Axonn, L.L.C.

Trademark Trial and Appeal Board

Nov 18, 2004

No. 76376728 (T.T.A.B. Nov. 18, 2004)

Mailed:
November 18, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Axonn, L.L.C.
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Serial No. 76376728
Serial No. 76376729
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Charles C. Garvey, Jr. of Garvey, Smith, Nehrbass & Doody,
L.L.C. for Axonn, L.L.C.
Caroline Fong Weimer, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Bottorff and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Axonn, L.L.C. has applied to register, on the
Principal Register, the designations INDUSTRIAL WIRELESS
DATA SOLUTIONS (Serial No. 76376728) and INDUSTRIAL
WIRELESS (Serial No. 76376729) for "radio frequency
engineering services," in Class 42. Each application is
based on applicant's assertion of its bona fide intention
to use the proposed mark in commerce. Also, by requirement
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76376728 & 76376729
2
of the examining attorney, each application includes a
claim of ownership of Registration No. 2449667 for the mark
WIRELESS DATA SOLUTIONS THAT WORK for the same services as
the two involved applications.1
The examining attorney refused registration of the
proposed marks, asserting that they are merely descriptive
of applicant's services. When each refusal was made final,
applicant filed an appeal and a request for
reconsideration. Each of the requests for reconsideration
was denied. Applicant and the examining attorney filed
separate briefs in each case; applicant did not request an
oral hearing. In view of the related nature of the issues
presented by the appeals, the Board has chosen to issue
this single decision.
In assessing the evidence of record and the likely
perception of the designations used by applicant, we adopt
the point of view of the average or ordinary consumer in
the class of prospective purchasers for applicant’s
services. See In re Omaha National Corp., 819 F.2d 1117, 2
USPQ2d 1859, 1861 (Fed. Cir. 1987). Moreover, whether a
designation is merely descriptive is determined not in the
1 The claimed registration is on the Principal Register, without
any reliance on a claim of acquired distinctiveness under Section
2(f), 15 U.S.C. § 1052(f), and does not include a disclaimer of
any of the words in WIRELESS DATA SOLUTIONS THAT WORK.
Ser No. 76376728 & 76376729
3
abstract, but in relation to the goods or services for
which registration of the designation 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 designation would have to the average purchaser because
of the manner of its use. See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979).
Whether consumers could guess what the service is from
abstract consideration of a proposed mark is not the test.
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985). Likewise, whether a prospective purchaser of
applicant's services would or, as applicant contends, would
not think of one or both of applicant's proposed marks when
considering only the identification of services, also is
not the test. However, the evidence must establish that
the designations immediately describe a quality,
characteristic or feature of applicant’s services or convey
information regarding the nature, purpose or utility of the
services. See In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978); see also, In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
We consider first the two-word designation INDUSTRIAL
WIRELESS. When the examining attorney refused
registration, she noted that INDUSTRIAL is descriptive of a
Ser No. 76376728 & 76376729
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field of use or application for applicant's services. In
support of the point she included reprints of certain web
pages posted on the Internet by applicant. One page is
titled "AXONN Spread Spectrum Industrial Wireless Home
Page" and shows applicant offers AXESS branded products
"suitable for a variety of wireless data collection, SCADA
and telemetry tasks. Using AXONN's proven spread spectrum
technology which requires no FCC licensing, AXESS is the
solution for integrating telemetry services into an
industrial environment." Later on the same page, within a
passage about applicant in general, is the following:
"world leader in designing and manufacturing innovative
wireless data communication solutions" and "proven
technology provides secure wireless data links for
industrial, commercial, residential and remote monitoring
applications worldwide."
As to the term WIRELESS, the examining attorney
contends that "radio frequency engineering services" are,
in essence, engineering services related to wireless
communications. To support this point, the examining
attorney relies on a dozen excerpts of news stories
retrieved from the NEXIS database. The following are two
examples:
Ser No. 76376728 & 76376729
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Micro Systems Inc. of Fort Walton Beach has
turned the radio frequency technology they
developed for the military into a wireless,
interactive educational tool for schools and
businesses.
