Siemens Stromberg-Carlson

Trademark Trial and Appeal Board

Nov 19, 1999

No. 75048293 (T.T.A.B. Nov. 19, 1999)

Paper No. 21
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 19,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Siemens Stromberg-Carlson
________
Serial No. 75/048,293
_______
Lawrence E. Abelman of Abelman, Frayne & Schwab for
applicant.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Quinn, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Siemens Stromberg-
Carlson to register the mark FAST FEATURE PLATFORM for
“computer software and hardware used in the
telecommunications field to deploy features of a switch.”1

1 Application Serial No. 75/048,293, filed January 25, 1996,
alleging a bona fide intention to use the mark in commerce.
Applicant’s briefs indicate that the applicant is now Siemens
Information and Communication Networks, Inc. A check of the
Assignment Branch records of the Office show that no assignment
or name change document has been recorded in connection with this
Ser No. 75/048,293
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 used in connection
with applicant’s goods, would be merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.2 An
oral hearing was not requested.
Applicant contends, in urging that the refusal be
reversed, that the applied-for mark is, at worst, just
suggestive of the goods. Applicant argues that the mark is
subject to a variety of meanings and, in this connection,
points to the different interpretations of the mark set
forth by the Examining Attorney during prosecution as

application. In order to ensure that a registration issues in
the correct name, the appropriate documents should be filed with
the Office.
2 Applicant, in its brief, objected to the evidence accompanying
the Office action dated March 20, 1998 wherein the Examining
Attorney denied applicant’s request for reconsideration which was
filed with the notice of appeal. Applicant contends that the
evidence is untimely, citing Trademark Rule 2.142(d).
Although the record in an application should be complete prior
to the filing of an appeal, an applicant filing a request for
reconsideration runs the risk that the Examining Attorney, on
remand, will supplement the record. Section 1204 of the
Trademark Trial and Appeal Board Manual of Procedure (TBMP)
states, in pertinent part, the following: “If the Examining
Attorney, upon consideration of a request for reconsideration
(made with or without new evidence), does not find the request
persuasive, and issues a new final or nonfinal action, the
Examining Attorney may submit therewith new evidence directed to
the issue(s) for which reconsideration is sought.” Accordingly,
Ser No. 75/048,293
3
evidence that the significance of the mark is deduced only
through a multi-stage reasoning process. In sum, according
to applicant, the word combination FAST FEATURE PLATFORM is
inventive, and the alliteration in the mark reinforces the
likely perception of the wording as a trademark.
The Examining Attorney maintains that the mark is
merely descriptive. The Examining Attorney, relying on
dictionary definitions, asserts that the terms “feature”
and “platform” have specific meanings in the
telecommunications field, and that the mark describes
computer hardware and software (i.e., a “platform”) capable
of deploying switch features in a fast manner. In denying
a request for reconsideration (Office action dated March
20, 1998), the Examining Attorney articulated the refusal
as follows:
“Fast feature platform is descriptive
given the context of its use. As was
noted in an earlier office action,
“platform” is a generic term describing
a computer hardware and software
operating system. Applicant intends to
use the mark on computer software and
hardware.
“Feature” is a term often used in
conjunction with switches.
Telecommunication switches typically
have different features. (See material
from the Lexis/Nexis Research

applicant’s objection is overruled, and the evidence has been
considered in reaching a final decision.
Ser No. 75/048,293
4
Database). “AIN” capability involves
us of signal and packet switches.
Applicant’s product will bring AIN
capability to smaller carriers through
use of the fast feature platform. This
computer operating system will deploy
features of AIN switches. Presumably,
the deployment will be swift.
Also of record are dictionary definitions of the term
“fast,” “switch” and “AIN (Advanced Intelligent Network),”
as well as excerpts retrieved from the NEXIS database. One
of the excerpts is about applicant’s goods, and the other
excerpts show uses of “feature(s) of the switch” or
“feature(s) to the switch.”
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods.
In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). A mark is
descriptive if it "forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the
goods." Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976) (emphasis
added). See also: In re Abcor Development Corp., 616 F.2d
525, 200 USPQ 215 (CCPA 1978). Moreover, in order to be
descriptive, the mark must immediately convey information
as to the ingredients, qualities or characteristics of the
goods with a "degree of particularity." Plus Products v.
Ser No. 75/048,293
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Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-
1205 (TTAB 1981). See also: In re Diet Tabs, Inc., 231
USPQ 587, 588 (TTAB 1986); Holiday Inns, Inc. v. Monolith
Enterprises, 212 USPQ 949, 952 (TTAB 1981); and In re TMS
Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978).
Applicant’s goods would appear to be highly technical
telecommunications software and hardware. In the one NEXIS
article specifically about applicant’s goods, the goods are
described as “essentially an intelligent peripheral
networked to multiple [Digital Central Offices].”
Applicant has described its goods as “hardware and software
[which] enable[s] carriers to provide added
telecommunication services to their clientele, such as call
forwarding options, call screening options, and rerouting
of incoming calls” and that the “hardware and software
deploy, operate and manage these applications.” (brief, p.
6)
Given the dictionary definitions of record, the
individual words comprising applicant’s mark have commonly
understood meanings. We do not believe, however, that the
specific combination of these words results in a
designation which, when considered in its entirety, is
merely descriptive of applicant’s goods. That is to say,
applicant’s mark, as proposed to be used in connection with
Ser No. 75/048,293
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applicant’s telecommunications software and hardware, does
not convey an immediate idea about the goods with any
degree of particularity. As pointed out by applicant, this
is borne out by the slightly different interpretations of
the meaning of applicant’s mark which have been offered by
the Examining Attorney. We tend to agree with applicant
that its mark is capable of different meanings, and that
one seeing the mark on the goods would not be sure which
word “fast” is meant to modify. In sum, the significance
of the mark as a whole, when applied to the goods, is vague
and unclear, and we find that the mark is suggestive of the
goods.
The prohibition against registration of merely
descriptive designations is intended to prevent one party
from precluding all others from fair use of descriptive
terminology in connection with goods which are described
thereby. Nothing in the record suggests that others in the
telecommunications field have used or would need to use the
three-word combination FAST FEATURE PLATFORM to describe
their goods.
The Board has noted on a number of prior occasions
that there is a thin line of demarcation between a
suggestive and a merely descriptive designation. The
present case is a close one, and we have doubts about the
Ser No. 75/048,293
7
“merely descriptive” character of applicant’s mark. In
such cases, doubts are to be resolved in applicant’s favor
and the mark should be published, thus allowing a third
party to file an opposition and develop a more
comprehensive record. See, e.g., In re Atavio, 25 USPQ2d
1361 (TTAB 1992); In re Morton-Norwich Products, Inc., 209
USPQ 791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.
T. J. Quinn
B. A. Chapman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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