Metrologic Instruments, Inc.

Trademark Trial and Appeal Board

Jun 30, 1999

No. 74612384 (T.T.A.B. Jun. 30, 1999)

Paper No. 16
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Metrologic Instruments, Inc.
________
Serial No. 74/612,384
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Thomas J. Perkowski, Joan M. McGillycuddy, Bradley N. Ruben and
Claudia A Smith of Hopgood, Calimafde, Kalil & Judlowe, L.L.P.
for Metrologic Instruments, Inc.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Hanak, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Metrologic Instruments, Inc. has filed an application
to register the term "SCANKEY" for "bar code scanners and
readers".1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, the term
"SCANKEY" is merely descriptive of them.

1 Ser. No. 74/612,384, filed on December 19, 1994, which alleges dates
of first use of November 22, 1994.
Ser. No. 74/612,384
2
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not held.3 We reverse the refusal to
register.
As explained by applicant in response to the Examining
Attorney’s initial Office Action, its "SCANKEY product is a
handheld device which uses lasers to read bar code symbols for a
variety of applications such as inventory control and retail
store check out stations." In particular, according to
applicant’s initial brief:
This product is used primarily: in shipping
and receiving to track a package or packages;
for item tracking/inventory; to monitor work
in progress for an item; for package sorting;
and for order picking. The product is
designed to allow ... person[s] to have hands
free scanning capabilities so that they can
track their information in a quicker, more
efficient manner. Although the scanner does
has [sic] a numerical keypad, the scanner and
keyboard do not work together; rather, they
work in the alternative with respect to
imputting [sic] bar code information. Under
normal operation, the scanner is used to scan
in the bar code information. However, when
the scanner can not read the bar code, then
the operator would use the numerical keypad.
The keypad can also be used to input
quantity, price or other programmable fields.

