Packet Engines (WA) Inc.

Trademark Trial and Appeal Board

Sep 27, 1999

No. 74476641 (T.T.A.B. Sep. 27, 1999)

Paper No. 29
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 27,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Packet Engines (WA) Incorporated, by merger and
change of name from Packet Engines Incorporated1
________
Serial No. 74/476,641
_______
David H. Jaffer of Rosenblum, Parish & Isaacs for Packet
Engines Incorporated.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On January 5, 1994, Packet Engines Incorporated filed
an intent-to-use application to register on the Principal
Register the mark PACKET ENGINES for “computer hardware and
computer programs for data communications, storage and
image applications” in International Class 9.

1 The records of the Assignment Branch of this Office indicate
that the involved application is currently owned by Packet
Engines (WA) Incorporated by merger and change of name from
Packet Engines Incorporated (recorded at reel 1805, frame 470).
Ser. No. 74/476641
2
In the first Office action (dated June 9, 1994), the
Examining Attorney refused registration of the mark as
merely descriptive under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1). In response, applicant argued
the mark is suggestive. The Examining Attorney made the
refusal to register under Section 2(e)(1) final on March
15, 1995.
On September 15, 1995, applicant filed a notice of
appeal; and on November 14, 1995 applicant filed a request
for remand to the Examining Attorney, an amendment to
allege use, and an amendment to the Supplemental Register.
The Board remanded the application, and on February
14, 1996, the Examining Attorney accepted applicant’s
amendment to allege use, and refused registration on the
Supplemental Register under Section 23 of the Trademark
Act, 15 U.S.C. §1091, on the basis the applied-for mark is
generic and incapable of serving as a source identifier.
In response applicant argued the mark was registrable on
the Supplemental Register and offered evidence of acquired
distinctiveness under Section 2(f), 15 U.S.C. §1052(f).
The Examining Attorney issued a final Office action based
on his refusal to register under Section 23 on November 4,
1996.
Ser. No. 74/476641
3
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
The issues before the Board are (1) whether the term
PACKET ENGINES is generic for applicant’s goods and thus,
incapable of serving as a source identifier and
unregistrable on the Supplemental Register, and (2) if not,
whether applicant has submitted sufficient evidence of
acquired distinctiveness under Section 2(f) for
registration on the Principal Register.2
I. The Burden of Proof
The Office bears the burden of proving that the
proposed trademark is generic, and genericness must be
demonstrated through “clear evidence.” See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987); and In re Analog Devices
Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, unpubl’d, but
appearing at 10 USPQ2d 1879 (Fed. Cir. 1989). The evidence
of the relevant public’s perception of a term may be
acquired from any competent source, including newspapers,
magazines, dictionaries, catalogs and other publications.

2 For a more thorough procedural history of this application, and
an explanation of why the issue of acquired distinctiveness is
before us, see the Board interlocutory order dated February 13,
1997. For a discussion of “Alternative Positions” taken by an
applicant in an ex parte matter, see TBMP §1215.
Ser. No. 74/476641
4
See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and In re Leatherman Tool Group,
Inc., 32 USPQ2d 1443 (TTAB 1994), citing In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961 (Fed.
Cir. 1985).
The Office also bears the burden of establishing that
a mark is merely descriptive. However, applicant has
amended its application to one on the Supplemental
Register, thus conceding that the applied-for mark is not
inherently distinctive. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988).
Applicant carries the burden of proving its asserted
claim of acquired distinctiveness. “The burden of proving
secondary meaning is on the party asserting it, whether he
is the plaintiff in an infringement action or the applicant
for federal trademark registration.” 1 Gilson, Trademark
Protection and Practice, §2.09, at 2-72 (1987), quoted in
the Yamaha case, supra at 1006.
II. The Evidence
The Examining Attorney submitted the following
dictionary definitions of the term “packet”:
Ser. No. 74/476641
5
(1) “1. Stacker. 2. A short block (1000
to 2000 bits) of data prefixed with
addressing and other control information
that is used to carry information through a
packet-switching network.” Computer
Dictionary and Handbook (3rd ed.);
(2) “A frame or block of data used for
transmission in packet switching and other
communications methods.” The Computer
Glossary: The Complete Illustrated
Dictionary (7th ed.); and
(3) “A series of bits forming all or
part of a data message (depending on its
length) to be sent through a network. Each
packet has a defined format, with some
additional bits forming a ‘head’ preceding
the data and a ‘tail’ following it. These
carry information that the network needs to
know about the packet, including its
destination and source. The packets are
formed by the controller in the sending data
terminal equipment and the data is extracted
and reassembled by the controller at the
receiving end.” The McGraw-Hill Illustrated
Dictionary of Personal Computers (1995).
