature, quality or any
other aspect of the high performance serial
bus standard .... Under the circumstances,
the Examining Attorney has failed to
establish that the 1394 mark has any
descriptive significance.
The Examining Attorney, on the other hand, maintains in
light of the previously noted evidence of record that "[t]he
proposed numerical designation '1394' merely describes the
subject matter of the identified goods" in that it generically
designates a "particular industrial standard." Specifically, he
insists that such evidence "establishes prima facie that the
numerical designation '1394' identifies the subject matter of ...
a standard for a high performance serial bus known widely
throughout the relevant fields and industries as 'IEEE Standard
1394' and '1394', in reference to the IEEE Standard."
We agree with the Examining Attorney. Contrary to
applicant's arguments, the record establishes that the only name
Ser. No. 75/437,901
13
by which applicant's publication of a standard for a high
performance serial bus is known is "1394." While such term--on
this limited record--does not in and of itself appear to describe
any significant ingredient, quality, characteristic, feature,
function, purpose or use of applicant's goods, it is the sole
designation for (other than the acronym or abbreviation "IEEE,"
by which applicant is often referred), and thus serves to
generically name, applicant's standard for a high performance
serial bus. As such, the term "1394" merely describes the
subject matter of applicant's publication. Consequently, unlike
applicant's example of the mark "KLEENEX" for a brand of facial
tissue, or the terms "FireWire" or "IEEE" for a brand of high
performance serial bus which conforms to applicant's published
standard, the record herein contains clear evidence which shows
that the only term which those in the industries or fields served
by applicant's publication utilize to designate the particular
standard for a high performance serial bus is "1394." Applicant,
we further note, has offered no evidence to rebut the Examining
Attorney's prima facie showing.
Turning to the third and last ground for refusal,
applicant asserts in its initial brief that, rather than the
designation "IEEE Std 1394-1995" (as shown on the specimen of
record) being its mark, as claimed by the Examining Attorney,
"[t]he wording 'IEEE Std' simply indicates what '1394' already
identifies--that '1394' is an IEEE standard." According to
applicant, "[t]he number '1995' is the year of the standard,
which will change to reflect the year of any update(s)."
Ser. No. 75/437,901
14
Applicant consequently insists that (bold in original) "[t]he
number '1394' is thus the only trademark within this display, and
therefore, the only trademark to be shown in the drawing," so
that a verified substitute specimen is not required.
The Examining Attorney, however, urges that the
specimen of record does not illustrate use of the term "1394" as
a mark for applicant's product. Specifically, the Examining
Attorney contends that:
The Applicant's specimen of record
consists of the cover or front page of a
publication titled "IEEE Standard for a High
Performance Serial Bus." This type of
publication is known in the relevant
industries and trades as a standard. It
shows use of the proposed mark as part of a
phrase, namely "IEEE Std 1394-1995." The
applicant explains in the record that the "-
1995" portion identifies a year. However,
the focus of this requirement for an
acceptable specimen is that the proposed
numerical designation "1394" does not appear
on the specimen of record in and of itself as
a trademark. It appears only as a non-
separable part of the wording "IEEE Std
1394." The numerical designation "1394" does
not appear anywhere else on the specimen of
record. It is highly unlikely that users of
the goods will perceive "1394" separate and
apart from the wording "IEEE Std 1394" as a
trademark for the identified goods based upon
this specimen.
The specimen of record does not show
unique, separate or distinct use of the
numerical designation "1394" but only shows
it used as part of the wording "IEEE Std
1394." Therefore, the specimen in question
does not show trademark use of "1394" on the
identified goods and the ... refusal to
register on the grounds that the Applicant
has not provided an acceptable specimen of
use in the record should be upheld.