Northwest Florida Daily News, June 6, 2002; and
Cree Microwave designs, manufactures and markets
a line of radio frequency power semiconductors,
one of the main components in building wireless
infrastructure for cellular and PCS telephones.
The Herald-Sun (Durham, N.C.), June 4, 2002
In response, applicant did not contest the examining
attorney's evidence in any way. The entire response it
made was the statement "It is submitted that the mark as a
whole is suggestive, considering the services." After the
refusal of registration was made final, applicant repeated
the above statement in its request for reconsideration and
added only the following argument: "While [INDUSTRIAL
WIRELESS] might be considered suggestive of [radio
frequency engineering] services, certainly if you were to
ask one hundred people for other names for radio frequency
engineering services, it is respectfully submitted that not
a single one would state 'Industrial Wireless' as another
term for radio frequency engineering services." Request
Ser No. 76376728 & 76376729
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for reconsideration, p. 1. Subsequently, applicant
repeated these same contentions in its appeal brief.2
The examining attorney, in her brief, has requested
that we take judicial notice of dictionary definitions of
"industrial" and "wireless." Applicant did not file a
reply brief and did not object to the examining attorney's
request, which we grant. The first of three definitions
provided by the examining attorney for "industrial" is "of,
relating to, or resulting from industry: industrial
development; industrial pollution." The provided
definition of "wireless" is "having no wires: a wireless
security system." We also take judicial notice of the
following definition of "wireless": "Radio transmission
via the airwaves. Various communications techniques are
used to provide wireless transmission including infrared
line of sight, cellular, microwave, satellite, packet radio
and spread spectrum." The Computer Glossary 438 (7th ed.
1995).
The examining attorney contends that the evidence
clearly establishes that the goods employed in data
collection systems offered by applicant have industrial
2 The request for reconsideration and brief each were two pages
long. They contain no discussion of the evidence or any
arguments other than those quoted herein.
Ser No. 76376728 & 76376729
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applications and employ radio frequency or wireless
technology. She further contends that applicant's
engineering service supports these goods and INDUSTRIAL
WIRELESS is therefore as descriptive of the services as it
is of the goods. Finally, the examining attorney argues
that while the combination of two individually descriptive
terms may, in certain circumstances, result in a
registrable mark, in this case the combination of
INDUSTRIAL and WIRELESS does not; the combination, she
contends, does not result in any incongruity, ambiguity, or
any distinctive commercial impression.
"Industrial" and "wireless" are certainly descriptive
terms when used individually on applicant's web page.
Thus, unless the combination of these two descriptive terms
results in some sort of distinctive creation, competitors
likewise should be free to use the terms separately or in
combination. Estate of P.D. Beckwith, Inc. v. Commissioner
of Patents, 252 U.S. 538 (1920); In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968). We agree
with the examining attorney that the combination of
"industrial" and "wireless" does not result in any
ambiguity, incongruity or any sort of combination that
could be said to be distinctive.
Ser No. 76376728 & 76376729
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We also agree with the examining attorney that
INDUSTRIAL WIRELESS is not merely suggestive of applicant's
services, a possibility which applicant admits, but instead
is merely descriptive. "Radio frequency engineering
services" is a broad identification and must be read to
encompass all sorts of engineering services that relate to
radio frequency or wireless communications, whether those
communications involve voice or data. Such engineering
services can include design of systems, deployment of
systems, including adaptation of standard or generic
products for specialized applications, and troubleshooting
or maintenance of such systems. Industrial consumers or
purchasing agents, in the market for engineering services
relating to design, deployment, adaptation of, or
maintenance of a wireless voice or data communications
system, when confronted with the term INDUSTRIAL WIRELESS
used by a firm offering such services, will not have to
engage in any thought or exercise of imagination to
conclude that INDUSTRIAL WIRELESS describes characteristics
of radio frequency engineering services of various types
for use in industrial settings.3
3 We do not agree with the examining attorney's contention that
"wireless" and "radio frequency" have been shown by the NEXIS
evidence to be "one and the same," but we do find that various
types of radio frequency transmissions are all aptly termed
"wireless" communications.
