Petroleum Communi-cations, Inc.

Trademark Trial and Appeal Board

May 15, 2001

No. 75613912 (T.T.A.B. May. 15, 2001)

5/15/01
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Petroleum Communications, Inc.
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Serial No. 75/613,912
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John S. Egbert of Harrison & Egbert for Petroleum
Communications, Inc.
Andrea Koyner Nadelman, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
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Before Simms, Seeherman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 28, 1998, Petroleum Communications, Inc.
(applicant) filed a trademark application to register the
mark FIBERWEB for services identified as “providing
telecommunications services in the oil and gas industry,
namely, telephone communication, cellular telephone
services and electronic paging” in International Class 38.1
1 Serial No. 75/613,912. Applicant originally claimed a date of
first use and first use in commerce of October 1998. However,
after the Examining Attorney refused to register the mark on the
ground that applicant had not used the mark in commerce prior to
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/613,912
2
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the services, is
merely descriptive. 15 U.S.C. § 1052(e)(1).
The Examining Attorney’s position is that the mark
FIBERWEB “immediately, and without conjecture or
speculation, describes a significant feature or
characteristic of applicant’s services, namely, that they
are telecommunication services that are provided through a
fiber web.” Brief at 7. The Examining Attorney relies on
dictionary definitions, NEXIS printouts and applicant’s
literature to support her position.
First, the term “fiber” is defined as “a shortened way
of saying ‘fiber optics.’” Newton’s Telecom Dictionary
(1998), 294. A “web” refers to “a complex, interconnected
structure or arrangement: a web of telephone wires.” The
American Heritage Dictionary of the English Language, (3rd
Ed. 1992).
the filing date of the application, applicant amended the
application to request registration under Section 1(b) of the
Trademark Act, alleging a bona fide intent to use the mark in
commerce. See “Trademark Law Treaty Implementation Act Changes,”
64 FR 48899 (September 8, 1999); Exam Guide No. 3-99 (October 30,
1999), § III.C.5.
Ser. No. 75/613,912
3
Second, the Examining Attorney has submitted
LEXIS/NEXIS articles that show that the term “fiber web”
(highlighted in bold below) “has a recognized meaning
within the communications industry.” Brief at 4.
The fear of some cable operators and consumer groups
is that the telephone industry will lean on
ratepayers, a captive audience for local phone
service, to build the expensive fiber web. Bergen
Record, August 27, 1993, p. C01.
Still, the widespread fiber web will provide a
platform capable of delivering “plain old television
services,” he said. “With the cable companies moving
into telephone company territory, every telephone
company has to do something in defense. The analyst
community views it as a positive move.” San Diego
Business Journal, November 15, 1993, § 1, p. 1.
But both GTE and Pacific Bell, along with local phone
companies in other states that plan to dive into the
video business, face a struggle to line up programming
to send over their fiber webs. Pacific Bell has
announced no programming deals since its announcement
last November that it would spend $16 billion over the
next 7 years to deliver video services to 5 million
homes. Los Angeles Times, May 25, 1994, part D, p. 1.
Within a few years, meanwhile, Dimension Cable is
planning to use its high-capacity fiber web to carry a
broad range of voice, data and video signals,
spokesman Ivan Johnson said. Though Teleport is
positioned to offer local phone service, Dimension may
eventually offer some combination of cable-TV,
computer data-line or phone service, Johnson said.
Phoenix Gazette, April 6, 1995, A12.
Competitive access providers have arisen recently. By
hiring a CAP, corporate clients sometimes slash phone
bills by skirting the fiber web and switches of
regional bells such as U S West. Denver Business
Times, November 17, 1995, p. A26.
Ser. No. 75/613,912
4
A statewide electric authority wants to link its 48
members, including Marietta, through a $40 million
fiber web. The network proposed by the Municipal
Electric Authority of Georgia (MEAG Power) would
provide not only an in-house communication system, but
a springboard to the world. “Marietta’s just the
vanguard of other municipalities that want to offer
some kind of telecommunications services.” Atlanta
Journal and Constitution, May 30, 1996, p.2B.
Two other articles also show use of the terms “fiber” and
“web” in the communications industry.
Sprint and MCI are the big dogs in long-distance, but
they are struggling to connect their vast web of fiber
to customers in local markets. Kansas City Star,
January 14, 2000, p. C1.
As the world becomes increasingly wired for the
Internet, it’s become more important for companies to
keep track of the growing web of fiber that is in
place. The Columbian, January 6, 2000, p. C1.
Finally, the Examining Attorney relies upon
applicant’s literature, which clearly refers to applicant’s
plans to provide telecommunication services through a fiber
optic cable.
Operators in the Gulf need the broadband coverage that
only fiber can deliver. A multi-connection fiber
optic will provide a high level of reliability, broad
bandwidth and solid availability for users.
FiberWeb – Subsea Fiber Optic Network in Late 1999.
Due in late 1999, this 750 mile subsea fiber optic
network will provide all digital, high-speed voice,
data and video from offshore to the world.
Based on this evidence, the Examining Attorney
concluded that the term FIBERWEB is merely descriptive in
Ser. No. 75/613,912
5
relation to applicant’s telecommunication services because
the purchasing public will immediately comprehend the
