Hubbell Inc.

Trademark Trial and Appeal Board

Dec 27, 2000

No. 75384473 (T.T.A.B. Dec. 27, 2000)

Hearing: Paper No. 13
July 27, 2000 GFR
12/27/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hubbell Incorporated
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Serial No. 75/384,473
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Roberta S. Bren and Kathleen Cooney-Porter of Oblon,
Spivak, McClelland, Maier & Neustadt for Hubbell
Incorporated.
Lisa W. Rosaya, Trademark Examining Attorney, Law Office
112 (Janice O'Lear, Managing Attorney).
_______
Before Seeherman, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant seeks registration of the mark set forth
below for “surge suppression products, namely, surge
suppressors, electrical receptacles, modular panels,
panels, surge blocks and plug strips,” in International
Class 9.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/384,473
2
The examining attorney required applicant to enter a
disclaimer of exclusive rights in the term "spikeshield."
When applicant demurred, the Examining Attorney made the
requirement final under Sections 2(e)(1) and 6(a) of the
Trademark Act, 15 U.S.C. §§1052(e)(1) and 1056(a), noting
that applicant's failure to comply with the requirement
provided basis for refusal of registration.
Applicant then filed an appeal traversing the
requirement. Briefs were filed and an oral argument was
held. We affirm the Examining Attorney's refusal of
registration, in the absence of a disclaimer.
The examining attorney contends that "spike" and
"shield" are descriptive terms when used in conjunction
with applicant's goods; that applicant's merging of the
terms into a compound word does not result in a new term
that is ambiguous, incongruous or, under any theory,
registrable as a mark for applicant's goods; and that the
term "spikeshield" is not integrated with the design
element of applicant's mark so as to form a unitary
composite. To support her position, the Examining Attorney
has made of record dictionary definitions of both "spike"
and "shield." The Examining Attorney has also made of
record results obtained from a search of the Nexis
computerized database of publications, showing use of the
Ser. No. 75/384,473
3
terms "spike" and "shield" in conjunction with devices that
shield machinery or electronic equipment from power surges
or spikes.
Before considering applicant's arguments against the
disclaimer requirement, we consider applicant's evidentiary
objections. First, applicant has objected to the Examining
Attorney's reliance on a definition of the term "spike"
retrieved from an on-line dictionary that apparently does
not exist in printed form. Second, applicant has objected
to the Examining Attorney's report, contained in her brief,
of the results of a search of the Office's database of
registered and pending marks. The reported results relate
to the incidence of registrations for marks containing the
word "shield" either on the Supplemental Register or on the
Principal Register based upon a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act.
Applicant's objection to the on-line dictionary
definition of "spike" is not well taken. Applicant asserts
that the definition is not a fit subject for judicial
notice and was not introduced in accordance with the
Office's Internet Usage Policy. The Examining Attorney,
however, has not asked the Board to take judicial notice of
the on-line dictionary definition of "spike." Rather, the
definition was properly introduced as evidence during
Ser. No. 75/384,473
4
examination of the application. While applicant apparently
disputes the probative value of an on-line dictionary that
does not exist in printed form, introduction of the
definition, in the manner in which it was submitted by the
Examining Attorney, is contemplated both by this Board's
decision in In re Total Quality Group Inc., 51 USPQ2d 1474
(TTAB 1999) and the Office's Internet Usage Policy.
In Total Quality the Board expressed reluctance to
take judicial notice of an on-line dictionary definition
that did not exist in printed form, "after an ex parte
appeal has been filed," and noted that such evidence should
have been made of record prior to any appeal, so that the
"applicant would have had the opportunity to check the
reliability of the evidence and/or timely offer rebuttal
evidence." Id. at 1476. In this case, the Examining
Attorney made the evidence of record prior to appeal and
provided the applicant with the URL, which allowed
applicant to check the definition.1 Also, applicant has not
explained the basis for its assertion that the evidence
does not comply with the Office's Internet Usage Policy.2
1 The Board readily found the definition via the provided URL.
2 That policy provides that electronic-only documents are
considered original publications. In other words, the fact that
an electronic document may not have its origin in a printed
original does not bar consideration of the electronic document.
Ser. No. 75/384,473
5
We decline applicant's request to not consider the on-
line dictionary definition of "spike." In any event, we
note that even were we to grant the request, the Examining
Attorney submitted copies of definitions of "spike" from
two printed dictionaries covering computer terms, which we
find fit subjects for judicial notice. We grant the
Examining Attorney's request that we take judicial notice
of these definitions.
We find applicant's objection to the Examining
Attorney's report on the results of her search of Office
records well taken. Accordingly, we have given no
consideration to the report that many marks incorporating
the term "shield" are registered only on the Supplemental
Register or on the Principal Register under Section 2(f) of
the Trademark Act.
We are left, then, with the question of whether the
Examining Attorney has established the descriptiveness of
“spikeshield” when used in conjunction with applicant’s
goods. In resolving that question, we adopt the point of
view of the average or ordinary consumer in the class of
