Adaptive Broadband Corp.

Trademark Trial and Appeal Board

Dec 6, 2001

No. 75590849 (T.T.A.B. Dec. 6, 2001)

12/06/01

Paper No. 14
EJS

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Adaptive Broadband Corporation, assignee of
California Microwave, Inc.
________

Serial No. 75/590,849
_______

Julia Anne Matheson of Finnegan, Henderson, Farabow,
Garrett & Dunner LLP for Adaptive Broadband Corporation.

Kelly F. Boulton, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______

Before Cissel, Seeherman and Bottorff, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Adaptive Broadband Corporation, assignee of California
Microwave, Inc., has appealed from the final refusal of the
Trademark Examining Attorney to register ADAPTIVE BROADBAND
for the following goods:
Communications equipment, components
and test equipment, namely, microwave
signal sources, transceivers, frequency
converters, digital signal modulators,
digital demodulators, burst modems,
digital signal processors, computers
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/590,849
2
and computer software for bandwidth
management, ATM (Asynchronous Transfer
Mode) processing equipment, namely, ATM
access switches and ATM edge switches,
computers and computer software for
network management, TCP/IP packet
devices, namely, computers and computer
software to encrypt communications
traffic, digital protocol converters,
digital switches.”1

Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant’s mark is merely descriptive of the
identified goods. Specifically, the Examining Attorney
contends that ADAPTIVE BROADBAND immediately conveys to
consumers that the identified goods are devices that are
scalable to larger or smaller operations for use or
management of broadband frequencies.
Applicant filed an appeal brief and, after the
Examining Attorney’s decision on applicant’s request for
reconsideration, a supplemental appeal brief. The
Examining Attorney submitted a brief after applicant filed
its supplemental appeal brief. No reply brief was
submitted, and an oral hearing was not requested.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Act, if it

1 Application Serial No. 75/590,849, filed November 18, 1998,
based on an asserted bone fide intention to use the mark in
commerce.
Ser. No. 75/590,849
3
immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of a product or service. The question of mere
descriptiveness is not decided in a vacuum, but in relation
to the goods on which, or the services in connection with
which, it is used. In re Venture Lending Associates, 226
USPQ 285, 286 (TTAB 1985).
In support of the refusal of registration the
Examining Attorney has made of record dictionary
definitions, excerpts from the NEXIS date base, and
excerpts from websites, including the following:
Definitions
adaptive: tending to, designed, for,
suitable for, or having a capacity for
adaptation; created adaptive clothing
for children and young adults with
special needs2

broadband: of, relating to, or having
a wide band of electromagnetic
frequencies: broadband communications3

broadband: a transmission medium that
can carry signals from multiple
independent network carriers on a
single coaxial or fiber optic cable, by
establishing different bandwidth
channels. This technique is called
frequency-division multiplexing.
Broadband technology can support a wide
range of frequencies and is used to

2 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
3 Id.
Ser. No. 75/590,849
4
transmit data, voice, and video over
long distances. Contrast with
baseband.4

broadband: (1) High-speed transmission.
The term is commonly used to refer to
communications lines or services at T1
rates (1.544 Mbps) and above. As we
reach into the OC-12 stratosphere and
beyond, many like to push the beginning
of broadband much higher than T1, so
the actual demarcation point will
always be subjective.
(2) A method of transmitting data,
voice and video using frequency
division multiplexing (FDM), such as
used with cable TV. Modems are
required to modulate digital data
streams onto the line. Broadband in
this context is used in contrast with
baseband, which is all digital
transmission and uses time division
multiplexing (TDM). However, the term
is most used in definition #1 above.5

Nexis excerpts

Products are also available that allow
a 10M bit/sec Ethernet channel to be
established on a broadband network and
operate concurrently with broadband
applications. Both Bridge
Communications, Inc. and Chipcom Corp.
offer products that will adapt
broadband local nets to support the
Ethernet channel.
“Network World,” September 15, 1986

California-based start-up Ensemble
Communications, Inc., developer of
adaptive broadband wireless solutions,
cites an Ovum forecast that the BWA

4 High-Tech Dictionary Definition,
www.computeruser.com/resources/dictionary/definition
5 TechEncyclopedia, www.techweb.com
Ser. No. 75/590,849
5
equipment business will be worth $16
billion by the year 2005.
“Global Telephony,” April 2000