The Board takes judicial notice of the following additional
dictionary definitions of “packet”:3
(1) “1. Generic term for a bundle of
data, usually in binary form, organized in
a specific way for transmission. The
specific native protocol of the data
network may term the packet as a packet,
block, frame, or cell. A packet consists
of the data to be transmitted and certain
control information. The three principal
elements of a packet include: 1. Header—
control information such as synchronizing
bits, address of the destination or target
device, address of originating device,

3 See TBMP §712.01 and the rules and cases cited therein.
Ser. No. 74/476641
6
length of packet, etc., 2. Text or payload—
the data to be transmitted, and 3. Trailer—
end of packet, error detection and
correction bits. See also Frame.
2. Specific packaging of data in a
packet-switched network, such as X.25. A
true packet-switched network such as X.25
involves packets of a specific and fixed
length....” Newton’s Telecom Dictionary:
The Official Dictionary of
Telecommunications & the Internet (1999);
and
(2) “n. 1. A unit of information
transmitted as a whole from one device to
another on a network. 2. In packet-
switching networks, a transmission unit of
fixed maximum size that consists of binary
digits representing both data and a header
containing an identification number,
source, and destination addresses, and
sometimes error-control data. See also
packet switching.” Microsoft Press Computer
Dictionary (3rd ed. 1997).
The Examining Attorney also submitted the following
dictionary definitions of the word “engine”:
(1) “(1) a specialized processor, such
as a graphics processor. Like any engine,
the faster it runs, the quicker the job
gets done. See graphics engine and printer
engine. (2) Software that performs a
primary and highly repetitive function such
as a database engine, graphics engine or
dictionary engine. (3) Slang for
processor.” The Computer Glossary: The
Complete Illustrated Dictionary (7th ed.);
and
(2) “A computer-processing platform such as
a PC or Macintosh computer.” The McGraw-Hill
Illustrated Dictionary of Personal Computers
(1995).
Ser. No. 74/476641
7
The Board takes judicial notice of the following additional
dictionary definition of “engine”:
“n. A processor or portion of a program that
determines how the program manages and
manipulates data. The term engine is most often
used in relation to a specific program; for
example, a database engine contains the tools for
manipulating a database. Compare back-end
processor, front-end processor.” (Emphasis in
original). Microsoft Press Computer Dictionary
(3rd ed. 1997).
The Examining Attorney also submitted copies of
several registrations for various trademarks, all of which
included the word “engine,” and were for computer programs
or computer software, each including a disclaimer of the
term “engine,” or “search engine” or “directory engine.”
Finally, the Examining Attorney made of record
approximately 80 excerpted stories4 (with publication dates
from April 1988 to February 1997) from the Nexis database
to show generic use of the term “packet engines.” Several
representative examples follow (emphasis added):
(1) Headline: Packets are hot tickets for
some, but sticky wickets for others, ...a Santa
Barbara, Calif.-based startup, Prodigy
Communications, Inc., is also reportedly ready to
unwrap a high-speed packet engine. Still,
International Data Corporation (Framingham,
Mass.) estimates that in 1987 the sales of

4 These included a few repeated stories. Also, a few are from
wire services, and thus, are of limited probative value in
assessing the reaction of the public to the term applicant seeks
to register because evidence from a proprietary news source is
not presumed to have circulated among the general public. See In
re Manco Inc., 24 USPQ2d 1938, footnote 4 (TTAB 1992).