Ser. No. 75/437,901
15
Assuming, for purposes of this ground of refusal, that
the term "1394" is not merely descriptive of applicant's product
and thus could function as a mark therefor if so used, we concur
with applicant that, given both the nature of its product and
the sophistication of the purchasers and users thereof, the term
"1394" as used on the specimen of record would be regarded as a
mark for applicant's publication, namely, a standard for a high
performance bus, even though such term appears as part of the
phrase "IEEE Std 1394-1995." The Examining Attorney, we note,
appears to accept applicant's argument that in such phrase, the
element "-1995" would be regarded as the year of issuance of
applicant's standard and, therefore, is of no trademark
significance. Specifically, as reiterated in its reply brief,
applicant asserts that:
[T]he designation "1995" denotes the year of
Appellant's standard, and would be viewed as
distinct from the mark itself. Appellant
would not want to register the year as part
of the mark, since the year could be subject
to change. See TMEP [Section] 1214 (noting
that marks incorporating a date (usually a
year) should not be included in registered
marks as "phantom" elements).
The Examining Attorney, however, simply maintains that, as
previously indicated, "the focus of this requirement for an
acceptable specimen is that the proposed numerical designation
'1394' does not appear on the specimen of record in and of itself
as a trademark" and, thus (emphasis added): "It is highly
unlikely that users of the goods will perceive '1394' separate
Ser. No. 75/437,901
16
and apart from the wording 'IEEE Std 1394' as a trademark for the
identified goods based upon this specimen."
Contrary to the Examining Attorney's position, we find
persuasive applicant's argument, as more extensively set forth in
its reply brief, that as shown in the specimen of record the term
"1394" independently functions as a mark for applicant's product
(bold in original)"
[W]hen evaluating the nature of
Appellant's use of the 1394 mark on the
standard publication, it is important to keep
in mind that this is not a conventional
consumer brand used on a household product;
rather it is a technical publication used by
a specialized category of professionals.
Thus, the Board should not judge Appellant's
use of the 1394 mark as if the mark were
COCA-COLA on a soda bottle or CLAIROL on a
hair care product. It won't appear in fancy
type or in an interesting graphic display to
entice consumers. ....
[T]he designation 1394 will be viewed by
the professional audience that uses this
standard as the trademark identifying the
standard. Indeed, contrary to the Examining
Attorney's argument ...[,] the Nexis stories
made of record by the Examining Attorney ...
demonstrate that the relevant audience in
fact identifies the high performance serial
bus standard by the trademark 1394, emanating
from Appellant IEEE.
....
Here, the designation "IEEE" is
Appellant's house mark, and it is entirely
appropriate to use it in connection with the
1394 mark .... It is also entirely
appropriate for Appellant to use the
designation "Std" next to the mark 1394 since
that is the generic term which the mark
identifies .... ....
Thus, Appellant's specimen of record
properly shows a house mark (IEEE), a generic
descriptor (Std), the mark applied for (1394)
Ser. No. 75/437,901
17
and the year (1995). While the entire
designation "IEEE Std 1394-1995" may not look
like the typical or conventional brand
identification on a consumer product, given
the nature of the product at issue, a
technical standard, the mark's use on the
specimen is proper trademark use.
In essence, this case is analogous to In re Raychem
Corp., 12 USPQ2d 1399 (TTAB 1989), in which registration of the
term "TINEL-LOCK" for "metal rings for attaching a cable shield
to an adapter" was sought based upon specimens showing the
following manner of use of such term in context:
DESC. DATE.
TR06AI-TINEL-LOCK-RING 07/22/87
PCN 546679 MOD( ) QTY.1
LOT# DEPT.6246
Although the Examining Attorney in such case required new
specimens because the mark sought to be registered did not agree
with the asserted mark "TR06AI-TINEL-LOCK-RING" used on the
specimens, the Board reversed such requirement, reasoning that:
The generic name of the product is
plainly "RING." Both applicant and the
Examining Attorney use this word as the name
for applicant's goods. Ordinarily, even if
it is used with a trademark, the generic name
of a product need not be included as part of
the words applicant seeks to register unless
it forms part of a unitary mark. The issue,
therefore, is whether the combination of the
trademark (source-identifying) matter and the
generic term form a unitary expression with a
single commercial impression.
