LightSurf Technologies, Inc.

Trademark Trial and Appeal Board

Apr 10, 2003

No. 75807308 (T.T.A.B. Apr. 10, 2003)

Mailed: 4/10/03
Paper No.
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re LightSurf Technologies, Inc.
________
Serial Nos. 75/807,307; 75/807,308;
75/807,309; and 75/807,310
_______
Martin R. Greenstein of TechMark for LightSurf
Technologies, Inc.
Irene D. Williams, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Seeherman, Hohein and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
On September 24, 1999 LightSurf Technologies, Inc.
applied to register the marks PHONEPICTURE,1 PHONEPICS,2
PHONEPHOTO3 and PHONEPIX4, based on an asserted bona fide
1 Application Serial No. 75/807,307.
2 Application Serial No. 75/807,308.
3 Application Serial NO. 75/807,309
4 Application Serial No. 75/807,310.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
2
intention to use the mark. The goods and services in each
application are identified, as amended, as:
Computers, computer network servers,
computer software, digital cameras;
video cameras; digital and electronic
cameras for uploading to and
downloading from computers, computer
printers and scanners; wired or
wireless communications terminals,
handheld portable terminals and
organizers, and Internet and network
web browsers, all for connecting to and
exchanging information over the
Internet and local area, wide area and
enterprise networks; computer
e-commerce software to allow users to
perform electronic business
transactions via the Internet or other
computer networks; computer software
used for the creation, enhancement,
modification, transmission, reception,
exchange, storage, and synchronization
of information, messages, audio and
video data and files, multimedia files,
ephotos, photographic and graphic files
and images, and wired or wireless e-
mail with or without attached files,
ephotos and images, and instruction
manuals sold as a unit therewith (Class
9); and
Web site hosting services for others;
creating and maintaining a web site and
Internet access site which provides
users with wired and wireless access to
and the ability to create, enhance,
modify, transmit, receive, exchange,
store and synchronize information,
audio and video data and files,
multimedia files, ephotos, photographic
and graphic files and images, and
e-mail with or without attached files,
ephotos and images; computer services,
namely providing a web site where users
can send and receive greeting cards,
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
3
memos, faxes, messages and
announcements containing ephotos and/or
digital images and other attached files
or data, photographic and digital
photography services, electronic photo
and imaging services (Class 42).
Registration has been finally refused with respect to
all four applications pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s marks are merely descriptive of the identified
goods and services.
The appeals have been fully briefed.5 An oral hearing
was not requested.
5 With her appeal brief the Examining Attorney submitted
dictionary definitions for “wireless telephone,” “radio
telephone” and “wired.” Applicant has objected to the first two
definitions as not being properly in the record. Applicant is
correct that the definitions were not made of record prior to the
filing of the appeal, as required by Trademark Rule 2.142(d).
However, the Board may take judicial notice of dictionary
definitions, see University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). Although the Examining
Attorney did not explicitly request the Board to take judicial
notice of such definitions, that was clearly her import in
referring to and submitting the definitions, and we therefore do
judicially notice them. As for applicant’s comment that the
submission does not properly identify the dictionary from which
they come, the submission adequately identifies the dictionary as
The American Heritage Dictionary of the English Language 3d ed. ©
1992.
The Examining Attorney also submitted with her brief copies of
the LEXIS/NEXIS excerpts that she had previously made of record.
It is not necessary to include as exhibits to briefs complete
copies of all the materials that were previously made of record,
since this makes the file unduly bulky. If certain articles or
materials are believed to be particularly apposite, only they
should be included as exhibits to the brief.
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
4
After the appeals in these applications were filed,
applicant’s attorney indicated that he would be making a
request to consolidate them. Although such a request was
never filed, because the appeals involve common questions
of fact and law, we hereby consolidate the appeals, and
have decided them in a single opinion.
The Examining Attorney asserts that applicant’s mark
is merely descriptive of its identified goods and services
because applicant’s goods include wired or wireless
communications terminals and handheld portable terminals
and organizers, and such items include telephones.
Moreover, according to the Examining Attorney, applicant’s
identified goods include software which creates, transmits,
receives, exchanges, etc., audio and video data and files,
ephotos, photographic files and images, digital cameras,
video cameras, etc. In other words, according to the
Examining Attorney, the identified wired or wireless
communications terminals encompass telephones and the
terminals’ ability to exchange information over the
Internet encompasses the exchange of pictures.
As for the services, the Examining Attorney asserts
that a feature or function of applicant’s Internet access
site is to allow pictures to be received or transmitted by
wired or wireless communication devices, i.e., telephones.
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
