Nissha Printing Co., Ltd.

Trademark Trial and Appeal BoardMay 8, 2009

No. 79030594 (T.T.A.B. May. 8, 2009)

Mailed: May 8, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Nissha Printing Co., Ltd. ________ Serial No. 79030594 _______ David E. Sipiora of Townsend and Townsend and Crew LLP for Nissha Printing Co., Ltd. David Yontef, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Hairston, Drost and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Nissha Printing Co., Ltd. (“applicant”) filed an application on the Principal Register for the mark TOUCH WINDOW, in standard character form, for “data input/output devices including but not limited to touch panels, touch screens, liquid crystal display panels, electronic pens and their parts and electronic machines incorporating the foregoing; portable telephones, personal digital assistants, smartphones, laptop computers, computers, digital cameras; printed circuits; integrated circuits,” in Class 9. The application is based on a request for THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 79030594 2 extension of protection filed under Section 66(a) of the Trademark Act of 1946, 15 U.S.C. §1144f(a).1 The Trademark Examining Attorney refused to register applicant’s mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground that applicant’s mark is merely descriptive. According to the Examining Attorney, the mark TOUCH WINDOW “is merely descriptive of a feature of applicant’s goods, namely goods that feature screens or windows that operate by touch.”2 In addition, the Examining Attorney finally refused to register applicant’s mark because applicant refused to comply with the requirement to amend the description of goods. Description of Goods As indicated above, applicant filed its application to register the mark TOUCH WINDOW for “data input/output devices including but not limited to touch panels, touch screens, liquid crystal display panels, electronic pens and their parts and electronic machines incorporating the foregoing; portable telephones, personal digital 1 Applicant also sought to register the mark for goods identified in Class 17. However, during the prosecution of the application, applicant requested that the Office divide the Class 17 goods into a separate application. 2 January 30, 2007 Office Action. Serial No. 79030594 3 assistants, smartphones, laptop computers, computers, digital cameras; printed circuits; integrated circuits.” In the first Office Action, the Examining Attorney issued a requirement for a clarification of the description of goods because the term “including but not limited to” is indefinite. Also, the Examining Attorney advised applicant to avoid the use of indefinite words and phrases, including the word “devices.” In response to the first Office Action, applicant declined to amend the description of goods, explaining that it “will provide a revised description of goods once Applicant resolves the other issues regarding registration of Applicant’s mark.” In the final Office Action, the Examining Attorney noted that applicant refused to amend the description of goods and continued the requirement to amend the description of goods. In its appeal brief, applicant amended the description of goods to read as follows: Data input/output devices, namely, including but not limited to touch panels, touch screens, liquid crystal display panels, electronic pens and their parts and electronic machines incorporating the foregoing, namely, phones, personal digital assistants, computers, cameras and video devices; portable telephones, personal digital Serial No. 79030594 4 assistants, smartphones, laptop computers, computers, and digital cameras; printed circuits; integrated circuits.3 In his brief, the Examining Attorney noted the amendment to the description of goods, and held that the amended description of goods was acceptable, except for the term “video devices.” As indicated above, the Examining Attorney had previously advised applicant not to use the term “devices” in its description of goods because that term is considered to be indefinite. Finally, in its reply brief, applicant amended the description of goods to delete “video devices.” Accordingly, applicant’s description of goods reads as follows: Data input/output devices, namely, touch panels, touch screens, liquid crystal display panels, electronic pens and their parts and electronic machines incorporating the foregoing, namely, phones, personal digital assistants, computers, and cameras; portable telephones, personal digital assistants, smartphones, laptop computers, computers, and digital cameras. Occasionally, as in this case, an applicant will include an amendment as part of its brief. If the Board 3 The additions are set forth in bold type and the deletions have been stricken through. Serial No. 79030594 5 notes that an amendment has been filed, “the Board will treat the proposed amendment as a request for remand, and consider whether good cause has been shown in determining the request. If the Board does not note the request, but the examining attorney, upon reviewing applicant’s appeal brief, considers the amendment