meaning of the term in relation to the services.
Applicant disagreed with the Examining Attorney’s
conclusion and argued that the term FIBERWEB does not
immediately suggest to the consumer what the term means,
but rather it requires “[a]n exercise of imagination,
cognition, mental processing or gathering of further
information” for consumers “to readily perceive the
significance of the mark.” Brief at 3. While admitting
that “the word ‘FIBER’ could be a descriptive term” and
that “the word ‘WEB” could be a descriptive term,”
applicant alleges that the “mere combination of ‘FIBER’ and
‘WEB’ does not convey the exact nature of the goods.”
Reply Brief at 2.2 Applicant further argues that the
LEXIS/NEXIS printouts are not relevant because they show
usage by newspaper writers, not purchasers, and that there
is no evidence that “anyone has used or is using ‘FIBERWEB’
descriptively, in respect of the communication services of
the Applicant.” Brief at 4. Furthermore, applicant
discusses its prior application, which is now
2 While we will take judicial notice of the definition applicant
submitted with its Reply Brief, we will not consider the
LEXIS/NEXIS printouts containing articles that were not
previously of record. 37 CFR 2.142(d).
Ser. No. 75/613,912
6
abandoned, but which had been allowed, for the same mark
and services, as additional support for its position that
its mark is not descriptive.
After the refusal was made final, this appeal
followed. Applicant and the Examining Attorney3 have filed
briefs. An oral hearing was not requested. We affirm the
Examining Attorney’s refusal to register applicant’s mark.
We begin our analysis by noting that a mark is merely
descriptive if it immediately describes the ingredients,
qualities, or characteristics of the goods or services or
if it conveys information regarding a function, purpose, or
use of the goods or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). A term
may be descriptive even if it only describes one of the
qualities or properties of the goods or services. In re
Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether
the mark is descriptive. Abcor, 588 F.2d at 814, 200 USPQ
at 218.
The Examining Attorney’s evidence demonstrates that at
least some of applicant’s telecommunication services will
3 The current Examining Attorney was not the original Examining
Attorney.
Ser. No. 75/613,912
7
be performed over a fiber optic network. The Examining
Attorney’s dictionary definition identifies “fiber” as a
shortened way of saying fiber optic. Applicant itself uses
this shorthand when referring to its services (“Operators
in the Gulf need the broadband coverage that only fiber can
deliver”). The term “web,” defined as “a complex
interconnected structure or arrangement,” would appear to
be descriptive of applicant’s “750 mile subsea fiber optic
network.”
In order to determine whether a term is descriptive,
we must consider the mark as a whole. In this case, we do
not have to speculate as to whether the individual terms
retain their descriptive qualities when they are combined.
The LEXIS/NEXIS evidence erased any doubts we may have had
concerning the descriptiveness of the term. That evidence
shows that the term “fiber web” is a term used in the
communications industry. Applicant’s literature claims
that its “network will provide all digital, high-speed
voice, data and video.” The LEXIS/NEXIS evidence shows use
of the term “fiber web” with voice, data and video
services. For example, Dimension cable plans “to use its
high-capacity fiber web to carry a broad range of voice,
data, and video signals.” These services would include the
telephone communication services identified in applicant’s
Ser. No. 75/613,912
8
application. GTE and Pacific Bell, along with local phone
companies are also planning to dive into the video
business, and send programming “over their fiber webs.”
The Municipal Electric Authority of Georgia is linking its
members through a fiber web and one of its members
(Marietta) wants “to offer some kind of telecommunications
service.” Long distance providers, MCI and Sprint, are
described as having “webs of fiber.”
Therefore, when viewed in the context of applicant’s
telecommunication services in the oil and gas industry, the
term “FIBERWEB” describes a function, feature or
characteristic of the services, i.e., that the
telecommunication services are conducted over a fiber web
or a web of fiber.
Finally, we briefly discuss three of applicant’s
arguments. First, applicant emphasizes that the terms
“fiber” and “web” have multiple meanings. While this is
obviously true, we are only concerned with the meaning the
terms may have in relation to applicant’s telecommunication
services. We do not view the terms in the abstract.
Viewed in this context, the Examining Attorney’s evidence
supports the finding that the term FIBERWEB would be
descriptive.
Ser. No. 75/613,912
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Second, applicant now points out that no story has the
words “fiber” and “web” “put together as in the present
mark ‘FIBERWEB’”. Reply Brief at 5. The absence of a
space does not convert a descriptive term into a suggestive
term. Abcor. In this case, the commercial impressions are
the same with or without the space.
Also, applicant refers to a prior allowance of a now-
abandoned application for the same mark and services as
evidence that reasonable minds could differ about the
descriptiveness of applicant’s mark. We do not have the
record of that case before us, including whether the prior
intent-to-use application contained the same literature
that applicant submitted with this application. But in the
present case, there is clear evidence that leaves us with
no doubt that the mark describes applicant’s services.
Under these circumstances, we must affirm the Examining
Attorney’s refusal to register applicant’s mark.
Decision: The Examining Attorney’s refusal to
register on the ground that the mark FIBERWEB is merely
descriptive of the involved services is affirmed.