Ser. No. 74/476641
8
packet-switching gear by U.S...., Data
Communications, April 1988;
(2) Headline: ICA to host ISDN showcase
featuring 60 applications; Forty-two firms join
in largest-ever demonstration designed to spur
interest in evolving technology, ...can access
host computers over Southwestern Bell Telephone’s
MicroNet II packet network service via a packet
engine installed on the show floor, King
said...., Network World, April 24, 1989;
(3) Headline: Artel puts voice and date
(sic) on same fiber; time-division multiplexing
ends need to packetize T1 signals; Artel
communications Corp., ...ring interface board,
the primary board in every FiberWay station. The
next board in the station is either a packet
engine board for a data band or a T1/Transport
board for a T1 band. Each FiberWay..., EDN,
January 25, 1990;
(4) Headline: Promised board links LANs to
IDNX, ...NET’S technology sharing agreement with
Cisco Systems, Inc. It consists of two main
components: a high-speed packet engine and LAN
interconnection logic. “The [packet] engine that
we’re talking about has the ability to route
several thousand packets per second,” which makes
it competitive with any currently..., Network
World, June 11, 1990;
(5) NET also demonstrated a high-speed
packet engine that will enable its IDNX T1
switches to support frame-relay, LAN routing
protocols and ISDN D-channel signaling,
Computerworld, February 4, 1991;
(6) Headline: USING LGX FOR FRAME-RELAY
NETWORKING – Travelers tests NET Card, ...One of
the code sets incorporated into the so-called LGX
is adapted from the Cisco router code sets and
lets the packet engine act as an on-board router,
CommunicationsWeek, March 11, 1991;
(7) Headline: Broadband Technology: Where
Internetworking Meets Telecommunications, ...
Ser. No. 74/476641
9
uses cell-relay technology exclusively as the
switching fabric for circuit- and packet-switched
services. With this approach, the cell-relay
packet engine serves as an arbitration mechanism
to switch at high speeds between local and wide-
area ports, Data Communications, March 1991;
(8) Headline: Hot Times in the
InterNetworking Market, ...what all this adds up
to is NSC may now have one of the fastest packet
engines on the market and extremely competitive
price/performance ratios. Its main weakness,
however, is lack of support for frame relay, Data
Communications, April 1991;
(9) Headline: NET explains role of LWX
packet engine; Exec hints device may support
IBM’s Advanced Peer-to-Peer Networking to handle
SNA routing, ...The LWX’s packet engine and
routing capabilities make it complementary to
high-performance routers used to link local-area
networks in a building or campus setting,
Warmenhoven said, while the packet engine will
enable users to make more effective use of
backbone bandwidth. The LWX is a packet-
switching module that fits into..., Network
World, July 8, 1991;
(10) Headline: ILAN router to get key SNA
support, ...It reviews each packet that traverses
the ILAN to compile information about the network
and to help the packet engine route the data most
effectively, Network World, March 9, 1992;
(11) ...founder and CEO, was most recently
involved in developing Network Equipment
Technologies’s (sic) LAN/WAN Exchange (LWX), the
multiprotocol packet engine for NET’s IDNX
multiplexer, Data Communications, April 1992;
(12) Headline: Optimism is guiding force in
prepping ’94 budgets, ...We continue to expand
our private packet network, so packet engines are
a capital item that we’re acquiring. I think we
generally have a pretty good balance of mainframe
and LAN technology,..., Network World, May 17,
1993;
Ser. No. 74/476641
10
(13) Headline: T1 Multiplexers Getting
Packet Options, ... The LWX software is
downloaded into the new high-speed packet engine
of the company’s Integrated Digital Network
exchange multiplexers, CommunicationsWeek, June
8, 1992;
(14) Headline: BT offer Tymet services,
...The firm will also commit to using StrataCom,
Inc.’s IPX switch instead of its own Tymet packet
engine, a move that will eventually enable BT to
offer users a common set of service features
across its net, Network World, December 7, 1992;
(15) Headline: Chipcom, Artel add switch
options, ...module is based on Intel Corp.’s i960
Reduced Instruction Set Computing microprocessor
and can be configured as a packet engine for
Ethernet switching, a bridge, a bridge/router or
any combination of the three, Network World, June
29, 1993;
(16) Headline: AT&T, IBM Target ATM Arena;
Unveil Products and Strategies, ...IBM’S ENTRY.