In the past nine years, DSR has been
highly successful in the Small Business
Innovation Research (SBIR) program,
performing contract [sic] on projects
ranging from advanced waveform design,
adaptive processing techniques,
software migration and advanced COTS
architectures, passive automation,
adaptive broadband matched filtering,
flight control for UAVs, to applied
research in the areas of intelligent
tutoring, expert system training and
embedded training concepts.
“Journal of Electronic Defense,”
February 1, 2000

Ensemble Communications Inc., making
preparations for field trials of its
“adaptive” broadband wireless
technology, today announced the closing
of $13.12 million in additional
financing.
“Wireless Today,” January 20, 1999

The alliance with ADC is Ensemble’s
first since announcing in September the
development of an “adaptive” system for
LMDS and other wireless broadband
access applications based on the
Internet protocol (IP). “This alliance
puts us another step closer to bringing
our adaptive broadband products to
market,” said Sheldon Gilbert,
president of San Diego-based Ensemble.
“Communications Today,” December 3,
1998

Website excerpts

From www.ensemblecom.com

Ensemble Communications Announces
Development of an Adaptive IP System
Ser. No. 75/590,849
6
for LMDS with $6 million from Leading
Venture Capital Firms
-Breakthrough adaptive technology uses
Internet Protocol (IP) and other
innovations to enable fast, cost-
effective broadband access- (Headlines)

San Diego--September 21, 1998--Ensemble
Communications Inc., the Adaptive
Broadband Access Company, today
announced the development of an
Adaptive IP system for the rapidly
expanding Local Multipoint Distribution
Services (LMDS) and other Broadband
Wireless Access (BWA) markets
worldwide. …

Combining the latest RF and modem
technologies with advanced software
algorithms and network protocols, the
Ensemble system is fully adaptive to
provide carriers the maximum
flexibility in deploying network
assets. In real time, the Ensemble
system adapts at the bit level to allow
carriers to spread their bandwidth
resources over large service areas and
to over-subscribe their facilities and
their frequencies.

_____

Ensemble Communications Announces
Strategic Alliance with ADC
Telecommunications for Broadband
Wireless Access (headline)

San Diego—November 30, 1998—Ensemble
Communications Inc., the Adaptive
Broadband Access Company, today
announced a strategic alliance with ADC
Telecommunications….

...

Tailored to the unique challenges of
providing broadband access to off-net
Ser. No. 75/590,849
7
business users, Ensemble’s “Adaptive
IP” architecture offers more features
for lower capital expenses than
competing solutions due to its
instantaneous bandwidth-on-demand,
statistical multiplexing, adaptive
asymmetry, adaptive modulation and
elimination of guard bands. Ensemble’s
solution will provide existing and new
carriers the most cost-effective and
efficient network architecture to
provide current services, while
enabling them to lead the market with
new, innovative services. These
services include LAN/WAN connectivity,
high-speed data/Internet access,
virtual private networks, video
conferencing, ATM, voice over IP, and
other telephony and entertainment video
services.

“Our strategy is to work with leading
systems integrators to create the
seamless network solutions being
demanded by BWA [broadband wireless
access] service providers,” said
Sheldon Gilbert, president of Ensemble.
“ADS is a highly respected
telecommunications company with vast
product capabilities, and this alliance
puts us another step closer to bringing
our adaptive broadband products to
market.”

From www. Adaptivebroadband.com (applicant’s website)

Adaptive Broadband is a pioneer in the
wireless broadband access market. …
Founded in 1968 as California
Microwave, Adaptive Broadband has
sharpened our market and product focus
to concentrate on wireless broadband
solutions.

...

Ser. No. 75/590,849
8
In August 1998, the company acquired
Adaptive Broadband Limited, of
Cambridge, U.K. The new AB-Access
(point-to-multipoint) system developed
from that acquisition offers a solution
that provides “cells” of wireless
broadband access delivering up to 25
Mbps to each user based upon demand,
which is 450 times faster than
conventional modem networks. This
revolutionary product is made possible
by a patent-pending packet algorithm
that adjusts efficiently to the ebb and
flow of asymmetric Internet data
traffic and supports the widest range
of available spectrum, from 1.5 to
42GHz.

_____

Adaptive Broadband is a global data
networking solutions company that
develops leading-edge technology for
the deployment of broadband wireless
communication.
...

And because AB-Access architecture is
highly scalable,6 the network can grow
as the business grows or as bandwidth
needs evolve.