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That is, applicant’s services would allow phone access to
such things as ephotos and photographic files and images.
Thus, the Examining Attorney argues that each mark is
a combination of two ordinary descriptive terms which
conveys an immediate idea to potential purchasers that a
significant feature of applicant’s goods and services is
that a picture may be sent or displayed over some kind of
phone connection.
In support of her position the Examining Attorney has
submitted dictionary definitions6 which are applicable to
the elements of the particular marks involved, to wit:
Phone: a telephone
Picture: a visual representation or
image painted, drawn, photographed, or
otherwise rendered on a flat surface
Pic: Slang. A photograph
Photo: A photograph
The Examining Attorney has also made of record
excerpts of articles retrieved from the LEXIS/NEXIS
database. Many of these excerpts are taken from foreign
publications or wire services, so there is no indication
that the articles had any public exposure in the United
States. However, because these articles do not use the
6 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
6
specific terms sought to be registered, it appears that the
Examining Attorney was using them, not to show that the
respective marks are being used descriptively by the
writers of the articles, but to show that telephones and
particularly mobile phones now have the capability to
transmit and receive pictures or video.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Act, if it
immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with
which it is used or is intended to be used. On the other
hand, suggestive marks--for which imagination, thought or
perception is required to reach a conclusion on the nature
of the goods or services--are registrable. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a term is merely descriptive must be decided, not
in the abstract, but in relation to the goods or services
for which registration is sought and the context in which
it is or will be used. See In re Abcor Development
Corporation, 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
As noted, the Examining Attorney has asserted that the
term “wired or wireless communications terminals” in the
identification of goods encompasses telephones, and has
further asserted that the exchange of information over the
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
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Internet that may be accomplished by the wireless
communications terminals includes the exchange of pictures.
However, the specific portion of the identification
relating to wired and wireless communications terminals is
“wired or wireless communications terminals, handheld
portable terminals and organizers, and Internet and network
web browsers, all for connecting to and exchanging
information over the Internet and local area, wide area and
enterprise networks.” We do not read this identification
as encompassing telephones, since it is not clear from this
record that telephones (as opposed to telephone lines) are
normally used for connecting and exchanging information
over the Internet or local area, wide area or enterprise
networks, or that consumers would refer to or consider
wired or wireless communications terminals which have such
capabilities as telephones.
The Examining Attorney also argues that a feature or
funcion of applicant’s Internet access site is to allow
“phone pictures” to be received or transmitted by wired or
wireless communication devices, i.e., telephones. Again,
however, it is not clear from the identification of
services that a web site or Internet access site which
provides users with wired and wireless access and the
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
8
ability to transmit and receive photographic files and
images would be perceived to be a telephone.
The Office has the burden of demonstrating that a term
is merely descriptive of the identified goods and services.
We cannot say, on the basis of the records herein, that the
Office has met its burden in these cases.7 Thus, we must
fall back on the well-established principle that, when
there is doubt on the issue of mere descriptiveness, such
doubt must be resolved in favor of publication. In re The
Stroh Brewery Co., 34 USPQ2d 1796 (TTAB 1994). We hasten
to add, however, that we might well reach a different
conclusion on a more complete record, such as might be
adduced in an opposition proceeding. Moreover, upon second
examination once specimens are submitted with the
7 The Board has stated in previous decisions how helpful it is
to the Board (as well as in the examination of an application)
when Examining Attorneys make use of Trademark Rule 2.61(b),
which provides that “the examiner may require the applicant to
furnish such information and exhibits as may be reasonably
necessary to the proper examination of the application.” Such
information would have been particularly helpful in these
applications, which involve high-tech products and services, and
would have enabled us to better assess the question of whether or
not these marks are merely descriptive. Although we recognize
that the applications are not based on use, applicant could still
have been asked to furnish literature about its proposed products
and services if those products and services are currently being
sold by applicant under another mark, or if the goods and
services are being sold by competitors. Even if no one yet
offers the products or services, applicant could still have
provided information about them.
Ser No. 75/807,307; 75/807, 308;
75/807,309 and 75/805,310
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statements of use, the Examining Attorney is certainly free
to revisit the issue of mere descriptiveness.
Decision: The refusal of registration is reversed
with respect to all four applications.