IBM’s flagship ATM switch is a middle-tier fast-
packet engine called Transport Network Node
(TNN). It supports 16 ports of 250 Mbps each and
can also handle other interfaces..., LAN Times,
September 6, 1993;
(17) Headline: Menu madness; Vendors cook up
a variety of new router entrees and side dishes
that make it difficult to select the router best
suited to users’ tastes, ...some media access
control layer processing. Meanwhile, the bulk of
the real packet processing takes place in the
device’s packet engine. To merely compare one
router to another on the basis of the total
number of processors does not go far enough in
the..., Network World, September 27, 1993;
(18) Headline: Navy is beta testing
Alantec’s modular switching hubs; PowerHub 7000;
Brief Article; Product Announcement, ...mix of
hot-swappable Ethernet and Fiber Distributed Data
Interface (FDDI) network interface modules. The
Ser. No. 74/476641
11
remaining slot holds the packet engine module
that does the switching, bridging, routing and
management. The packet engine and network
interface modules connect via what Alantec
officials called an expandable backplane. As the
chassis is expanded, the backplane can be...,
Government Computer News, August 8, 1994;
(19) Headline: SCITEC ANNOUNCES NEW HIGH END
FASTLANE, ...The PT (Packet Trunk) card which
functions as a fast packet engine in the F10. Up
to four of these can be used in parallel. These
cards also contain an Ethernet AUI port which
can..., M2 Communications, February 24, 1995;
(20) Headline: In brief; Alantec Lowers
PowerHub Price, ...cost of LAN backbone
switching. The PowerHub 7105 includes a five-
slot chassis, one power supply and a packet
engine for a pre-configured starter. Its price
is $9,950, CommunicationsWeek, August 21, 1995;
(21) Headline: Alantec supports routing in
PowerHub 4100 series; PowerHub 4100 LAN switch
series, ...half or full duplex, the store-and-
forward switches feature 2M bytes of flash
memory, a three-CPU RISC packet engine, and
support for up to 4,000 Media Access Control
addresses per system, PC Week, December 4, 1995;
(22) Headline: EXCEL’S PROGRAMMABLE
SWITCHING EXCEL-ENCE, ... DSP service cards for
media processing and common-channel signaling
packet-engine card. ...The PCX uses the same
basic software architecture of the LNX, including
the support of a common-channel signaling packet-
engine card for ISDN communications, Computer
Telephony, December 1996; and
(23) Headline: INTERNET MANAGEMENT –
Packeteer PacketShaper, ...New. Make like a
traffic cop and handle crowd control on the
Internet with PacketShaper by Packeteer.
PacketShaper is a high-speed hardware/software
packet engine that sits on the network-access
link between your router and Web server, Network
Computing, February 17, 1997.
Ser. No. 74/476641
12
Applicant submitted approximately 50 stories from the
Nexis database5, 24 of which refer to applicant6; a few of
which refer to a “packet capture engine,” or a “packet-
forwarding engine,” or a “packet-filtering engine.”
Representative examples of statements from the articles
referring to applicant follow:
(1) Packet Engines Inc., of Spokane, is
recruiting high-profile talent as it works to
become a world-class high-tech startup, Journal
of Business—Spokane, October 1996;
(2) Well-known industry consultant, Howard
W. Johnson, has committed his full support to
Packet Engines Incorporated, Edge: Work-Group
Computing Report, November 25, 1996; and
(3) Symbios Logic Inc. and Packet Engines
Inc. have formed a partnership to develop
products targeted at the emerging gigabit
Ethernet market, Electronic Buyers’ News,
December 16, 1996.;
The remainder of these Nexis articles do not include
the words “packet engine(s)” together. Rather they include
“packet” alone or “packet” with other words such as “site,”
“switch,” “filter,” or “losses,” and others include the
words “switching engine” or “fast routing engine.”7

5 These included several repeated stories.
6 Thirteen of the articles referring to applicant are from wire
services (most listing “distribution” to “business editors”), and
are of limited probative value. See footnote 4, supra.
7 One of the articles refers to a breakfast cereal packet, and
one refers to a packet of heroine. Obviously, these articles are
of no probative value in this case.