prospective purchasers for applicant’s goods. See In re
Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859,
1861 (Fed. Cir. 1987). Moreover, the Examining Attorney
must have established that “spikeshield” immediately
Ser. No. 75/384,473
6
describes an ingredient, quality, characteristic or feature
of applicant’s goods or conveys information regarding the
nature, function, purpose or use of the goods. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978); and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987).
The record includes the following definitions of
"spike" and "shield":
spike A momentary, sharp surge in voltage, usually on the
mains. Prentice Hall's Illustrated Dictionary of Computing
623 (3rd ed. 1998).
spike A sudden pulse of extra voltage, lasting a fraction
of a second, which can cause the computer to crash and
damage files or computer components if there is no surge
protector on the line. A burst of extra voltage that lasts
longer, perhaps several seconds, is called a surge.
http://www.currents.net/resources/dictionary/definition.pht
ml?lookup=4784
shield 3. …c. Electronics. A structure or arrangement of
metal plates or mesh designed to protect a piece of
electronic equipment from electrostatic or magnetic
interference.
Excerpts from noteworthy Nexis references include the
following:
…a spike can literally fry your hardware. The surge
protection provided by most UPS units will also shield a PC
from spikes. WINDOWS Magazine (December 1, 1997).
…A surge-protection strip shields your PC from nasty power
spikes…. PC World (June, 1997).
…The shield takes most of the energy from the voltage spike
and delivers it to the ground. EC&M Electrical
Construction & Maintenance (May, 1996).
Ser. No. 75/384,473
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…3 new power directors shield PCs from line spikes, surges,
noise. PC Week (May 1, 1984).
…incorporates a unique three-stage design to shield
computers from high-speed spikes and large power surges.
Computer Decisions (March, 1984).
We find the dictionary definitions and Nexis evidence
sufficient to establish that both "spike" and "shield" are
descriptive terms when used on or in connection with
applicant's goods, and have been for many years.3 Further,
we agree with the Examining Attorney that the compound word
formed by merging the two terms is just as descriptive.
The compound is not vague or ambiguous4; it does not
present a double entendre or an incongruity. Rather, it
would immediately be perceived by consumers as a
combination of a noun and an adjective and would
immediately inform consumers that the goods are, or
3 We find unpersuasive applicant's argument that because of the
plethora of meanings for the term "shield" there is no one
meaning clearly applicable to the term as used by applicant. Nor
are we persuaded, by the existence of third-party registrations
incorporating the term "shield," without disclaimer. Many of the
marks referenced by applicant are unitary, so that disclaimer of
the "shield" portion would be inappropriate. Also, as the
Examining Attorney has observed, only one of the referenced
registrations covers goods similar to applicant's goods. Thus,
the third-party registrations are simply not probative on the
question of descriptiveness of "shield" as used in connection
with applicant's goods.
4 We are not persuaded otherwise by applicant's argument that its
goods do not "spike shields" or "shield spikes."
Ser. No. 75/384,473
8
include, a shield (the noun) of a type that provides
protection from electrical spikes (the adjective).
We agree with the Examining Attorney's argument that
the absence of any instances of use of the compound word in
the Nexis evidence is not determinative of the question of
descriptiveness, as it might be of a question of
genericness. It is well settled that the fact that an
applicant may be the first or only user of a term is not
determinative where the term sought to be registered has a
merely descriptive connotation. In re Eden Foods Inc., 24
USPQ2d 1757, 1761 (TTAB 1992).
We find that the average consumer of applicant's surge
suppressor products, i.e., any purchaser with a need for an
electrical receptacle, plug strip or the like to protect or
"shield" a piece of electronic equipment from a surge or
"spike" in current, will have no need to engage in thought
or an exercise in imagination to discern, when faced with
applicant's mark and goods, the nature or function of the
goods.
Having found that "spikeshield" is descriptive if used
on or in connection with applicant's goods, we turn to the
question of whether the word is so integrated with the
design element of applicant's mark that a unitary composite
results and, therefore, entry of a disclaimer is
Ser. No. 75/384,473
9
inappropriate. Applicant contends that the small triangles
that appear above each letter "i" in "spikeshield" repeat
the initial triangle design that introduces the word
portion of the composite. The Examining Attorney, in
contrast, asserts that the smaller triangles will be viewed
solely as the "dots" over each letter "i" and not as part
of a repetitive design. We agree with the Examining
Attorney's assessment of the mark. We note that the
"initial" triangle is open, while those over each letter
"i" are solid. Further, the line emanating from the "base"
of the initial triangle and underscoring the word
spikeshield does not turn up as it passes underneath each
"i," so as to suggest any connection with the triangles
above. In short, we do not view the mark as presenting a
repetitive design that is integrated with the word.
Decision: The refusal of registration, in the absence
of a disclaimer of "spikeshield," is affirmed. In
accordance with Trademark Rule 2.142(g), this decision will
be set aside and the application will be returned to the
Examining Attorney to approve the mark for publication for
opposition if applicant, within 30 days of the date of this
decision, submits a proper disclaimer of "spikeshield."