Wildfire Communications, Inc.

Trademark Trial and Appeal Board

Oct 5, 1999

No. 74715185 (T.T.A.B. Oct. 5, 1999)

Paper No. 18
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/5/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Wildfire Communications, Inc.
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Serial No. 74/715,185
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Michael J. Bevilacqua of Hale and Dorr for Wildfire
Communications, Inc.
Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney)
_______
Before Hanak, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Wildfire Communications, Inc. (applicant) seeks to
register VIRTUAL INTERCOM in typed drawing form for
“computer programs for implementing a computer based
messaging system by opening a communications channel to a
remote party based upon a spoken command.” The intent–to-
use application was filed on August 14, 1995. Applicant
Ser No. 74/715,185
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disclaimed the exclusive right to use the word VIRTUAL
apart from the mark in its entirety.
The Examining Attorney refused registration pursuant
to Section 2(e)(1) of the Trademark Act on the basis that
applicant’s mark, as applied to applicant’s goods, is
merely descriptive. When the refusal to register was made
final, applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
A review of the history of this case is in order.
Initially, applicant’s goods were described simply as
follows: “Computer programs for implementing a computer
based messaging system.” In response, the Examining
Attorney made of record definitions of the word “intercom”
taken from Webster’s New Riverside University Dictionary
(1984) and Newton’s Telecom Dictionary (7th ed. 1994). The
first dictionary defined the word “intercom” as “an
intercommunication system, as between two rooms.” The
second dictionary defined the word “intercom” as follows:
An internal communication system which
allows you to dial another phone in
your building, office complex, factory
or home. There are three types of
intercom: 1. Dial: It allows you to
dial or pushbutton another extension;
2. Automatic: One phone goes off hook
and automatically dials another; and 3.
Manual: The user can manually signal
Ser No. 74/715,185
3
another phone by pushing a button for
that phone. An example is a buzzer
between a boss and a secretary.
In its brief, applicant argued that its trademark was
not merely descriptive because its “trademark is not used
on intercoms, nor on computer programs that act as or set
up intercoms or intercom-like systems.” (Applicant’s brief
page 3).
In response, the Examining Attorney argued in his
brief that the mere descriptiveness of a term is not judged
“in the abstract,” but rather is judged “in relation to the
identified goods.” (Examining Attorney’s brief page 3).
In this regard, the Examining Attorney cited In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978). The Examining Attorney then argued, correctly, that
applicant’s chosen description of goods -– computer
programs for implementing a computer based messaging system
-– was broad enough to encompass an intercom, that is, an
internal communication system.
Subsequently, applicant requested that this Board
suspend the appeal; remand the case to the Examining
Attorney; and allow applicant amend its description of
goods. This request was granted by the Board in an order
dated January 28, 1999.
Ser No. 74/715,185
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An office action dated February 26, 1991, the
Examining Attorney accepted applicant’s amended description
of goods, which, as previously noted, reads as follows:
“Computer programs for implementing a computer based
messaging system by opening a communications channels to a
remote party based upon a spoken command.” (emphasis
added). However, in this office action, the Examining
Attorney, without any explanation whatsoever, still
maintained that applicant’s mark VIRTUAL INTERCOM was
merely descriptive of applicant’s described goods. In
particular, the Examining Attorney never discussed the fact
that the very definitions of the word “intercom” submitted
by the Examining Attorney referred to an internal
communication system, whereas now applicant’s amended
description of goods made it clear that applicant’s goods
were an external, “remote” communication system.
As previously noted, the Examining Attorney was
entirely correct that the mere descriptiveness of a term is
not to be judged in the abstract, but rather is to be
judged in terms of the goods as identified. As presently
identified, applicant’s mark VIRTUAL INTERCOM is simply not
descriptive of an intercom (i.e. an internal communication
system) because applicant’s computer messaging system is
Ser No. 74/715,185
5
now limited to a system that allows or provides contact
with a remote party.
Moreover, to the extent there are any doubts on the
issue of mere descriptiveness, it is the long standing
practice of this Board to resolve such doubts in
applicant’s favor. In re Gourmet Bakers Inc., 173 USPQ 565
(TTAB 1972).
Decision: The refusal to register is reversed.
E. W. Hanak
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board