Ser. No. 74/476641
13
In addition, applicant submitted a large amount of
evidence in an attempt to prove distinctiveness under
Section 2(f) of the Trademark Act, or to show that the term
is at least capable of serving as a trademark, and is
registrable on the Supplemental Register. In its
supplemental brief applicant listed this evidence (pp. 10-
11), and which we summarize as follows:
(1) applicant’s use of the applied-for mark
for four years;8
(2) thirty-two signed letters9 from members
of the relevant purchasing public who attest to
their familiarity with the asserted mark and that
they associate it with applicant;
(3) the results of an advertisement survey
(Starch Readership Report) showing that 45% of
the readers of a particular issue of LAN magazine
remembered seeing applicant’s advertisement, 39%
actually read some part of the advertisement, and
compared to other advertisements in the same
category of products, applicant scored 88% above

8 It was less than three years from applicant’s claimed date of
first use (November 1, 1995) to the date applicant filed its
supplemental brief (September 25, 1998).
9 Applicant inaccurately refers to the letters as “declarations.”
Ser. No. 74/476641
14
the median among polled readers who were in the
“read most” (i.e., read one-half or more of the
written material in the advertisement) category;
(4) the results of a survey conducted by
BrandSolutions which show that applicant had a
47% awareness level (6th among 11 companies
specializing in computer networking products);
(5) approximately 50 unsolicited media
articles “chronicling Applicant’s successes and
its increased recognition by consumers in the
computer networking community”;
(6) applicant’s itemized advertising
expenses report (essentially for ads in various
magazines, but also including costs for, inter
alia, photography portrait sessions for officers
of applicant, and purchase of a digital camera)
of $900,000 from June 1996 through September 1997
for products offered under the mark;
(7) applicant’s itemized marketing-related
expenses report (which includes items such as
recruiting ads, portrait sessions, booth design,
booth space, booth installation, booth
management, advertising inserts, news release
distribution, business cards, envelopes, polo-
Ser. No. 74/476641
15
style shirts, wooden train whistles, direct mail)
of over $1,000,000 from June 1996 through
September 1997; and
(8) marketing tools such as applicant’s
brochures and product data sheets, as well as
photographs of t-shirts, wooden whistles, and
calendars.
Applicant also submitted several advertisements it
placed in 1997 in industry publications such as, Data
Communications and Network World.
III. Genericness
Generic terms are by definition incapable of
indicating source and thus can never attain trademark
status. See In re Merrill Lynch, supra; and In re Web
Communications, 49 USPQ2d 1478 (TTAB 1998). That is,
“[o]nce determined to be a generic designation of a class
of goods, no amount of evidence of purported secondary
meaning can give legal protection to that generic name.” 2
J. McCarthy, McCarthy on Trademarks and Unfair Competition,
§15:24 (4th ed. 1999).
The test for determining whether a designation is
generic, as applied to the goods in the application, turns
upon how the term is perceived by the relevant public. See
Ser. No. 74/476641
16
Loglan Institute Inc. v. Logical Language Group, Inc., 962
F.2d 1038, 22 USPQ2d 1531 (Fed. Cir. 1992). Determining
whether an alleged mark is generic involves a two-step
analysis: (1) what is the genus of the goods or services
in question? and (2) is the term sought to be registered
understood by the relevant public primarily to refer to
that genus of goods or services? See In re The American
Fertility Society, __ F.3d __, __ USPQ2d __ (Fed. Cir.
August 19, 1999); and H. Marvin Ginn Corporation v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). In determining whether
a term is generic we consider all of the evidence before
us, including that submitted by an applicant in support of
a claim of distinctiveness. See In re Seats, Inc., 757
F.2d 274, 225 USPQ 364 (Fed. Cir. 1985).
The Examining Attorney contends that the genus of
goods at issue in this case is “products designed to allow
computer networks to exchange information at extremely high
rates of speed.” He further asserts that the genus “is
collectively referred to as packet engine”; and PACKET
ENGINE “is the name of a type of computer hardware and
software which facilitate the exchange of information at a
high rate of speed.” (Examining Attorney’s brief, p. 8).
The Examining Attorney points to the dictionary definitions
Ser. No. 74/476641
17
of the words, the Nexis evidence, and applicant’s brochures
and advertisements in support of his position.
Applicant contends that the generic terms for
applicant’s goods are “switches, repeaters, network
interface cards and routers” (reply brief, p. 3); that the
evidence as a whole shows that “consumers in the computer
networking industry associate goods bearing the mark PACKET
ENGINES with Applicant” (applicant’s supplemental brief, p.
