Automotive Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jan 12, 2001

No. 75386664 (T.T.A.B. Jan. 12, 2001)

1/12/01 Paper No. 19
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Automotive Technologies, Inc.
________
Serial No. 75/386,664
_______
Wm. Tucker Griffith and Theodore R. Paulding of McCormick,
Paulding & Huber, LLP for Automotive Technologies, Inc.
Lisa W. Rosaya, Trademark Examining Attorneys, Law Office 112
(Janice O'Lear, Managing Attorney).
_______
Before Hohein, Walters and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Automotive Technologies, Inc. has filed an application
to register the mark "SKYWAVE" for the following goods:1
"wireless telephone accessories, namely,
antennas, batteries, battery base plates,
battery chargers and savers, cables, car
speakers, cases, cords, cradles, mounts,
holders, modems, transformers, microphones,
amplifiers, speakers, connectors, and data
interfaces comprised of cables and adapters,
global positioning satellite tracking
receivers and displays, automotive
navigational systems comprised of global
positioning satellite receivers, display
units and processors, wireless pagers, and
1 Ser. No. 75/386,664, filed on November 7, 1997, which alleges dates
of first use of April 2, 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/386,664
2
power cords; computer accessories, namely,
modems, PCMCIA cards, cases, cords, pointing
devices, and printers; [and] computer
software, namely, for electronic mail, for
accessing global information networks, for
use in database management, [and] for use in
telecommunications management.
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, the term
"SKYWAVE" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
It is essentially the Examining Attorney's position
that because sky waves are a kind of radio waves, which in turn
are utilized by wireless communications devices, the term
"SKYWAVE" is merely descriptive of "a feature or function of the
applicant's goods--namely, that the wireless telephone
accessories utilize skywaves [sic]." Specifically, according to
the Examining Attorney:
Sky waves are a component of radio
waves, as defined in Prentice Hall's
Illustrated Dictionary of Computing,
previously made of record by the applicant:
Radio Wave Propagation:
When radio waves are radiated, there are
usually two components: the "ground"
wave, which is propagated direct from
the transmitting aerial to the receiving
aerial in a straight line; and the "sky"
wave, which is propagated upward over a
wide range of angles until it meets an
ionized layer high above the Earth's
surface.
Ser. No. 75/386,664
3
It is common knowledge that wireless
communication devices utilize radio waves to
transmit data from one location to another.
In fact, the applicant made of record a copy
of a web site from "WOW-COM The World of
Wireless Communication" that reads as
follows:
How does wireless technology work?
Wireless communications systems provide
anytime, anywhere communications. When
you talk on a wireless phone, it
transmits low energy radio waves to a
local antenna site, which connects you
with the landline or wireless location
you are calling. That same antenna also
sends signals back to your wireless
phone...
As explained above, sky waves are, in fact,
radio waves. Wireless technology utilizes
radio waves, including sky waves.
In view thereof, and since many of applicant's goods,
including its antennas, modems and wireless pagers, "directly
utilize radio waves, or 'sky waves,'" the Examining Attorney
insists that:
It is clear that the phrase "SKYWAVE,"
as applied to the goods, immediately conveys
to potential purchasers that the goods
utilize a component of radio waves called sky
waves. Therefore, the refusal under Section
2(e)(1) is proper in that the mark merely
describes a function or feature of the
applicant's goods.
Likewise, because "many other goods identified by the applicant
are accessories for sky wave products," such as applicant's
batteries, battery chargers and savers, the Examining Attorney
concludes that the term "SKYWAVE" "immediately describes a
function, feature, purpose or use of the relevant goods and [thus
a] refusal under Section 2(e)(1) ... is proper."
Ser. No. 75/386,664
4
Applicant, on the other hand, argues that the Examining
Attorney is in error in asserting that any of its goods utilize
sky waves or are accessories for use with products which use sky
waves. In particular, while applicant concedes in its initial
brief that wireless or "cellular communications rely upon radio
frequencies" and "does not dispute the Examining Attorney's
definitions of 'sky wave' and 'radio wave propagation,'"2
applicant correctly "notes that while a sky wave is a form of
radio wave propagation, all radio wave propagation does not
necessarily make use of sky waves--e.g., ground waves and space
(tropospheric) waves are viable means of wireless communication."