and allows it, the amendment will be entered.”4 In view of the Examining Attorney’s statement in his brief that the amended description of goods was acceptable except for the inclusion of the term “video devices,” and applicant’s subsequent deletion of “video devices,” the proposed amended description of goods set forth in applicant’s reply brief is accepted and the refusal to register the mark based on the requirement to amend the description of goods is deemed moot. Descriptiveness A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, 4 TBMP §1205.01 (5th ed. rev. 2004). The Board’s practice is to send a copy of applicant’s reply brief to the Examining Attorney. Assuming the Examining Attorney received the reply brief, and despite the fact that TBMP §1203.02(c) advises the Examining Attorney there is no provision in the rules for filing a response to the applicant’s reply brief, nonetheless, after reviewing the reply brief, the better practice would have been for the Examining Attorney to notify the Board whether the amended description of goods was acceptable. Serial No. 79030594 6 function, feature or purpose of the products and services it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods and services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess what the products are. Rather, the question is whether someone who knows the products will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ Serial No. 79030594 7 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). To support the descriptiveness refusal, the Examining Attorney submitted the following evidence: 1. The definition of the word “touch” meaning “put body in contact with something” or “press something lightly”;5 2. The definition of the word “window” meaning “a rectangular frame on a computer screen in which images output by application programs can be displayed, moved around, or resized”;6 3. Seven registrations for computer equipment in which the mark incorporates the word “touch,” and the exclusive right to use the word “touch” is disclaimed; 4. Five registrations for different software or hardware applications in which the mark incorporates the word “window,” and the exclusive right to use the word “window” is disclaimed; 5. An excerpt from an online forum regarding technology resources for children and adults with special needs (closingthegap.com). The subject was touch window 5 Encarta.msn.com. 6 Encarta.msn.com. Serial No. 79030594 8 programs for Macs. The following statements were part of a chain of statements: “I’m looking for touch window programs that will work with Macs.” “Check out SoftTouch, all of their software is available for Touch Window access.” 6. An excerpt from the Kaplan Early Learning Company website (kaplanco.com) regarding a “Touch Window for Computer Screen.” Touch Window for Computer Screen Children and adults interact directly with the computer through this efficient and friendly computer tool, which is based on the natural inclination to point to and touch the computer screen. 7. An excerpt from the ERIC Education Resource Information Center website (eric.ed.gov) comparing the efficiency of Touch Window and Power Pad programs. According to the information reported in the excerpt, handicapped and nonhandicapped children were divided into groups that accessed screens with “touch window” applications or they accessed a power pad application. Results indicated that handicapped children produced fewer responses than nonhandicapped children when they used the touch window, and more responses when they used the power pad. All but three children produced more responses when using the power pad than when Serial No. 79030594 9 using the touch window. Compared to nonhandicapped children, handicapped children exhibited a higher percentage of accurate responses when using the touch window, and lower percentage when using the power pad. All children exhibited a higher percentage of accurate responses when using the touch window than when using the power pad. (Emphasis added). 8. An advertisement for “touch window” touch screens by Xenon Educational Systems and Victory Multimedia sold through Amazon.com; 9. A series of press releases from the Immerse Research Group (immerse.ucalgary.ca). One release reported on Dan Jacobson, a researcher at the University of California at Santa Barbara, who was developing new auditory maps that rely on a glass “touch window” with a calibrated electric current that can be activated by the touch of a finger or stylus. By touching the glass, which lies flat like a mouse pad, users can trace across streets, buildings, lakes and other landscape features, activating sounds and spoken words. 