SVSi

Trademark Trial and Appeal Board

Aug 25, 2014

No. 85539240 (T.T.A.B. Aug. 25, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: August 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SVSi
________

Serial No. 85539240
_______

Angela Holt and Kristi M. Wilcox of Bradley Arant Boult Cummings LLP for
SVSi.

Alec Powers, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
_______

Before Quinn, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, SVSi, filed an application to register as a mark on the
Principal Register the designation NETWORKED AV in standard characters
for “electronic transmitters and receivers for Video over IP network” in
International Class 9.1

1 Serial No. 85539240 was filed on February 10, 2012 under Section 1(a) of the
Trademark Act, asserting January 11, 2012 as a date of first use of the term as a
mark anywhere and in commerce.

Serial No. 85539240

2
The Trademark Examining Attorney refused registration on the
ground that the proposed mark is merely descriptive under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1). After applicant amended its
application to seek registration on the Supplemental Register on November
26, 2012, the Examining Attorney refused registration, under Section 23 of
the Trademark Act, 15 U.S.C. § 1091, on the ground that Applicant’s
proposed mark is generic and, thus, incapable of identifying Applicant’s goods
and distinguishing them from those of others. When the refusal was made
final, Applicant appealed. Applicant and the Examining Attorney have filed
briefs on the issue under appeal.
In support of the refusal to register, the Examining Attorney made of
record the following dictionary definition of “network” – Computer Science A
system of computers interconnected by telephone wires or other means in
order to share information. Also called net;2 and AV – audio-visual.3 Based
upon these definitions, NETWORKED AV may be defined, according to the
Examining Attorney, as audio-visual equipment for use on a computer
network. In addition, the Examining Attorney submitted with his three
Office Actions articles retrieved from various Internet web pages. Certain
excerpts from these articles follow (emphasis supplied by the Examining
Attorney):

2 Education.yahoo.com/reference/dictionary, submitted with May 25, 2012 Office
Action.
3 Id.
Serial No. 85539240

3
itreviews.com
Onkyo Tx-NR509 networked AV receiver review; 3D-ready
networked AV receiver;4

amazon.com
Pioneer AS-WL300 WiFi Adapter for 2011 Networked AV
Receivers - VSX-1021;5

odfeed.net
The Networked AV Podcast
From Sound and Video Contractor Magazine, the Networked
AV Podcast features interviews with AV industry leaders
discussing recent installations using networked audio, video and
communications and the technology behind today’s networked
AV hardware;6

ziogiorgio.com
Stewart Audio and Attero Tech showcase new networked AV
products at ISE 2012. These new product introductions are…a
commitment to bringing the highest quality networked AV
products to market….;7

analog.com
Yamaha/Blackfin Converge on Prototype for a Networked AV
Center;8

wwstereo.com
Harman Kardon AVR 1510 5.1 Channel Networked AV
Receiver;9

clasifimas.com
STRDA5500ES Home cinema 7.1ch Networked AV Receiver
HD sound DLNA;10

residentialsystems.com
All three companies point out that their transmitters can be
connected to the zone outputs of networked AV receivers to

4 Id.
5 Id.
6 Id.
7 Id.
8 Submitted with June 24, 2013 Office Action.
9 Id.
10 Id.
Serial No. 85539240

4
create a relatively sophisticated multiroom-audio system;11

hometheatertips.com
Network Your Home Theater
Whether for devices like AppleTV, Blu-ray players, game
consoles, home theater PC’s infra-red repeater systems,
networked audio/video baluns, or any number of as yet
unforeseen home theater devices, you can bet that eventually
you’ll find that “killer app” for net connectivity in the living
room;12

wyrestorm.com
The AMP-001-010 combines networked AV, local audio input
and 2x25w Class D amplification, with the distribution benefits
of single wire HDBase;13 and

appliedvideo.com
Networked AV
AVT Vendor Partner Links
Video Production and Broadcast
Networked AV Systems
Video Streaming and Conferencing
Digital Signature
Product Specials.14

A mark is a generic name if it refers to the class, genus or category of
goods and/or services on or in connection with which it is used. See In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). The test for determining
whether a mark is generic is its primary significance to the relevant public.
See Section 14(3) of the Act, 15 U.S.C. § 1064. See also In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic

11 Id.
12 Id.
13 Id.
Serial No. 85539240

5
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and
H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 228
USPQ at 530. The Examining Attorney has the burden of establishing by
clear evidence that a proposed mark is generic and thus unregistrable. See In
re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987). Evidence of the relevant public’s understanding of a
term may be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers, and other publications. See
In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961
(Fed. Cir. 1985).
In the case of In re American Fertility Society, supra, our primary
reviewing court stated that if the PTO can prove “(1) the public understands
the individual terms to be generic for a genus of goods and species; and (2)
the public understands the joining of the individual terms into one compound
word to lend no additional meaning to the term, then the PTO has proven
that the general public would understand the compound term to
refer primarily to the genus of goods or services described by the individual
terms.” (Id. at 1837.)
In the case of In re Dial-A-Mattress Operating Corp., supra, 1-888-M-A-
T-R-E-S-S for “telephone shop-at-home retail services in the field of
mattresses,” the court further clarified the test as follows (Id. at 1810):

