Automotive Tech-nologies, Inc.

Trademark Trial and Appeal Board

Sep 22, 2000

No. 75369329 (T.T.A.B. Sep. 22, 2000)

Oral Hearing: Paper No.
20
April 13, 2000
GDH/gdh
9/22/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Automotive Technologies, Inc.
________
Serial No. 75/369,329
_______
Wm. Tucker Griffith and Theodore R. Paulding of McCormick,
Paulding & Huber, LLP for Automotive Technologies, Inc.
Katherine Bush and Lisa Rosaya, Trademark Examining
Attorneys,1 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 PRODUCTS" and
design, as reproduced below,

1 While the former (hereinafter referred to as the Examining
Attorney) issued the final refusal in this case and submitted the
brief, the latter presented the oral argument.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/369,329
2
for the following goods:2
"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
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
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a
disclaimer of the words "SKYWAVE PRODUCTS," which the
Examining Attorney maintains are merely descriptive of

2 Ser. No. 75/369,329, filed on October 7, 1997, which alleges dates
of first use of April 12, 1996. The word "PRODUCTS" is disclaimed
and the stippling is for shading purposes only.
Ser. No. 75/369,329
3
applicant's goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1).3
Applicant has appealed. Briefs have been filed4 and
an oral hearing was held. 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

3 While the Examining Attorney, among other things, states in her
final refusal that the words "SKYWAVE PRODUCTS" merely describe
applicant's goods inasmuch as "one significant function of the
applicant's goods is that they utilize and work in conjunction with a
particular form of wireless communication, namely that which is based
on skywaves," she also states, in the alternative, that:
If, however, the applicant's goods do NOT utilize
skywaves, the mark would be misdescriptive of the
applicant's goods. In either case, the applicant must
disclaim all of the wording of the mark[.]"
4 Although applicant, in its initial brief, argues that the words
"SKYWAVE PRODUCTS" are neither merely descriptive nor deceptively
misdescriptive of its goods, the Examining Attorney in her brief
contends that the sole issue on this appeal is "[w]hether the phrase
'skywave' in the applicant's proposed mark SKYWAVE PRODUCTS (and
design) is descriptive of applicant's goods, namely wireless
telephone related products, and therefore a disclaimer of 'skywave
products' is proper ...." In particular, the Examining Attorney
insists that:
The applicant has included arguments that the phrase
"skywave products" is not deceptively misdescriptive of
the goods; however, the examining attorney has not issued
a disclaimer requirement based on misdescriptiveness.
Therefore, the examining attorney does not respond herein
to these arguments.
In view thereof, to the extent that the final refusal alternatively
was based on the ground that a disclaimer was required because the
words "SKYWAVE PRODUCTS," when used in connection with applicant's
goods, are deceptively misdescriptive thereof, we consider such basis
to be withdrawn.
Ser. No. 75/369,329
4
words "SKYWAVE PRODUCTS" are merely descriptive of applicant's
goods and must be disclaimed in order for applicant's mark to
be registrable. Specifically, according to the Examining
Attorney:
Sky waves are a component or [sic]
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.
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...

Ser. No. 75/369,329
5
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
products," as applied to the goods,
immediately conveys to potential purchasers
that the goods utilize a component of radio
waves called sky waves. Further, the term
"products" lacks any trademark significance
as applied to the goods. Therefore, a
disclaimer of the phrase "skywave products"
is proper.
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 words "SKYWAVE PRODUCTS"
immediately describe a function, feature, purpose or use of
those goods and thus "a disclaimer of the phrase 'skywave
products' is proper."
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 communications
rely upon radio frequencies" and "does not dispute the
Ser. No. 75/369,329
6
Examining Attorney's definitions of 'sky wave' and 'radio wave
propagation,'"5 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, space (tropospheric) waves, and satellite
transmissions are viable means of wireless communication."
Applicant consequently "strongly disagrees with the Examining
Attorney's assertions that the wireless communications devices
with which Applicant's goods may be used necessarily make use
of sky waves." To the contrary, applicant categorically
states that: "None of Applicant's goods make direct use of
sky waves."
Specifically, as explained in its initial brief,
applicant further points out that:
For ease of analysis, Applicant's
goods will be divided into the following
groupings: Wireless telephone accessories;
GPS [("global positioning system")]
accessories and wireless pagers; and
portable computer accessories (including
computer software).

5 We judicially notice in this respect that, as stated in 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. 75/369,329
7
Wireless telephone accessories, as
sold by Applicant under the trademark
"SKYWAVE PRODUCTS and Design", 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 (as is done with sky waves),
especially with the risk of a significant
percentage of the waves 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 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 articulated above
are applicable to computer accessories and
computer software. Sky waves are simply
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 PRODUCTS and Design"
does make reference to a technology upon
Ser. No. 75/369,329
8
which wireless communication may be based.
However, for the same reasons articulated
above, a refusal of "SKYWAVE PRODUCTS and
Design" even for some communications
devices based on descriptiveness is still
improper. Some modern cellular telephones
are similar to GPS 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 the telephone to a cell through direct
waves over a relatively short distance and
then into conventional phone lines. 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:
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 no attributes of the goods can be
described by the goods [sic]. That is the
situation here. If there is any
connotative connection between the term
"sky wave" and the telecommunications
accessories listed above, it is because
there is a suggestive nature to the
applied-for mark. The 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. .... Other goods rely on
satellite technology--e.g., GPS products--
or telephone lines--e.g., modems. Even
goods that require radio waves function
merely by use of ground wave (or direct
wave technology whereby the signal is sent
from the transmitter directly to the
receiver.
Ser. No. 75/369,329
9
Thus, to say that wireless telephone
accessories "utilize" wireless
communication is a severe stretch. ....
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 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
Ser. No. 75/369,329
10
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 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,
Ser. No. 75/369,329
11
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 PRODUCTS"
is merely descriptive of applicant's wireless telephone
accessories, and therefore must be disclaimed, to be too
tenuous and speculative. To reiterate, applicant has
categorically stated that "[n]one of Applicant's goods make
direct 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
Ser. No. 75/369,329
12
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.6

6 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
"[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
Ser. No. 75/369,329
13
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. .... Also,
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

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. 75/369,329
14
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 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
wouldn't 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 utilized 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.
Ser. No. 75/369,329
15
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 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 terminology
"SKYWAVE PRODUCTS" is suggestive of the radio-based technology
utilized by wireless telephone equipment, it requires
imagination or a multi-stage reasoning process in order for
Ser. No. 75/369,329
16
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
PRODUCTS," 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. A disclaimer of such term is
therefore not required. 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 to radio station
broadcasting applications, and thus there may be some doubt as
to whether the term "SKYWAVE PRODUCTS" in applicant's mark is
merely descriptive rather than suggestive of its 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 6(a) is
reversed.
Ser. No. 75/369,329
17
G. D. Hohein
C. E. Walters
C. M. Bottorff
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board