During the course of prosecution applicant made the
statement that “consumers are unlikely to be immediately
aware of any particular connotation for the word
‘BROADBAND,” saying that term could refer to the technical

6 Scalable is defined as “able to be changed in size or
configuration to suit changing conditions. For example, a
company that plans to set up a client/server network may want to
have a system that not only works with the number of people who
will immediately use the system, but the number who may be using
it in one year, five years, or ten years.”
http://www.computeruser.com.
Ser. No. 75/590,849
9
definitions given by the Examining Attorney or “it could
refer to a ‘broad’ ‘band’ of anything, including but not
limited to a band of gold, an electro-magnetic frequency
range, etc.” Response filed January 10, 2000. In its
brief applicant did not pursue this argument, perhaps in
view of the significant evidence in the record showing that
“broadband” is a recognized term in applicant’s industry.
As a result, when the word “broadband” is used in
connection with applicant’s identified goods, we do not
think consumers will understand it to mean a band of gold,
but will understand it in its communications sense.
In its initial brief applicant argued that its
identification does not limit or tie its equipment to
broadband use. However, applicant does not dispute that
its goods potentially or feasibly could be used in
connection with broadband technology, and the evidence
submitted by the Examining Attorney indicates that at least
some of the identified communications equipment items have
such a connection, i.e., that the word “broadband” is
descriptive of a characteristic of them. In its
supplemental brief applicant has apparently conceded this
point, acknowledging that it is “in the wireless broadband
access market” and recognizing that in its website
Ser. No. 75/590,849
10
applicant has stated that it “is in the business of
providing wireless broadband technology.” p. 3.
Applicant’s primary argument appears to be that when
the two terms, ADAPTIVE and BROADBAND, are combined in the
mark ADAPTIVE BROADBAND, the composite term is not merely
descriptive of its goods. Applicant asserts that there is
no well-understood meaning of the term ADAPTIVE BROADBAND.
In reaching this conclusion, applicant dismisses the
evidence submitted by the Examining Attorney which shows
such use. In particular, applicant gives no weight to the
references in the articles and press releases regarding
Ensemble Communications, Inc., stating that Ensemble’s use
of the tagline “The Adaptive Broadband Access Company”
“reflects nothing more than a misuse of Applicant’s
trademark.” Brief, p. 5. We are frankly surprised that
applicant would take such a position, since Ensemble’s use
of this phrase prior to the filing date of applicant’s
intent-to-use application would appear to be antithetical
to applicant’s claim of superior trademark rights.7 In any
event, we find that consumers would view the references to
“adaptive broadband” in the articles referring to Ensemble

7 Because it is Office policy not to refuse registration on the
basis of prior common law trademark rights, there is no question
as to our remanding the application to the Examining Attorney to
consider a Section 2(d) ground for refusal.

Ser. No. 75/590,849
11
as describing Ensemble’s technology/products. Moreover,
the fact that these articles may have been published
shortly after, or as a result of, Ensemble’s press releases
does not negate the descriptive connotation of “adaptive
broadband,” or the exposure of the consuming public to such
use.
Applicant also argues that the various articles do not
show use of “adaptive” as modifying “broadband,” but that
“adaptive” modifies “solutions” in the phrase “adaptive
broadband wireless solutions” and modifies “technology” in
the phrase “adaptive broadband wireless technology.” Thus,
applicant asserts that it is mere coincidence that the
words “adaptive broadband” appear in sequence. We are not
persuaded by this argument. The usage in the various NEXIS
and website excerpts indicates that the term ADAPTIVE
BROADBAND refers to the broadband itself as being adaptive.
Thus, consumers, viewing the mark in connection with the
goods, will immediately understand that the mark as a whole
describes a characteristic of the goods.
Finally, applicant’s reliance on Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054 (TTAB 1989) is misplaced. In that case, as
applicant itself states, the Board noted that the record
was devoid of any showing of a descriptive use or any
Ser. No. 75/590,849
12
meaning for “concurrent technologies” in the trade. The
Board also said that the intent of Section 2(e)(1) is to
protect the competitive needs of others, but found that
competitors were not be unduly deprived by the registration
of CONCURRENT TECHNOLOGIES CORPORATION because “there is no
indication that anyone in the industry would ever need to
use ‘concurrent technologies’ to describe his goods of
similar nature.” Id. At 1058. However, in the present
case, the record shows that competitors have used ADAPTIVE
BROADBAND in describing their products, and newspaper
reporters have used the term to describe third-party uses.
Thus, the record here adequately demonstrates that there is
a competitive need for others to use ADAPTIVE BROADBAND to
describe their goods.
Decision: The refusal of registration is affirmed.