2 Applicant, with its initial brief, has filed a piece of advertising
literature for its goods. The Examining Attorney, in her brief, has
objected to consideration thereof, correctly pointing out that the
submission of such literature at this stage is untimely under
Trademark Rule 2.142(d). Applicant, in its reply brief, has confirmed
that the literature it has furnished "is not new evidence" in the
sense that it was not previously available. Accordingly, the
Examining Attorney’s objection is sustained and applicant’s literature
has not been given further consideration. We hasten to add, however,
that even if such advertising had been properly made of record, it
would have made no difference in the disposition of this appeal.
3 Although an oral hearing was requested by applicant and scheduled by
the Board, applicant subsequently submitted a withdrawal of the oral
hearing.
Ser. No. 74/612,384
3
However, use of the numerical keypad for
reading [in] the bar code is not the
preferred mode of operation since its use
slows the operator’s performance.
In light thereof, applicant argues that, as used in
connection with its bar code scanners and readers, "[t]he mark
SCANKEY ... does not describe any aspect of the goods." There is
nothing about the goods, applicant insists, "which is used to
scan keys, nor can the keys scan anything." Moreover, while
conceding that the several excerpts made of record by the
Examining Attorney from her search of the "NEXIS" data base show
that "there are products in which scan keys are a feature of the
product[s] and[,] in those circumstances, it could be argued that
... the use of the words scan keys could be descriptive,"
applicant maintains that its goods do not contain any kind of
scan keys which enable the user to scan or search for particular
information or to retrieve such. Applicant contends, therefore,
that the term "SCANKEY," while perhaps suggestive of its goods,
is not merely descriptive of any characteristic, feature,
function, use or purpose of its products.
The Examining Attorney, on the other hand, asserts that
the term "SCANKEY immediately conveys to prospective consumers a
feature of the applicant’s bar code symbol scanners and readers,"
namely, "that they contain a key or keybutton which perform[s] or
activate[s] a scanning function." In support of her position,
the Examining Attorney relies, among other things, upon the
following definitions, which she made of record from the
Microsoft Press Computer Dictionary (1991) and which applicant
furnished from Webster’s New Collegiate Dictionary (1981):
Ser. No. 74/612,384
4
(a) the word "scan," which the former at
306 in relevant part defines, "[i]n facsimile
and other optical technologies" as meaning
"to move a light-sensitive device across an
image bearing surface such as a page of text,
converting the light and dark areas on the
surface into binary digits that can be
interpreted by a computer" and the latter at
1022 in pertinent part lists both as a verb
meaning "3 a : to examine successive small
portions of (as an object) with a sensing
device (as a photometer or a beam of
radiation)" and as a noun signifying "1 : the
act or process of scanning"; and
(b) the word "key," which the former at
201 in relevant portion defines as meaning,
"[o]n a keyboard, the combination of a
plastic key cap (which typically has a
character printed on its face), a tension
mechanism that suspends the key cap but
allows it to be pressed down, and an
electronic mechanism that records the key
press and key release" and the latter at 627
sets forth, among other things, as connoting
a "KEYBUTTON," which in turn is defined at
627 as signifying "any of the small buttons
or knobs depressed by the fingers in
operating a keyboard machine".
In addition, the Examining Attorney maintains that, as
shown by excerpts from several articles retrieved from her search
of the "NEXIS" database, "the term ’scan key’ is used in the
industry to identify a particular type of key which could be
found on bar code symbol scanners and readers." The most
probative of such excerpts, we note, is from a new product review
in the September 7, 1996 issue of the L.A. Times which states
that "[t]he [Texas Instruments personal] organizers have one-
touch scan keys and reminder alarms" (emphasis added). The
argument by applicant that, in fact, none of the excerpts (which
also mention dictation systems and computer anti-virus programs)
refers specifically to goods such as bar code scanners and
Ser. No. 74/612,384
5
readers is "unconvincing," according to the Examining Attorney,
because:
Given that scan keys are incorporated in a
wide array of products and in light of the
[dictionary] evidence presented by the
applicant at the time the examining attorney
issued the final refusal, it was reasonable
for the examining attorney to assume that
scan keys could be incorporated on bar code
symbol scanners and readers. For this
reason, the record evidence compels a finding
that applicant’s mark is merely descriptive.
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 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). 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 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. See In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product [or service] is
Ser. No. 74/612,384
6
from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
In the present case, we are constrained to agree with
applicant that, as emphasized in its reply brief, the Examining
Attorney’s position rests on "assumptions which have no basis in
fact regarding the applicant’s products." Not only has applicant
"repeatedly stated for the record that its product does not
include scan keys, i.e. keys that can scan," but the evidence is
simply insufficient to show that bar code scanners and readers
have any characteristic, feature or function which would operate
as a scan key. As applicant further stresses in its reply, a
Ser. No. 74/612,384
7
mere descriptiveness refusal "can not be based on some possible
future part or function that could be incorporated in applicant’s
product." Thus, while bar code scanners and readers could
perhaps, for example, feature a programmable key or keys designed
to scan or read only certain bar-coded information, there is
nothing on this record to suggest that such is or would typically
be the case.
The Examining Attorney’s position, in short, amounts to
nothing more than speculation concerning possible attributes of
applicant’s goods which are suggested by the term "SCANKEY". On
this record, a multi-stage reasoning process or imagination would
be necessary in order for customers or prospective purchasers of
bar code scanners and readers to conclude, as urged by the
Examining Attorney, that such goods contain a key or keybutton
which performs or activates some sort of scanning function. The
term "SCANKEY," when used in connection with bar code scanners
and readers, has not been shown to immediately or directly
describe any significant aspect of either applicant’s particular
goods or such type of goods in general. However, to the extent
that there may be any doubt as to whether applicant’s mark is
merely descriptive or suggestive of its goods, we resolve such
doubt, in accordance with the Board’s practice, in favor of the
publication of applicant’s mark for opposition. See, e.g., In re
Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981) and In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Ser. No. 74/612,384
8
Decision: The refusal under Section 2(e)(1) is
reversed.
E. W. Hanak
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board