10); and that the “Examining Attorney continues to apply an
unnecessarily high standard of proof” for applicant to
establish that the applied-for mark is entitled to
registration on either the Principal or the Supplemental
Register (reply brief, p. 1).
As noted earlier, “the correct legal test for
genericness, as set forth in Marvin Ginn, supra, requires
evidence of ‘the genus of goods or services at issue’ and
the understanding by the general public that the mark
refers primarily to ‘that genus of goods or services.’”
American Fertility Society, supra. That is, do the members
of the relevant public understand or use the term to sought
to be protected to refer to the genus of the goods in
question?
Ser. No. 74/476641
18
In this case, applicant defined the relevant
purchasers as follows (applicant’s supplemental brief, p.
8):
While the computer industry as a whole has
grown into a vast market, the Gigabit Ethernet10
networking community is a smaller segment of that
larger market. Thus, Applicant’s primary targets
are companies utilizing networking products, in
particular Gigabit Ethernet products. The
individuals who purchase these very expensive
products are highly sophisticated and well
educated with respect to networking technology.
Applicant sells specialized products in a
specialized field. (Footnote added).
The problems we have with applicant’s definition of
the relevant public are twofold. First, applicant’s goods
are identified as “computer hardware and computer programs
for data communications, storage and image applications.”
This broad identification of goods is not limited to
specialized products, but rather encompasses the “vast
market” of the computer industry. See Octocom Systems Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990). Thus, we find the relevant public
to be anyone interested in computer hardware and computer
programs. Second, even if we were to consider the relevant
purchasers to be highly sophisticated, well educated,

10 According to The Computer Glossary: The Complete Illustrated
Dictionary (8th ed. 1998), “Ethernet” is defined as “the most
widely used LAN technology”; and “Gigabit Ethernet” is “the
newest Ethernet standard used for network backbones.”
Ser. No. 74/476641
19
networking technology specialists (which we cannot do on
this record), those specialists would recognize the term
“packet engines” as generic for the involved goods.
The dictionary definitions submitted by the Examining
Attorney, as well as those of which we take judicial
notice, coupled with the Examining Attorney’s submission of
Nexis stories showing generic use of the terms “packet
engine” or “packet engines” from 1988 to 1997 (two years
after applicant’s claimed date of first use) convince us
that this term is generic for these goods. Applicant has
not explained why the term has been used in a generic
manner in the Nexis evidence submitted by the Examining
Attorney. For example, applicant has not indicated that
its goods are different from those encompassed by the term
“packet engines” in the excerpts of record. Rather,
applicant only submitted other excerpted stories from its
own Nexis search, and, as indicated previously, these
references have either been for terms other than “packet
engines” or have used “Packet Engines” to refer to
applicant in connection with its general business efforts.
Applicant’s evidence of distinctiveness of the
asserted mark under Section 2(f) does not convince us
otherwise because, while the evidence clearly shows the
success and growth of applicant’s company, and a certain
Ser. No. 74/476641
20
popularity of applicant’s products, it does not establish
that the relevant purchasers and prospective purchasers
recognize this term as a trademark identifying the source
of the goods. Applicant’s evidence, while voluminous, when
closely reviewed, is generally weak or flawed, and thus, is
not persuasive.
The 32 letters are all in a similar form, giving the
person’s current job (e.g., engineer, engineering
professor, network design consultant, investment
consultant, certified public accountant, insurance agent),
followed by a statement that the person is “familiar with”
applicant’s products, and then a statement that the person
identifies the term PACKET ENGINES with applicant and the
person “perceives the term as a trademark identifying
applicant.”11 Even though the form letter used was
presumably drafted by applicant’s attorney, we have no
reason to believe the individuals who signed the letters
failed to tell the truth. However, these letters must be
viewed against the background of the other evidence of
record. See In re Schenectady Varnish Co., 280 F.2d 169,
126 USPQ 395 (CCPA 1960); and 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §§15:74 – 15:78 (4th ed.

11 The letters do not indicate that these people are prospective
purchasers of applicant’s involved products.
Ser. No. 74/476641
21
1999). In this case, in view of the multitude of evidence
to the contrary, their probative weight is limited.
Unsolicited letters written individually to applicant about
its involved computer products, expressing the person’s
understanding and/or recognition of the term as a
trademark, might have been more persuasive.