Applicant consequently "strongly disagrees" with the statement in
the final refusal that "[i]nasmuch as cellular communications
rely upon radio frequencies, the term 'skywave' is merely
descriptive of the identified goods." To the contrary, applicant
categorically states, in its reply brief, that: "None of
Applicant's goods make use of sky waves."
Specifically, as explained in its initial brief,
applicant further points out that:
Applicant's mark is used with a variety
of goods .... For ease of analysis, these
goods will be divided into the following
groupings: Wireless telephone accessories;
2 We judicially notice in this respect that, as stated in both the
initial Office action and applicant's reply brief, the term "sky wave"
is defined in The Computer Glossary (8th ed. 1998) as "a radio signal
transmitted into the sky and reflected back down to earth from the
ionosphere." It is settled that the Board may properly take judicial
notice of dictionary definitions. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953) and University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/386,664
5
GPS [("global positioning system")]
accessories and wireless pagers; and portable
computer accessories (including computer
software).
∙ Wireless telephone accessories, as used
by Applicant, do not include wireless
telephones themselves. Rather, they are
"accessories", intended to be used with
wireless telephones of any kind, brand,
or model. None of the accessories make
any use of sky wave technology. ....
∙ GPS systems, by definition, do not make
use of sky waves. Instead, signals are
transmitted to and from satellites, and
there is no need to bounce radio waves
off the ionosphere, especially with the
risk of a significant percentage of the
wave being lost, when the waves can be
transmitted via satellite technology.
.... As with wireless telephone
accessories, none of these GPS
accessories make any use of sky waves.
Wireless pagers are similar to GPS
systems in that they rely heavily on
satellite technology for operation.
Accordingly, it is improper to refuse
registration of the mark with respect to
these goods on the basis that it is
merely descriptive.
∙ The same arguments are applicable to ...
accessories for portable computers, and
computer software. Sky waves are
unnecessary for their operation.
We observe, however, that in fairness, applicant
acknowledges in its initial brief that:
The Examining Attorney's position would
have been the strongest for communication
devices ... which Applicant has deleted from
its list of goods via Amendment (i.e.,
telephones, two-way radios). "SKYWAVE" does
make reference to a technology upon which
wireless communication may be based.
However, for the same reasons articulated
above, a refusal of "SKYWAVE" even for some
communications devices based on
descriptiveness is still improper. Some
modern cellular telephones are similar to GPS
Ser. No. 75/386,664
6
systems and wireless pagers in that they rely
heavily on satellite technology for
operation. Other cellular telephones do not
need long distance wave propagation (which
sky waves provide) because the signal is
transmitted from cell to cell through direct
waves over short distances. Two-way radios,
such as "walkie-talkies[,]" only transmit
radio waves over short distances, and
therefore, rely upon ground wave technology.
Applicant consequently concludes in its initial brief
that it is "a severe stretch" for the Examining Attorney to
contend that the term "SKYWAVE" is merely descriptive of "a
feature or function of the applicant's goods--namely, that the
wireless telephone accessories utilize skywaves [sic]. Instead,
inasmuch as "[t]he crux of Applicant's argument ... is that
Applicant's goods can function without the use of sky waves, and
indeed rely on technology separate from radio wave propagation in
order to function," applicant maintains in its initial brief
that:
The Examining Attorney's reliance on
cases which state that a term is descriptive
if it describes one attribute of the goods is
improper in situations where not even a
single attributes of the goods can be
described by the mark. That is the situation
here. If there is any connotative connection
between the term "sky wave" and the
communications accessories listed above, it
is because there is a suggestive nature to
the applied-for mark.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose or use of the goods or
Ser. No. 75/386,664
7
services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987) and In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a
term describe all of the properties or functions of the goods or
services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used on
or in connection with those goods or services and the possible
significance that the term would have to the average purchaser of
the goods or services because of the manner of its use. See In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product [or service] is
from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
Ser. No. 75/386,664
8
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
In the present case, it is plain from both applicant's
arguments and the technical information of record that neither
GPS systems, such as global positioning satellite tracking
receivers and displays, automotive navigational systems
consisting of global positioning satellite receivers, display
units and processors, and wireless pagers, nor computer
accessories, including, modems, PCMCIA cards, pointing devices
and printers, utilize sky waves in any manner. The same is
likewise true for computer software, including that for use with
electronic mail, accessing global information networks, database
management, and telecommunications management. The Examining
Attorney, furthermore, does not appear to contend otherwise.
