Berkeley Networks

Trademark Trial and Appeal Board

Jul 18, 2000

No. 75366259 (T.T.A.B. Jul. 18, 2000)

Paper No. 14
JQ
7/18/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Berkeley Networks
________
Serial No. 75/366,259
_______
Christopher H. Gebhardt and Elaine V. Keim for applicant.
Keith Weltsch, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Berkeley Networks to
register the mark ACTIVE SWITCH for “computer networking
equipment, namely, computer hardware and computer software
for operating computer networking equipment.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground

1 Application Serial No. 75/366,259, filed October 1, 1997,
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/366,259
2
that applicant’s mark, if applied to the goods, would be
merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed appeal briefs.
Applicant neither filed a reply brief nor requested an oral
hearing.
Applicant argues, without getting very specific, that
the term sought to be registered is just suggestive.
Applicant contends that while the individual terms “active”
and “switch” may be commonly used in connection with
computer hardware, the composite mark is not merely
descriptive. Applicant further argues that issuance of a
registration to it will not deprive others in the industry
from using the individual terms in their usual descriptive
manner. Lastly, applicant maintains that any doubt on the
issue of mere descriptiveness must be resolved in
applicant’s favor.2

2 In connection with its arguments to reverse the refusal,
applicant submitted a computer-generated list of third-party
registrations which, according to applicant, show that the term
“active” is suggestive. Mere listings of third-party
registrations generally are not sufficient to make the
registrations of record; copies of the registrations themselves
are required for that purpose. In re Classic Beverage Inc., 6
USPQ2d 1383 (TTAB 1988). The Examining Attorney properly
objected to the listing on this basis, and the third-party
registrations do not form part of the appeal record. We hasten
to add, however, that we agree with the Examining Attorney’s
assessment of this evidence. That is to say, even if this
Ser No. 75/366,259
3
The Examining Attorney contends that the applied-for
mark merely describes a feature of applicant’s goods,
namely, that the computer networking equipment includes a
mechanical or electrical device that completes or breaks
the path of electric current or sends it over a different
path that adds intelligence in some manner to the signal or
data that passes through it. In sum, according to the
Examining Attorney, the term ACTIVE SWITCH merely describes
a particular type of computer hardware or software that
operates computer networking equipment. In support of the
refusal to register, the Examining Attorney submitted
dictionary definitions,3 numerous excerpts retrieved from
the NEXIS database, and excerpts from applicant’s web page.
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 a quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods and/or
services. In re Abcor Development Corp., 588 F.2d 811, 200

evidence were considered, it is not persuasive of a different
result in this case.
3 To the extent that some of the definitions were submitted for
the first time with the Examining Attorney’s brief, we grant the
request to take judicial notice of this matter. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75/366,259
4
USPQ 215, 217-18 (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 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. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The term “active component,” as defined in The
Internet Glossary and Quick Reference Guide (1998), means
the following:
a device that adds intelligence in some
manner to the signal or data that
passes through it. For example, in
networking, an active hub regenerates
fading input pulses into new, strong
output pulses. In contrast, a passive
hub is just a junction box that does
not affect the passing data.
The term “switch” is defined in Modern Dictionary of
Electronics (1997) as follows:
A mechanical or electrical device that
completes or breaks the path of the
current or sends it over a different
path; in a computer, a device or
programming technique by means of which
selections are made; a device that
connects, disconnects, or transfers one
or more circuits.
Ser No. 75/366,259
5
Clearly, a “switch” is a “component” of computer networking
equipment, and applicant does not dispute that its goods
include switches.4 In point of fact, applicant refers on
its webpage to the switching technology of its products as
used in computer networking systems.
In its brief, applicant states that its products are
based on ATM (Asynchronous Transfer Mode) technology.
The NEXIS excerpts show that the term “active switch” is
used in the computer networking field, and a few articles
discuss the role of active switches in ATM technology.
Examples of the NEXIS articles are as follows:
...the time it takes to get a cell
through an active switch, although this
form of latency would vary based on the
volume and distribution of the traffic
at the moment.
Datamation (February 15, 1995)
Another thing to consider is that ATM
requires an active switch in the middle
of all the nodes, whereas the Fast
Ethernet standard can use a simple
repeater.
LAN Times (November 23, 1992)
A network using the active switches
responds to changing bandwidth and
routing conditions more quickly than a
passive-switch network.
Government Computer News (April 29,
1988)

4 In connection with this point, we note applicant’s remark that
“because the mark is associated with hardware and software
products and products that bundle both hardware and software
other than Applicant’s ‘switch’ products, the ACTIVE SWITCH mark
is suggestive...” (brief, p. 6)
Ser No. 75/366,259
6
The last-referenced article also refers to the switches as
“handl[ing] mixed voice, data, facsimile, image and
digitized video traffic.” As the Examining Attorney notes,
applicant’s products, according to applicant, “enable the
transfer of voice, video and data across computer
networks.” (brief, p. 9)
The evidence of record convinces us that the term
“active switch” has a recognized meaning in the computer
networking field. A purchaser encountering ACTIVE SWITCH
for applicant’s computer networking hardware and software
would be immediately informed that the products featured
active switches.
As pointed out by the Examining Attorney, it is
irrelevant that applicant’s goods may include other types
of products that are not switches. In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982). Further, the fact that terms may
have different meanings in other contexts is not
controlling on the question of mere descriptiveness. In re
Bright-Crest, Ltd., supra.
In view of the above, the term ACTIVE SWITCH, if used
in connection with applicant’s computer hardware and
computer software for operating computer networking
equipment, would be merely descriptive thereof.
Ser No. 75/366,259
7
Decision: The refusal to register is affirmed.
T. J. Quinn
C. E. Walters
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/366,259
8