Ser No. 76376728 & 76376729
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Accordingly, we affirm the refusal of registration of
INDUSTRIAL WIRELESS. We now consider the refusal to
register INDUSTRIAL WIRELESS DATA SOLUTIONS.
The application to register INDUSTRIAL WIRELESS DATA
SOLUTIONS has essentially the same evidence and the same
arguments by applicant as the application to register
INDUSTRIAL WIRELESS. The only difference is that the
examining attorney has requested that we take judicial
notice of dictionary definitions for each of the four words
in INDUSTRIAL WIRELESS DATA SOLUTIONS. Again, applicant
has not objected to this request, which we grant.
We have previously recited the definitions for
"industrial" and "wireless". The definitions provided by
the examining attorney for "data" are "Factual information,
especially information organized for analysis or used to
reason or make decisions" and "Computer Science. Numerical
or other information represented in a form suitable for
processing by computer." The provided definitions for
"solution" are "The method or process of solving a problem"
and "The answer to or disposition of a problem."
In essence, the examining attorney argues that each of
these four words is descriptive when used in connection
with applicant's services, as evidenced by applicant's own
use of the terms on its web pages and by the proffered
Ser No. 76376728 & 76376729
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dictionary definitions, and that the combination of the
four does not create a distinctive slogan or mark. She
reasons that applicant's services have industrial
applications, relate to wireless communication of data and
provide those who need to conduct such data gathering with
solutions to their problems. In regard to the web page
references, we have previously recited some of the phrases
and sentences that use the terms in question.4 We also note
applicant's use, in a descriptive manner, of the phrase
"clear leader in low data rate, high functionality wireless
solutions."
We agree with the examining attorney that each of the
four terms is used descriptively by applicant on its web
pages and, when strung together, retain their descriptive
significance and do not take on any distinctive
characteristic. In particular, applicant's use of the
phrase "innovative wireless data communication solutions"
is practically a use of that which applicant proposes to
register as a mark, INDUSTRIAL WIRELESS DATA SOLUTIONS.
Applicant has merely substituted the descriptive term
4 Applicant, we have noted, touts its AXESS products as
"suitable… for wireless data collection…. AXESS is the solution
for integrating telemetry services into an industrial
environment." Also, applicant has described itself by the
following phrase: "world leader in designing and manufacturing
innovative wireless data communication solutions."
Ser No. 76376728 & 76376729
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"industrial" for the laudatory term "innovative" and
omitted the word "communication." The word "communication"
however, is virtually implied in the proposed mark, because
applicant's wireless systems are "for communicating data."
See Remington Products Inc. v. North American Philips
Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1447-48 (Fed. Cir.
1990).
Again we note that "radio frequency engineering
services" is a broad identification of services and would
encompass the types of services promoted on applicant's web
pages, e.g. "research, development and commercialization of
Radio Frequency spread spectrum devices … for communicating
data." Industrial customers or purchasing agents seeking
such services would, when contemplating INDUSTRIAL WIRELESS
DATA SOLUTIONS, immediately know that applicant's "radio
frequency engineering services" would allow for engineering
of solutions for wireless communication of data in
industrial settings. Prospective would not need to pause
and think about what the services would involve or have to
exercise any imagination to draw conclusions about the
nature of the services.
We affirm the refusal to register INDUSTRIAL WIRELESS
DATA SOLUTIONS.
Ser No. 76376728 & 76376729
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The fact that the applicant, according to its web
pages, may also offer its services for residential or other
non-industrial applications does not render either proposed
mark registrable. See In re Quik-Print Copy Shop, Inc.,
616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980), In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
Likewise, the fact that applicant has obtained a
registration for WIRELESS DATA SOLUTIONS THAT WORK for the
involved services does not dictate that either of the
proposed marks now before us must be registered. We agree
with the examining attorney that that phrase, a slogan,
presents a somewhat different commercial impression. In
any event, each application is to be judged on its own
merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001).
Decision: The refusal of registration under Section
2(e)(1) is affirmed in each of the involved applications.