Applicant’s advertising and marketing expense reports
do not indicate in any way that the purchasing public
recognizes the term “packet engines” as a trademark. Nor
has applicant provided any sales figures.
The unsolicited media articles submitted by applicant
are about applicant itself, e.g., its fast growth, “High-
speed Networking: Gigabit Ethernet Reality Check,”
LANTIMES, April 28, 1997; recruiting and obtaining staff
from other companies, “Packet rounds up top talent,”
Journal Of Business-Spokane, October 10-23, 1996; its
obtaining venture capital, “Mining a high-tech legend,” The
Spokane-Review, June 8, 1997; and profiles of its officers,
“Newsmakers: The people behind Spokane’s business news in
the past year,” Journal Of Business-Spokane, April 24,
1997. The references in these articles are to applicant’s
trade name, Packet Engines, Inc., or to applicant as a
corporation, or to individual founders and officers of
Ser. No. 74/476641
22
applicant corporation, not to PACKET ENGINES as a trademark
for computer hardware and computer programs.
The fact that there are several current Nexis stories
referring to applicant is not surprising in view of
applicant’s rapid growth and apparent success as a start-up
company in the high-tech field. As noted, the Nexis
stories submitted by applicant also refer to applicant
itself, not to a trademark for the involved goods. In
fact, many of applicant’s Nexis stories appear to be based
on press releases from applicant. In contrast, the many
Nexis stories submitted by the Examining Attorney show that
for many years the term “packet engines” has been used
generically in stories about numerous companies (e.g.,
Prodigy Communications, Artel, Alantec, Scitec, Excel, IBM
and Packeteer) to refer to their computer hardware and
computer software programs which move packets of data.
The Starch Readership Report (Exhibit F to applicant’s
September 25, 1997 response) is characterized by applicant
as a survey, but it is certainly not a trademark
recognition survey. Rather, it is a “measure of print
advertising effectiveness” specifically relating to
advertisements appearing in the February 1997 issue of LAN
magazine. The report includes the statement that it is “to
provide you with a measure of the extent to which your ad
Ser. No. 74/476641
23
was seen and read in the study issue”; and the procedure
used is described as conducting “personal interviews with a
minimum sample of 100 issue readers who have already read
the test issue prior to the interview.” The question posed
to the interviewees was “What thoughts or impressions did
you get when you first read this ad? What specific idea
did you get about this advertiser or about the products
advertised?”
The report showed that 45% of those polled remembered
seeing the ad, 39% not only saw it but read it at least in
part, 30% read over one-half of the ad, and 30% read most
of the ad; and that applicant’s ad scored 88% above the
median among those readers who fell within the “read most”
category. This may establish that some people who read a
particular issue of a particular magazine read at least
some of applicant’s ad therein. But the report simply does
not relate to or prove that consumers recognize the term
“packet engines” as a trademark identifying the source of
computer hardware and computer programs.
The second survey submitted by applicant was one
conducted by BrandSolutions in early (January/February)
1998 and titled “Packet Engines Corporation Awareness
Overview.” This survey evidence consists of the report of
BrandSolutions based on the information it tabulated from
Ser. No. 74/476641
24
97 network professionals, who were selected from “GEA booth
visitors in Atlanta and Las Vegas, provided by Packet
Engines [Incorporated], and BrandSolution’s online panel of
IS professionals.” The interviewing “consisted of a
combination of phone-fax-phone approach”; 81 persons
completed the initial questionnaire, and 50 completed the
fax portion. The question asked was the following: “When
you think of companies that manufacturer (sic) products
that support Gigabit Ethernet, which one comes to mind
first? Which others are you aware of? Have you heard
of...?”
This is not a trademark recognition survey, but rather
it relates to previous awareness or knowledge of the
existence of a company, not a brand for a product. The
fact that about half of the 97 participants (47%)12 are
aware of applicant as a corporation does not prove that the
overall relevant purchasing public recognizes the term
“packet engines” as the source of computer hardware and
computer programs. In fact, the “Conclusions” listed in
the survey were “(1) Gigabit Ethernet is still very much an
emerging market, (2) The large network players have a clear
awareness advantage (Cisco, 3Com, etc.), and (3) Overall

12 This percentage includes the total of both aided and unaided
awareness.
