Lightwave Electronics Corp.

Trademark Trial and Appeal Board

Sep 13, 1999

No. 74712452 (T.T.A.B. Sep. 13, 1999)

Paper No. 12
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/13/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Lightwave Electronics Corporation
___________
Serial No. 74/712,452
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David H. Jaffer of Rosenblum, Parish & Isaacs for
applicant.
Martha Santomartino, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
____________
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Lightwave Electronics Corporation has filed a
trademark application to register the mark LIGHTWAVE
ELECTRONICS for “lasers.”1 In response to an initial
refusal to register on the ground that the mark is merely
descriptive in connection with the identified goods,
applicant submitted a claim of acquired distinctiveness

1 Serial No. 74/712,452, in International Class 9, filed August 8, 1995,
based on an allegation of first use and use in commerce as of March 16,
1987.
Serial No. 74/712,452
2
under Section 2(f) of the Act. The application also
includes a claim of ownership of Registration No.
1,593,629, on the Supplemental Register, for the identical
mark and goods.2
The Trademark Examining Attorney has finally refused
registration, under Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of applicant’s goods and that it has
not acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. 1052(f).
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
While applicant does not expressly concede that its
mark is merely descriptive, by virtue of its ownership of a
registration on the Supplemental Register for the identical
mark and goods, applicant impliedly admits that the
registered term was merely descriptive, at least at the
time of registration. In re Hunke & Jochheim, 185 USPQ

2 Registration No. 1,593,629 issued as a registration on the
Supplemental Register on April 24, 1990. [Section 8 affidavit accepted
April 4, 1996.]
Serial No. 74/712,452
3
188, 189 (TTAB 1975); and Perma Ceram Enterprises Inc. v.
Preco Industries Ltd., 23 USPQ2d 1134, 1137 (TTAB 1992).3
The Examining Attorney has submitted excerpts of
articles from the LEXIS/NEXIS database regarding lasers,
lightwaves, electronics and lightwave electronics.4 We also
take judicial notice of the dictionary definitions of
“lightwave” and “laser”5 submitted by the Examining Attorney
with her brief.
We conclude, based on this evidence, that a “laser”
generates a type of “lightwave”; and that “lightwave
electronics” is used in various written materials available
to the public to identify a field of electronics. Thus, we

3 However, registration on the Supplemental Register does not
constitute an admission that the registered mark has not acquired
distinctiveness. Perma Ceram Enterprises, supra. See also, General
Foods Corp. v. MGD Partners, 224 USPQ 479 (TTAB 1984).
4 For example, “IEEE Journal of Lightwave Electronics” [quoted in
Microwave Journal, August, 1996]; “A few years ago the group started
stocking fiber-optic cable and lightwave electronics” [Network World,
June 13, 1988]; regarding the acquisition of a transmission company,
“[I]t intends, says Dey, to enhance the Stromberg capability through
lightwave electronics” [Telephone Engineer & Management, April 15,
1987]; “[m]ore conventional semiconductor lasers, widely used in
lightwave communications and compact disc players…” [Optical Materials
& Engineering News, September 1, 1995]; “Lasers are used to generate
lightwaves that carry high-speed data … in fiber-based networks”
[Industry Week, June 5, 1995]; “[t]he former is a high-precision laser
system that floods the network with lightwaves, each at a precisely
defined wavelength” [Electronic Design, October 145, 1994].
5 Communications Standard Dictionary (3rd ed.), 1996, defines “lightwave”
as “an electromagnetic wave (a) that has a wavelength within or near
the visible spectrum…” and “laser” as (syn.) “light amplification by
stimulated emission of radiation.” The dictionary includes a note with
regard to lasers that the “release of radiated energy” is “highly
controlled … so as to generate an intense highly directional narrow
beam of … electromagnetic energy.”
Serial No. 74/712,452
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find that, when applied to applicant’s goods, the term
LIGHTWAVE ELECTRONICS immediately describes, without
conjecture or speculation, that the science of “lasers”
falls within the rubric of “lightwave electronics.”
Nothing requires the exercise of imagination, cogitation,
mental processing or gathering of further information in
order for purchasers of and prospective customers for
applicant’s goods to readily perceive the merely
descriptive significance of the term LIGHTWAVE ELECTRONICS
as it pertains to lasers. See, In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979); In re Engineering Systems Corp.,
2 USPQ2d 1075 (TTAB 1986); In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985); and In re Recovery,
196 USPQ 830 (TTAB 1977). Further, despite applicant’s
arguments to the contrary, the evidence supports the
conclusion the LIGHTWAVE ELECTRONICS is highly descriptive
in connection with lasers.
Thus, we turn to consider whether applicant has
established, under Section 2(f), that LIGHTWAVE ELECTRONICS
has acquired distinctiveness in connection with lasers.
Initially, applicant’s claim of acquired
distinctiveness relied solely upon a declaration by
applicant’s president attesting to applicant’s “continuous