As to whether "TR06AI" must be included
in the drawing of the mark [sought to be
registered], the record establishes that this
alpha-numeric designation is in fact a part
or stock number. The Examining Attorney
concedes ... that the "TR06AI" designation
shown on the specimens is a part number.
....
Ser. No. 75/437,901
18
The issue [thus becomes] whether ... the
matter sought to be registered creates a
commercial impression separate and apart from
the model number and generic term in
association with which it is used.
A part or stock number does not usually
function as a source identifier. Even when a
part number is joined by a hyphen to other
matter which does serve a trademark function,
the trademark is registerable [sic] without
showing the part number as well in the
drawing. In re Sansui Electric Co., Ltd.,
194 USPQ 202 (TTAB 1977).
In the case at hand the alpha-numeric
designation appearing on the specimen in
front of "TINEL-LOCK" is not essential to the
commercial impression of "TINEL-LOCK" as a
trademark for applicant's metal rings. In a
similar sense, the generic term "RING,"
although connected to the model number and
the source-identifying term, "TINEL-LOCK," by
a hyphen, nonetheless plays no integral role
in forming the portion of applicant's mark
which distinguishes applicant's goods from
those of others. Applicant therefore need
not include either the part number or the
generic term in the drawing, because neither
is essential to the commercial impression
created by the mark as shown in the
specimens. Prospective purchasers of these
highly technical goods would readily
recognize both the part number and the name
of the goods as such, and would therefore
look only to the trademark "TINEL-LOCK" for
source identification. The fact that hyphens
connect both the part number and the generic
term to the mark does not, under the
circumstances presented by this case, create
a unitary expression such that "TINEL-LOCK"
has no significance by itself as a trademark.
Such independent significance is in fact
supported by applicant's use of the mark
without the part number or generic
designation in its advertising materials.
Accordingly, the requirement for different
specimens showing "TINEL-LOCK" used alone is
reversed.
Id. at 1400.
Ser. No. 75/437,901
19
Although, in this appeal, the Examining Attorney is
correct that there is no evidence that applicant advertises its
product under the term "1394" alone, applicant is correct in
observing that the "NEXIS" excerpts of record plainly reveal that
its "IEEE 1394" standard is commonly referred to in the relevant
trades and industries for its product as simply "1394." In
consequence thereof, and given the fact that the customers and
users of applicant's standard for a high performance serial bus
are highly trained and sophisticated consumers who are accustomed
to dealing with publications like that of applicant, it is clear
that they would readily recognize "Std" as an abbreviation for
the generic term "standard," the substance of which forms the
subject matter of applicant's publication. Such purchasers and
users, moreover, would be expected to be familiar with applicant,
as the world's largest technical professional society and
publisher of nearly 30% of the world's literature in their
respective electrical, electronics and computer engineering and
science fields, and would identify its publications by its house
mark "IEEE" and would recognize its convention of designating its
particular standards by the year in which such issued or were
updated.
In view thereof, we find that as used on the specimen
of record, the term "1394" creates a separate and distinct
source-identifying commercial impression for applicant's
publication. Neither the abbreviation "Std" for the generic name
"standard," nor applicant's house mark "IEEE" or the year "1995"
in which it issued its standard for a high performance serial
Ser. No. 75/437,901
20
bus, are essential to the commercial impression readily conveyed
by the term "1394." A verified substitute specimen showing use
of "1394" by itself is accordingly not necessary.
Decision: The refusal on the ground that, under
Section 2(e)(1), the term "1394" is merely descriptive of
applicant's product is affirmed, but the refusal on the ground
that, under Sections 1051, 1052 and 1127, such term would not be
perceived and hence does not function as a mark for its product,
and the refusal on the ground that, under Section 1(a), applicant
must submit a substitute specimen which shows use of "1394" as a
mark, are reversed.