14 Id.
Serial No. 85539240

6
Where a term is a “compound word” (such as “Screenwipe”), the
Director may satisfy his burden of proving it generic by
producing evidence that each of the constituent words is generic,
and that “the separate words joined to form a compound have a
meaning identical to the meaning common usage would ascribe
to those words as a compound.” In re Gould Paper Corp., 834
F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir. 1987).
However, where the proposed mark is a phrase (such as “Society
for Reproductive Medicine”), the board “cannot simply cite
definitions and generic uses of the constituent terms of a mark”;
it must conduct an inquiry into “the meaning of the disputed
phrase as a whole.” In re The Am. Fertility Soc'y, 188 F.3d at
1347, 51 USPQ2d at 1836. The In re Gould test is applicable
only to “compound terms formed by the union of words” where
the public understands the individual terms to be generic for a
genus of goods or services, and the joining of the individual
terms into one compound word lends “no additional meaning to
the term.”

Id. at 1348-49, 51 USPQ2d at 1837.

We begin by finding that that the genus of goods at issue in this case is
adequately defined by Applicant’s identification thereof. Accordingly, we find
that “electronic transmitters and receivers for Video over IP network” is the
name of a genus of goods. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses
on the description of [goods or] services set forth in the [application or]
certificate of registration”). For purposes of clarification, we hereby take
judicial notice of the following definition of “IP” – Internet Protocol: a
communications protocol for computers connected to a network, especially the
Internet, specifying the format for addresses and units of transmitted data.”15

15 Dictionary.com, unabridged, based on the Random House Dictionary, 2014. The
Board may take judicial notice of dictionary definitions, including those in online
dictionaries which exist in printed format. In re Premiere Distillery, LLC, 103
Serial No. 85539240

7
Turning to the second inquiry, the public’s understanding of the term,
the relevant public consists of the ordinary consumer interested in
transmitting and receiving audio-visual information over the Internet or
other computer network. As noted above, the evidentiary burden of
establishing that a term is generic rests with the USPTO and the showing
must be based on clear evidence. Merrill Lynch, 4 USPQ2d at 1143. Based
on this record, we find that there is clear evidence to support a finding that
the relevant public, when they consider NETWORKED AV in conjunction
with the genus of involved goods, would readily understand the term to
identify a type of electronic transmitter or receiver used to share, i.e.,
transmit or receive, video over the Internet or other computer network. The
evidence of record clearly establishes that the term AV is a shorthand name
for “audio-visual” and that the modifying term NETWORKED is the name for
devices with computing capability interconnected by telephone wires or the
Internet. Thus, the record in this case establishes that NETWORKED and
AV are generic for the recited goods. Accordingly, we must consider the effect
of combining these terms.
We find the addition of NETWORKED to AV in this case does not
create any source-identifying significance and the record clearly establishes
that the proposed mark is generic. The record shows that AV is a generic

USPQ2d 1483, 1484 (TTAB 2012); University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).

Serial No. 85539240

8
term. The record also establishes that the term NETWORKED, which
modifies AV, is also a generic term Therefore, NETWORKED AV is the
combination of two generic terms joined to create a compound,
notwithstanding the space between its component terms. See In re Eddie Z's
Blinds, 74 USPQ2d 1037, 1041-42 (TTAB 2005); and In re American Institute
of Certified Public Accountants, 65 USPQ2d 1972, 1982 n. 8 (TTAB 2003).
Thus, Gould-type evidence showing the generic nature of the two terms is
sufficient to establish that the separate terms retain their generic
significance when joined to form a compound that has “a meaning identical to
the meaning common usage would ascribe to those words as a compound.”
Gould, 5 USPQ2d at 1111-12. See also In re Wm. B. Coleman Co., 93
USPQ2d 2019 (TTAB 2010).
The circumstances of this case are similar to those in
1800Mattress.com where the Federal Circuit affirmed the Board's finding
that mattress.com is generic, because the record demonstrated others’ need to
use the term. In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d
1682 (Fed. Cir. 2009). Here, a competitive need to use “networked av” is
demonstrated by the evidence showing that such term is being used by others
as the generic name for goods, including receivers and transmitters, used to
access audio-visual signals by means of computer networks, including the
Internet. Therefore, the combination of these generic terms for transmitters
and receivers providing audio-visual signals over the Internet cannot
Serial No. 85539240

9
transform the designation into a trademark. See Wm. B. Coleman, 93
USPQ2d at 2026.
Nor are we persuaded that because Applicant demonstrates that there
is no definition of NETWORKED AV in an Internet dictionary, the term
somehow is not generic for the recited goods.16 The fact that a term is not
found in a dictionary is not controlling on the question of registrability if the
Examining Attorney can show that the term has a well understood and
recognized meaning. See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED held merely descriptive of jellies and jams).
In view of the above, the Examining Attorney has met his burden to
establish that NETWORKED AV is generic and incapable of registration for
“electronic transmitters and receivers for Video over IP network.”
Decision: The refusal to register is affirmed.

16 Applicant’s May 28, 2013 communication, Exhibit D, retrieved from techdirt.com.