Video Messenger.com Corp.

Trademark Trial and Appeal BoardSep 28, 2007

No. 76611883 (T.T.A.B. Sep. 28, 2007)

Hearing: Mailed: September 28, 2007 February 20, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Video Messenger.com Corp. ________ Serial No. 76611883 _______ Norm D. St. Landau of Drinker Biddle & Reath LLP for Video Messenger.com Corp. Katherine M. DuBray1, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Walters, Drost and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Video Messenger.com Corp. has filed an application to register the mark VIDEO MESSENGER, in standard character format, on the Principal Register for goods ultimately identified as “computer hardware and software sold as a unit for generating video images, namely, computer hardware 1 The above application originally was examined by another examining attorney, but subsequently was reassigned to the attorney whose name is shown to prepare the appeal brief. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 76611883 2 and software that enables users to place text messages over video messages” in Class 9.2 The trademark examining attorney has issued a final refusal to register on the ground that applicant’s mark VIDEO MESSENGER, when used in connection with the identified goods, is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). After the refusal was made final, applicant appealed and requested reconsideration of the final refusal. On May 26, 2006, the examining attorney denied the request for reconsideration and the appeal was resumed. Applicant and the examining attorney filed briefs3 and an oral hearing was held. We affirm the refusal to register. The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or services in connection with which it is used, or 2 Serial No. 76611883, filed September 17, 2004, and alleging August 1985 as the date of first use of the mark anywhere and in commerce. 3 The evidence attached to applicant’s brief is the same as that previously submitted. Accordingly, it is already of record as part of the application file, and its submission was unnecessary. See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (submission of duplicative papers is a waste of time and resources, and is a burden upon the Board). Ser No. 76611883 3 intended to be used. 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 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, feature or property of the goods or services. In re MBAssociates, 180 USPQ 338 (TTAB 1973). 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 or intended to be used, 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. In re Recovery, Inc., 196 USPQ 830 (TTAB 1977). Applicant contends that its mark is not merely descriptive of “computer hardware and software sold as a unit for generating video images, namely, computer hardware and software that enables users to place text messages over video messages” because: • Contrary to the Examining Attorney’s incorrect conclusion, Applicant’s product does not enable the transmission and reception of real-time visual and textual messages. Applicant’s product is a character generator that allows users to Ser No. 76611883 4 place text over existing video images such as television advertisements, in a variety of fonts, color selections and character positions. • A consumer viewing Applicant’s Mark must employ mental reasoning to even attempt to reach a conclusion as to how Applicant’s Mark might relate to Applicant’s character generating hardware and software. The Examining Attorney’s reasons for refusing registration of Applicant’s Mark on descriptiveness grounds demonstrate that the mark is, at the very least, suggestive of Applicant’s goods. • Applicant’s predecessor-in-interest owned a registration for the identical mark and identical goods on the Principal Register without a claim of acquired distinctiveness; and • There is no evidence in the record to support the refusal to register Applicant’s Mark on the ground of descriptiveness. Applicant’s brief, pp. 1-2. By contrast, it is the examining attorney’s position that the mark sought to be registered is descriptive of the function of applicant’s goods because applicant’s computer hardware and software transmits messages through video means. She further argues that “the combination of ‘video’ and ‘messenger’ does not create a unitary mark that projects a unique, non-descriptive meaning or commercial impression within the relevant field,” and that allowing applicant to register the designation VIDEO MESSENGER for the identified goods would give applicant an unfair competitive advantage over numerous third parties who use Ser No. 76611883 5 the term VIDEO MESSENGER to identify a device or service that relays messages through video means. In support of the refusal, the previous examining attorney submitted the following definitions, in relevant part (emphasis in the original), of “video”: ADJECTIVE: 3. Computer Science Of or relating to the production of images on video displays. NOUN: 5. Computer Science The appearance of text and graphic on a video display.4 Additionally, we take judicial notice of the following definition of “messenger”:5 NOUN: 2. A bearer of news.6 The examining attorney also submitted excerpts of numerous articles from the Lexis-Nexis® database and the Internet illustrating the frequent usage of the term “VIDEO MESSENGER” by a variety of users, principally for video conferencing and/or sending or relaying text and images from one electronic device to another. As applicant points out, its goods do not allow for the transmission of data, 4 The American Heritage Dictionary of the English Language (4th ed. 2000). 