IMAKE Software and Services, Inc.

Trademark Trial and Appeal Board

Mar 6, 2000

No. 75321936 (T.T.A.B. Mar. 6, 2000)

Paper No. 8
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 6, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re IMAKE Software and Services, Inc.
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Serial No. 75/321,936
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Aaron B. Retzer of Epstein, Edell & Retzer for applicant.
Russ Herman, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Quinn, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by IMAKE Software and
Services, Inc. to register the mark DIGITAL BROADCAST
STUDIO for “integrated computer software and hardware for
single-casting, multi-casting or broadcasting of digital
audio program materials for use in delivery of guaranteed
digital media over a global computer information network.” 1

1 Application Serial No. 75/321,936, filed July 10, 1997, based
on an alleged bona fide intention to use the mark in commerce.
Ser No. 75/321,936
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground 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 briefs. An oral
hearing was not requested.
Applicant argues, in urging that the refusal be
reversed, as follows (brief, p. 3):
It is submitted that, from an out-of-
context perspective, such a consumer
would not recognize the specific nature
of goods that are being offered by
applicant under “DIGITAL BROADCAST
STUDIO” which does suggest a place
(such as a television studio) for
broadcast of (presumably) digital
programming, but does not describe
integrated computer software and
hardware and does not, without
imagination, allow one to unambiguously
spring to an association with something
so specific as “integrated software and
hardware for the delivery of guaranteed
digital media.”
Would a consumer, after being appraised
of the specifics of applicant’s goods,
be likely to see a relationship between
the mark and the goods? Of course; but
he or she would not be as likely to see
that relationship beforehand, and would
be likely to comment as to how cleverly
suggestive the mark is. Applicant
respectfully submits that under such
circumstances, a mark cannot be deemed
merely descriptive.
Ser No. 75/321,936
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Applicant goes on to contend that the term “studio”
generally is used to describe a place or setting in which
creative work is done, and that the presence of the term in
applicant’s mark therefore is suggestive of a creative
solution to the problems associated with broadcasting
guaranteed digital media. Further, applicant criticizes
the NEXIS evidence relied upon by the Examining Attorney,
contending that none of the uses of “digital broadcast
studio” is in connection with applicant’s type of goods.
The Examining Attorney maintains that the mark sought
to be registered is merely descriptive because “applicant’s
integrated software/hardware package is used either as a
functional high-tech replacement for a digital broadcast
studio facility or as a link in the transmission of
broadcast material by a digital broadcast studio.” (brief,
p. 3) The Examining Attorney contends that the mark simply
“names the type of commercial establishment in which
applicant’s goods are used.” (brief, p. 5) The Examining
Attorney has submitted a dictionary definition of the term
“studio,” of which we take judicial notice. Also of record
are five excerpts retrieved from the NEXIS database which
show, according to the Examining Attorney, that “digital
broadcast studio” is a recognized term of art which
immediately conveys a descriptive significance.
Ser No. 75/321,936
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It is well settled that a term is considered to be
merely descriptive of goods, 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. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods 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, contrary to the gist of some
of applicant’s remarks, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The term “studio” is defined, in relevant part, as “a
room or set of rooms specially equipped for broadcasting
radio or television programs.” Random House Unabridged
Dictionary (2d ed. 1987) Although, as applicant suggests,
the term “studio” may have a variety of meanings,
purchasers would be most likely to ascribe to the term the
meaning set forth above; that is, a room specially equipped
for digital broadcasting. We say this in view of the
Ser No. 75/321,936
5
specific nature of the goods to which the mark is applied,
as well as how it is used in the context of applicant’s
mark in its entirety.
When the mark is considered as a whole, we find that
the mark’s meaning would be that shown by the NEXIS
articles, that is, as a studio for digital broadcasting.
The term DIGITAL BROADCAST STUDIO, as applied to
applicant’s software and hardware, immediately describes,
without conjecture or speculation, a significant
characteristic of applicant’s goods, namely, that the
computer software and hardware for broadcasting of digital
audio programs are used in and by digital broadcast
studios. To the sophisticated and technically
knowledgeable purchasers and users of applicant’s goods,
who no doubt would be familiar with the trade’s use of the
term “digital broadcast studio” in connection with digital
broadcasting, no imagination would be necessary in order
for such persons to perceive precisely the merely
descriptive significance of the term as it relates to a
significant application of applicant’s software and
hardware. See: Towers v. Advent Software Inc., 913 F.2d
942, 16 USPQ2d 1039 (Fed. Cir. 1990)[THE PROFESSIONAL
PORTFOLIO SYSTEM is descriptive of computer-based portfolio
valuation systems]; In re Intelligent Instrumentation Inc.,
Ser No. 75/321,936
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40 USPQ2d 1792 (TTAB 1996)[VISUAL DESIGNER is descriptive
of computer programs for controlling the acquisition of
data from measurement devices for the purposes of analysis,
display, testing and automatic control]; and In re Time
Solutions Inc., 33 USPQ2d 1156 (TTAB 1994)[YOUR HEALTH
INSURANCE MANAGER is descriptive of software programs for
personal record keeping and processing of medical records,
health insurance and claims].
Decision: The refusal to register is affirmed.
T. J. Quinn
C. E. Walters
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/321,936
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