Sanuk Technology International Corp.

Trademark Trial and Appeal Board

Jun 22, 2007

No. 76587886 (T.T.A.B. Jun. 22, 2007)

Mailed: June 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sanuk Technology International Corp.
________

Serial No. 76587886
_______

John S. Hale of Gipple & Hale for Sanuk Technology
International Corp.

Katherine Stoides, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Cataldo, Mermelstein and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Sanuk Technology International Corp., has
applied to register the mark EPCCONFIGURATOR in standard
character form on the Principal Register for the following
goods, as amended: “software for identifying and matching
for compatibility sensors, readers, antennae, software and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76587886
2
networks used in radio frequency networking solutions” in
International Class 9.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive

1 Application Serial No. 76587886 was filed April 21, 2004, based
upon applicant’s assertion of its bona fide intent to use the
mark in commerce in connection with the recited goods.

Ser No. 76587886
3
thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
In this case, the examining attorney’s evidence
supports a finding that the acronym “EPC” stands for
“electronic product code.” In particular, an article from
an Internet website contains the following information:2
The Electronic Product Code (EPC)

Just as the UPC code has transformed retail
operations around the globe over the past twenty
years by increasing productivity and efficiency
within the supply chain, the ePC (electronic
product code) could take supply chain dynamics to
the next level….
The ePC code is a new product numbering standard
that goes way beyond identifying products. The
ePC assigns a unique number to every single item
that rolls off a manufacturing line! (e.g. Every
single bottle of soda would have its own unique
ePC number). The ePC will allow every company in
the supply chain, including retailers, to track
products at the individual item level….

2 We note that the examining attorney also relies upon
definitions of “electronic product code” from the open-source
Internet encyclopedia Wikipedia, which corroborates the above
definition.
Ser No. 76587886
4
The ePC number is designed to be embedded within
an electronic tag that can be applied to each
item for a very low cost. One way to think of
the ePC is to imagine a UPC that is appended with
a unique serial number and stored electronically
on every item. The ePC tag can be read by radio
frequency scanners when brought into range of a
tag reader.

In addition, applicant concedes in its December 7, 2005
response to the examining attorney’s second Office action
that “the letters EPC have a general meaning within the
trade of electronic product code” (response, p. 1).
The examining attorney further submits articles from
the Nexis computer database in which the term “configurator
software” appears.3 The following examples are illustrative
(emphasis added):

The Phases Easy Design configurator software is a
menu-driven program that walks the user, via
guided steps and individual screens, to design a
hydrostatic transmission….
(Diesel Progress North American Edition, July 1,
2005)

“…yet another set of forward-thinking companies
who see the value of leveraging BigMachine’s Lean

3 The examining attorney’s submission of a copy of the summary of
her search of “configurator software” on the Google Internet
search engine has no probative value because the search results
are so truncated that they do not provide context for the
occurrence of the search term. See In re Remacle, 66 USPQ2d 1222
n.2 (TTAB 2002). See also TBMP 11208.03 (2nd ed. rev. 2004). In
short, the summary results contain too little information to be
of use in determining whether the mark EPCCONFIGURATOR or the
component term “CONFIGURATOR” has any descriptive meaning as
applied to applicant’s goods.

Ser No. 76587886
5
Front-End web configurator software to nimbly
support their various sales channels in the
global market place,” Abel adds.
“BigMachine’s LFE configurator software was a
natural fit for our business,” said Kevin Woods,
Sr. Director of Marketing for Mirapoint.
(Business Wire, February 11, 2005)

One type of tool that is showing up frequently on
web sites is the product configurator.
Configurators are specialized software that guide
engineers through the steps required to pick the
right product from an individual vendor’s many
offerings to solve the design….
(Design News, June 28, 2004)

Swagelok Modular Platform Components (MPC),
together with configurator software, make it easy
to develop and assemble complete process analyzer
sample-handling systems using an ANSI/ISA….
The configurator software allows the user to
place, define and connect surface-mount
components on a computerized layout grid.
(Oil, Gas, & Petrochem Equipment, March 1, 2004)

The above examples, which are representative of the
evidence made of record by the examining attorney, clearly
indicate that “configurator software” is software that may
be used to design and configure various systems.4 It is
settled that excerpts from articles taken from the Nexis
database are competent evidence of how a mark may be
perceived. See In re Shiva Corp., 48 USPQ2d 1957 (TTAB

4 We are not persuaded by applicant’s contention that the absence
of a definition of the term “configurator” from the relevant page
of the American Heritage College Dictionary is conclusive
evidence that the term has no meaning.

Ser No. 76587886
6
1998). Based upon the above evidence, EPCCONFIGURATOR
merely describes software that configures or designs
systems based upon their electronic product codes.
In its brief (p. 4-5) applicant indicates that its
goods allow users to:
pull down various RFID tags, hand held and fixed
readers, printer and operating systems of varying
manufacturers to determine whether the specific
software and hardware will operate with each
other.…The various hardware items and software
items are identified by commercial product name
and when pulled down into a design area will
allow a professional to custom design a company’s
RFID system. The software recognizes
incompatible connections in the respective links
and will not allow them to be connected together
in the design of the RFID system and also will
present compatible hardware/software selection
for the various components which have been pulled
down into the design area.

Thus, as applied to applicant's goods, the term
EPCCONFIGURATOR would immediately describe, without
conjecture or speculation, a significant characteristic or
feature of the goods, namely, that they are used to
configure RFID systems based upon the components’
electronic product codes. In other words, prospective
purchasers, upon confronting the term EPCCONFIGURATOR used
in connection with applicant's goods, would immediately
perceive that a significant feature or characteristic of
its goods is to identify and recognize incompatibilities,
and present compatible components - i.e., configure - such
Ser No. 76587886
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systems based upon their electronic product codes.
Applicant’s assertions and evidence regarding third-
party registrations for marks containing the term
CONFIGURATOR are of little probative value in determining
the registrability of the mark at issue in this case.
First, we note that the marks in those registrations are
not the same as that in the application at issue herein.
Further, we note that in the two third-party registrations
in which the term CONFIGURATOR stands alone and not part of
a telescoped mark, (KNOWLEDGE-BASED CONFIGURATOR and EKWIK
CONFIGURATOR), the first mark is registered on the
Supplemental Register and the second is registered on the
Principal Register with a disclaimer of CONFIGURATOR apart
from the mark as shown. Thus, these third-party
registrations tend not to support a finding that
CONFIGURATOR is viewed by the Office as a distinctive or
suggestive term. Finally, and as often noted by the Board,
each case must be decided on its own set of facts, and we
are not privy to the facts involved with these
registrations. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
Ser No. 76587886
8
court.”) See also In re Best Software Inc., 58 USPQ2d 1314
(TTAB 2001). While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based upon the record before us, whether applicant's mark
is registrable.
Finally, even if applicant is the first or the only
user of EPCCONFIGURATOR in connection with its goods, it is
well settled that such does not entitle applicant to the
registration thereof where, as here, the term has been
shown to immediately convey only a merely descriptive
significance in the context thereof. See, e.g., In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018,
1020 (TTAB 1983); and In re Mark A. Gould, M.D., 173 USPQ
243, 245 (TTAB 1972).
Accordingly, we find that applicant's mark is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.