Nevertheless, registration must still be denied if a mark is
merely descriptive of any of the goods or services for which
registration is sought, which in this case leaves us with
consideration of applicant's various wireless telephone
accessories. Clearly, and contrary to applicant's assertions, if
its mark is merely descriptive of wireless telephones, the mark
would also be merely descriptive of accessories therefor.
On the present record, however, we find the Examining
Attorney's position that the term "SKYWAVE" is merely descriptive
Ser. No. 75/386,664
9
of a function or feature of applicant's wireless telephone
accessories to be too tenuous and speculative. To reiterate,
applicant has categorically stated that "[n]one of Applicant's
goods make use of sky waves." More importantly, it does not
appear from the limited evidence in this record that either
wireless telephone accessories of the kinds identified in the
application, including antennas, modems and amplifiers, or
wireless telephones, such as cellular telephones, operate with or
utilize radio waves of the wavelength or frequency known as sky
waves. While applicant does acknowledge that wireless
communication may be based upon the use of sky waves, the record
in this case shows that it is radio station broadcasting services
and the transmission equipment associated therewith, rather than
wireless telephone communication services and the mobile
telephones used therefor, which need to rely upon sky waves in
order to achieve long distance signal propagation.3
3 The following excerpts from articles retrieved by the Examining
Attorney's search of the "NEXIS" database are representative (emphasis
added):
"Among FCC proposals on improving AM ... were those
to: (1) Revoke permits of stations off air for 'substantial
period of time'. (2) Develop new skywave and groundwave
curves to predict interference more accurately." --
Communications Daily, June 22, 1990;
"AM skywave field strength. Proposed improved methods
for calculating skywave field strength in the AM broadcast
band. Comments due Dec. 27, replies Jan. 11." -- Electronic
Media, November 14, 1988;
"Plan is to operate station for about 2 years to test
prototype antennas designed to achieve separate control over
skywave and groundwave signals. If new antennas prove
successful, NAB will urge AM stations to adopt them and FCC
to incorporate their parameters in rules." -- Communications
Daily, June 9, 1988; and
Ser. No. 75/386,664
10
We are thus constrained to agree with applicant, as
persuasively argued in its reply brief, that (emphasis in
original):
Certainly, wireless technology utilizes
radio waves. Applicant acknowledges that sky
waves are indeed radio waves. However, it is
equally clear that not all radio waves are
sky waves, and accordingly, not all wireless
devices utilize sky waves for operation.
....
The Examining Attorney appears to be
arguing that "radio wave" and "sky wave" are
synonymous. .... However, the Examining
Attorney herself, in an effort to argue the
descriptiveness of the Applicant's mark,
acknowledges that wireless technology, and in
particular cellular communications,
successfully operates without reliance on sky
waves. For example, the Examining Attorney
cites the web site "WOW-COM The World of
Wireless Communication" and emphasizes the
following passage regarding how wireless
technology works: "[w]hen you talk on a
wireless phone, it transmits low energy radio
waves to a local antenna site, which connects
you with the landline or wireless location
you are calling." .... Referring to
Prentice Hall's Illustrated Dictionary of
Computing which the Examining Attorney also
cites in her brief, it is abundantly clear
that wireless technology relies on ground
waves, "which [are] propagated direct from
the transmitting aerial to the receiving
aerial in a straight line". .... In short,
the telephone (the transmitting aerial) sends
a signal via a ground wave to a cellular
antenna (the receiving antenna) which patches
the call into the landline or transmits the
signal to another telephone directly if that
telephone is in the same cell. The
ionosphere does not come into play at all
"[A]doption of the NRSC Voluntary Standard as
mandatory is essential, as is selection of a single AM
stereo standard; and abolition of protection to the
secondary skywave service areas of clear-channel stations is
clearly called for.