10. Articles from newspapers retrieved from the LexisNexis database referring to “touch window” computer hardware. Pensacola News Journal (November 15, 2003) “Honoring a friend’s memory” Serial No. 79030594 10 The media center includes the Jennifer Pierce Accessible Technology Lab, a state-of-the-art computer lab with special equipment that includes touch windows, voice-recognition software and alternative keyboards for students with varying degrees of physical disabilities. Daily Press (December 7, 2001) The article “Caring for chronically ill children” included graphics for “Touch Window, which is an overlay screen for a computer. It takes the place of a mouse, enabling the user to select items on the screen by touching them.” Topeka Capital-Journal (April 22, 2001) In an untitled article, there is a reference to Cleo McDonald whose peers “made note of the touch window stand he made for the Powerbook computer and his work in maintaining other equipment.” Ventura County Star (September 22, 2000) In an article regarding the Children and Families First Commission of Ventura County, the reporter noted that the Simi Valley Hospital’s Child Development Services Department “has already received funding for three programs, including Computers for Kids, which will allow families to borrow child-friendly touch-window computers Serial No. 79030594 11 and take them home to enhance their child’s language, attention span and more.” Chicago Tribune (November 8, 1999) “Aids Autistic Toddlers” Located on the floor next to Josh, she was able to encourage him to move objects on the computer screen by running his finger along the “touch window,” which, like a keyboard or mouse, is actually an input device. But unlike a mouse, the touch window - - placed in front of the screen - - let’s his fingers interact directly with the objects he sees. (Emphasis added). Chattanooga Free Press (December 3, 1997) “Team evaluation aided by Free Press Christmas Fund” Thanks to the Family Support Program at the Team Evaluation Center of Chattanooga, David has received a new touch-window computer to assist with his communication and education. Based on the preceding evidence, we find that the term TOUCH WINDOW when used in connection with data input/output devices such as touch panels, touch screens, and liquid crystal display panels immediately informs the purchaser, without any need for a multistep reasoning process, that the product at issue is a computer device operated by touch. Applicant argues to the contrary that TOUCH WINDOW is only suggestive because data input and output screens and Serial No. 79030594 12 panels that require the user to press lightly on the screen to input data are generally called a “touch screen.” “Thus, the proper term describing the Applicant’s goods is ‘touch screen.’”7 However, it is well settled that the fact that there are other equally or more descriptive terms for applicant's products does not remove or ameliorate the descriptiveness of applicant’s mark. Roselux Chemical Co., Inc. v. Parsons Ammonia Company, Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962); In re The Officers’ Organization For Economic Benefits, Limited, 221 USPQ 184, 186 (TTAB 1983); Hartford Fire Insurance Co. v. The Structured Settlements Co., 215 USPQ 1145, 1150 (TTAB 1982). Applicant also argues that “window” has many different meanings other than a computer application. However, as indicated above, the issue of descriptiveness is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. Finally, applicant argues that its mark TOUCH WINDOW is not descriptive because its products are not technically windows (i.e., a box or opening appearing on a computer screen). However, applicant’s contention is contrary to 7 Applicant’s July 30, 2007 Response; Applicant’s Brief, p. 4. Serial No. 79030594 13 the evidence submitted by the Examining Attorney which establishes that electronic equipment and computers which incorporate touch screens may be referred to as a “touch window” application. For example, 1. Chicago Tribune (November 8, 1999) Located on the floor next to Josh, she was able to encourage him to move objects on the computer screen by running his finger along the “touch window,” which, like a keyboard or mouse, is actually an input device. (Emphasis added). 2. The Immerse Research Group (immerse.ucalgary.ca) press releases that described the features of new auditory maps that rely on a glass “touch window” with a calibrated electric current that can be activated by the touch of a finger or stylus. By touching the glass, which lies flat like a mouse pad, users can trace across streets, buildings, lakes and other landscape features, activating sounds and spoken words. 3. The Kaplan Early Learning Company website (kaplanco.com) regarding a “Touch Window for Computer Screen.” Touch Window for Computer Screen Children and adults interact directly with the computer through this efficient and friendly computer tool, which is based on the natural inclination to point to and touch the computer screen. Serial No. 79030594 14 In view of the foregoing, we find that applicant’s mark TOUCH WINDOW if used in connection with “data input/output devices, namely, touch panels, touch screens, liquid crystal display panels, electronic pens and their parts and electronic machines incorporating the foregoing, namely, phones, personal digital assistants, computers, and cameras; portable telephones, personal digital assistants, smartphones, laptop computers, computers, and digital cameras” is merely descriptive. Decision: The refusal to register is affirmed.