Serial No. 74/712,452
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and exclusive use in interstate commerce [of the mark in
connection with the identified goods] for more than five
consecutive years.” Subsequently, applicant submitted
annual figures for its advertising campaigns for its
products, along with samples of its print advertisements,
and annual figures for its product revenues. Applicant
noted that it advertises its products in laser industry
magazines such as Laser Focus World. Applicant submitted a
1996 article from The Industrial Physicist, entitled “the
Diode-Pumped Laser Revolution,” that refers to applicant as
among the prominent manufacturers in this laser industry.
Applicant also submitted four letters from commercial and
university purchasers of applicant’s products. Each letter
includes, essentially, the following statement:
I identify the term LIGHTWAVE ELECTRONICS with
the products of Lightwave Electronics
Corporation. I perceive the term as a trademark
which identifies Lightwave Electronics
Corporation as a source of diode-pumped laser
products.
We note that applicant submitted additional evidence with
its reply brief. We have not considered this evidence, as
it is untimely. The record in an application must be
complete prior to appeal. See Trademark Rule 2.142(d).
The issue is whether the descriptive term LIGHTWAVE
ELECTRONICS has acquired secondary meaning in connection
Serial No. 74/712,452
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with applicant’s laser products, that is, whether
applicant’s use and promotion of the term over a period of
time has been of such a nature and extent that the primary
significance of the term in the minds of the relevant
purchaser is no longer descriptive, but rather is an
indication of the source of the goods of the applicant. In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). It
is applicant’s burden to establish acquired distinctiveness
and we find that, on the record before us, applicant has
not established that LIGHTWAVE ELECTRONICS has acquired
distinctiveness in connection with the identified goods.
Merely using a term for a number of years does not
necessarily lead to the conclusion that distinctiveness has
been achieved. In re Packaging Specialists, Inc., 221 USPQ
917 (TTAB 1984). As our reviewing court noted in Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572,
1581, 6 USPQ2d 1001 (Fed. Cir. 1988) “the greater the
degree of descriptiveness the term has, the heavier the
burden to prove it has attained secondary meaning.” See
also, Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and Restatement
(Third) of Unfair Competition (1993), Section 13, comment
Serial No. 74/712,452
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e.6 In this case we have a mark that is highly descriptive
in connection with the identified goods. Thus, we conclude
that more evidence than that which has been offered here is
necessary to establish the acquired distinctiveness of this
designation.
Clearly, applicant’s products are not general consumer
goods, but applicant has submitted no information regarding
the nature of the channels of trade or purchasers of its
products, the expense of its products, or the average
number of products sold in a year, either by applicant or,
generally, in this industry. Thus, it is impossible to
determine whether applicant’s apparently modest advertising
expenditures translate into substantial exposure of
applicant’s products and trademark to relevant purchasers
or whether the revenues disclosed represent substantial
sales to a significant percentage of the relevant market.
Similarly, a mention of applicant in a single publication
and form letters from four of applicant’s own customers do
not appear significant in the absence of evidence regarding

6 “The sufficiency of the evidence offered to prove secondary meaning
should be evaluated in light of the nature of the designation. Highly
descriptive terms, for example, are less likely to be perceived as
trademarks and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of secondary meaning
thus will ordinarily be required to establish their distinctiveness.
Indeed, some designations may be incapable of acquiring
distinctiveness.”
Serial No. 74/712,452
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the relative circulation of the publication in the industry
or indicating that any consumers, or these four consumers
in particular, should be considered a determinative number
given the channels of trade and class or nature of
purchasers for applicant’s products under the mark. The
record contains no information linking applicant’s evidence
“with use in contexts which would condition customers to
react to or recognize the designation … as an indication of
source….” In re Leatherman Tool Group, Inc., 32 USPQ2d
1443, 1450 (TTAB 1994).
Decision: The refusals under Sections 2(e)(1) and
2(f) of the Act are affirmed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board