Local service, not distant service, is what radio is
all about." -- Electronic Media, February 1, 1988.
Ser. No. 75/386,664
11
during this type of transmission, and thus,
cellular transmissions are completed without
sky waves. Thus, it is clear that
traditional cellular communication, as
described by WOW-COM, in light of the
Dictionary of Computing, makes no use of sky
waves for successful operation whatsoever.
Indeed, there are cellular antennas all
over the place and thus, numerous "cells"
within a relatively small geographical area.
If cellular communications relied upon sky
waves, there would not need to be as many
cellular antennas, since the purpose of the
sky wave is to transmit signals which may be
received over large geographical areas.
Simply stated, sky waves are for long
distance radio wave propagation, such as for
radio station broadcasts, as is evidenced by
the numerous articles from the Nexis Research
Database produced by the Examining Attorney.
Moreover, the trend of the cellular
community is towards digital technology, with
which traditional radio wave propagation is
bypassed for the use of satellites. By
definition, a [radio] wave transmitted to and
from a satellite cannot be a sky wave. As is
undisputed, a sky wave is "a radio signal
transmitted into the sky and reflected back
down to earth from the ionosphere". ....
Accordingly, any cellular telephones which
rely upon satellites, but which still utilize
sky waves, would never complete a phone call
because the sky waves would bounce off the
ionosphere before reaching the satellites,
which traditionally orbit around the earth
well above the ionosphere.
The present record, consequently, fails to show that
wireless telephones and their accessories, such as antennas,
modems and amplifiers, have any function, feature, purpose or
other aspect which utilizes sky waves, as opposed to other types
of radio waves, in their operation so as "to transmit data from
one location to another" as contended by the Examining Attorney.
The Examining Attorney's position that applicant's goods are "sky
Ser. No. 75/386,664
12
wave products" rests on assumptions which have no demonstrable
basis in fact and which, as pointed out by applicant, are
contrary to the emerging trend towards digital satellite
communications, which do not and in fact could not operate
through the use of sky waves. The evidence, in summary, is
simply insufficient to show that wireless telephones and their
accessory products have any characteristic, feature or function
which would utilize or operate in conjunction with sky waves as
the technological means for transmitting and receiving
communications signals. A refusal on the ground of mere
descriptiveness cannot properly be based on some theoretical or
otherwise speculative possibility.
We find, therefore, that the while the term "SKYWAVE"
is suggestive of the radio-based technology utilized by wireless
telephone equipment, it requires imagination or a multi-stage
reasoning process in order for customers or prospective
purchasers of accessories for wireless telephones to conclude, as
urged by the Examining Attorney, that such goods are or would be
products based upon sky wave communications technology. The term
"SKYWAVE," when used in connection with the wireless telephone
accessories identified in applicant's application, has not been
shown on this record to immediately or directly describe any
significant aspect of either applicant's particular goods or
goods of such type in general. The term "SKYWAVE" is therefore
not merely descriptive of applicant's goods. However, to the
extent that there may be any doubt with respect to whether sky
waves lend themselves to use with wireless telephones, as opposed
Ser. No. 75/386,664
13
to radio station broadcasting applications, and thus there may be
some doubt as to whether the term "SKYWAVE" is merely descriptive
rather than suggestive of applicant's various accessories for
wireless telephones, we resolve such doubt, in accordance with
the Board's practice, in favor of the publication of applicant's
mark for opposition. See, e.g., 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 under Section 2(e)(1) is
reversed.