Ser. No. 74/476641
25
awareness of Packet Engines [Incorporated] is somewhat
higher than other small Gigabit networking companies.”
This survey is not proof of consumer recognition of “packet
engines” as a trademark for computer hardware and computer
programs.
Neither of applicant’s surveys provides evidence of
“consumer reaction as to association between a given symbol
and a single source of a product.” 2 J. McCarthy, McCarthy
on Trademarks and Unfair Competition, §15:42 (4th ed.
1999). See generally, Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1435 (TTAB
1993).
The fact that applicant has used the term for a few
years (including in the marketing of collateral products,
e.g., whistles, calendars) does not negate its generic
nature for the involved goods. And a generic term is not
subject to appropriation as a trademark, regardless of
evidence of purported distinctiveness because generic terms
should be freely available for use by competitors.
After reviewing all of the evidence of record,
including applicant’s evidence of acquired distinctiveness,
we find that the term “packet engines” names the class of
computer equipment involved herein. We also find that the
relevant public understands the term to refer to the
Ser. No. 74/476641
26
involved computer hardware and software. The members of
the relevant public who would be interested in computer
hardware and computer programs would understand the term to
refer to the type of computer hardware and software, and
not to the source of the goods.
Applicant’s citation to the cases of Hunter Publishing
Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB
1986); and In re Failure Analysis Associates,1 USPQ2d 1144
(TTAB 1986) are both easily distinguished from the
situation now before the Board.13 The former case, Hunter
Publishing, involved an inter partes record where the Board
found that opposer did not prove the term SYSTEMS USER was
generic with regard to applicant’s goods, a periodic trade
journal. The latter case, Failure Associates, involved an
ex parte case where the refusal to register was mere
descriptiveness.
Based on the record before us, we hold the term
“packet engines” is generic for the class of applicant’s
computer hardware and computer programs for data
communications, storage, and image applications. See
American Fertility Society, supra; Micro Motion Inc. v.

13 Although applicant cited other cases in its supplemental brief,
these are the only ones in the section titled “Case Law Dictates
That PACKET ENGINES Should Be Approved For Registration.”
Ser. No. 74/476641
27
Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998); In re Central
Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998); In re Recorded
Books Inc., 42 USPQ2d 1275 (TTAB 1997); In re Pennzoil
Products Co. 20 USPQ2d 1753 (TTAB 1991); In re Lowrance
Electronics Inc., 14 USPQ2d 1251 (TTAB 1989); and Analog
Devices, supra.
V. Acquired Distinctiveness
Having determined that the term “packet engines” is
generic, we necessarily find that the involved registration
is incapable of serving as a trademark to identify the
source of the goods. However, in the event it should be
determined on appeal that the term is not generic, and for
completeness of the record, we now consider whether
applicant’s Section 2(f) evidence is sufficient to
establish that the term has acquired distinctiveness.
There is no specific rule as to the exact amount or
type of evidence necessary at a minimum to prove acquired
distinctiveness, but generally, the more descriptive the
term, the greater the evidentiary burden to establish
acquired distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha, supra at 1008. See also, 2 J. McCarthy,
Ser. No. 74/476641
28
McCarthy on Trademarks and Unfair Competition, §15:28 (4th
ed. 1999).
For the reasons explained above, applicant’s evidence
is weak and flawed. We find it insufficient to establish
acquired distinctiveness.
Moreover, in this case, the record contains evidence
demonstrating others’ use of the term “packet engines” in a
generic manner as the name of computer equipment. Much of
this usage occurred prior to applicant’s claimed first use
in November 1995, and continues through to the present.
Hence, applicant failed to show the substantially exclusive
use which is a prerequisite for proving acquired
distinctiveness. See Levi Strauss & Co. v. Genesco, Inc.,
742 F.2d 1401, 222 USPQ 939 (Fed. Cir. 1984).
Decision: The term “packet engines” is generic and
incapable of distinguishing applicant’s goods from those of
others. Therefore, it is unregistrable on the Supplemental
Register. Even if the term is ultimately found not
generic, the term is merely descriptive and applicant has
failed to prove it has acquired distinctiveness under
Section 2(f). Accordingly, the refusals to register on the
Ser. No. 74/476641
29
Supplemental Register and on the Principal Register under
Section 2(f) are affirmed.
R. L. Simms
E. J. Seeherman
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board