5 The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 6 The American Heritage Dictionary of the English Language (4th ed. 2000). Ser No. 76611883 6 but rather allow consumers to add their own text to existing video images such as closed-circuit advertising systems. Therefore, the probative value of this evidence is limited, at best, in assessing the consuming public’s perception of the term VIDEO MESSENGER as describing applicant’s computer hardware and software that enables users to place text messages over video messages. Notwithstanding that applicant’s goods do not enable the transmission and reception of real-time visual and textual messages, the record sufficiently demonstrates that the designation VIDEO MESSENGER conveys forthwith the function and/or purpose of applicant’s goods. The dictionary definitions submitted by the examining attorney as well as applicant’s own use of the term “video” in the identification of goods show that VIDEO directly describes an attribute of applicant’s goods, i.e., the generation of video images. Additionally, as previously indicated, the term “messenger” means “[a] bearer of news.” Because applicant’s goods allow the user to communicate or “bear news” by placing text messages over video messages the word “messenger” is merely descriptive of applicant’s goods. In view of the above, we find that the individual terms VIDEO and MESSENGER have descriptive significance as used in connection with the identified goods. Ser No. 76611883 7 When two or more merely descriptive terms are combined, we must determine whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, then the resulting combination is also merely descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely descriptive of commercial and industrial cooling towers). Contrary to applicant’s contention, we find that the record establishes that the designation VIDEO MESSENGER, as a whole, is descriptive of the identified goods. When the mark VIDEO MESSENGER is viewed on or in connection with the goods listed in the application, there is nothing in the mark which is incongruous, nor is there anything which would require the gathering of further information, in order for the merely descriptive significance thereof to be readily apparent to prospective purchasers of the goods. See, for example, In re Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA) (Rich, J., concurring) [GASBADGE described as a shortening of the name “gas monitoring badge”]; and Cummins Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA 1966) [TUBODIESEL held generically descriptive of engines having exhaust driven turbine super-chargers]. That is, Ser No. 76611883 8 the combination of the words “video” and “messenger” fail to create a new and distinct commercial impression. As evidenced by applicant’s informational brochure and specimens of record, the purchasing public would perceive the designation VIDEO MESSENGER as descriptive of applicant’s computer hardware and software that enables users to place text messages over video messages. The brochure reads, in relevant part, as follows: Put Your Message on Your TV *** No matter what your business is Video Messenger has an affordable system that will help you communicate more efficiently with your customers and guests. We offer a variety of systems from multi-channel, multi-location networks to a single set solution. *** Your Televisions can now be Video Bulletin Boards! The specimen reads, in relevant part, as follows: The Video Messenger, VM-3 is an innovative, multimedia communications device that is much more than a character generator. It allows you, the user, to effectively communicate with your customers, guests, residents, students, etc., using text, digital images and video clips. You can educate, inform and motivate your target audience in ways that would have cost $ thousands more before the introduction of this little giant. If you can use the V-3 system in any of the applications listed Ser No. 76611883 9 (click on the Applications Button), we invite [sic] to explore our website to see how the Video Messenger can help you get the word out. *** Applications … Any application that needs quick and easy information delivery *** Note: This system is designed as a video bulletin board with built-in backgrounds of various colors. It will also gunlock text messages over any external video source. When prospective consumers encounter the designation VIDEO MESSENGER in this context, it is clear that it would immediately inform these consumers that applicant’s computer hardware and software allows them to post and/or relay messages by or over video. Lastly, applicant contends that its predecessor-in- interest owned a prior registration, now cancelled due to applicant’s inadvertent failure to timely file an affidavit under Section 8 of the Lanham Act, for the mark VIDEO MESSENGER for the same goods, i.e., computer hardware and computer programs sold as a unit for generating video images.” Thus, applicant argues, “it follows that Applicant’s Mark is not merely descriptive and is registrable on the Principal Register without a claim of distinctiveness.” Although applicant contends that the Ser No. 76611883 10 goods are “the same,” the identifications read differently and, unlike the present case, there is nothing in the record to indicate that the prior registrant’s computer hardware and software programs functioned as bulletin boards or messaging service. Moreover, it is settled that each case must be considered on its own merits based on evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); and In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). We conclude that when applied to applicant’s goods, the designation VIDEO MESSENGER immediately describes, without any kind of mental reasoning, the function of the goods listed in the application, i.e., “computer hardware and software sold as a unit for generating video images, namely, computer hardware and software that enables users to place text messages over video messages.” Decision: The refusal to register under Section 2(e)(1) of the Trademark Act is affirmed.