BAE SYSTEMS Information and Electronic Integration, Inc.

Trademark Trial and Appeal Board

Feb 23, 2007

No. 76512472 (T.T.A.B. Feb. 23, 2007)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed:
February 23, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BAE SYSTEMS Information and
Electronic Integration, Inc.
________

Serial No. 76512472
Serial No. 76552608
_______

Daniel J. Long of BAE SYSTEMS Information and Electronic
Integration, Inc.

Tracy Cross, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney)
_______

Before Walters, Holtzman, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

BAE SYSTEMS Information and Electronic Integration,
Inc. filed intent-to-use applications to register the marks
LASERLINK1 and LAZ-R-LINC2 (in standard character format)
for the following goods, as amended:

1 Application Serial No. 76512472, filed April 15, 2003.
2 Application Serial No. 76552608, filed October 20, 2003.
Serial No. 76512472
Serial No. 76552608

2
A commandable electro-optical (E/O)
apparatus for free space transmission
of data for the selective establishment
of a link to a moving or stationary
platform in a space, air or ground
environment, including air to air, air
to satellite, air to ground, ground to
air, ground to satellite, and ground to
ground, which includes an airborne
terminal; lasers; light detectors;
communications equipment comprised of
an optical modem, a routing device, a
wide data distribution device, and a
device for interfacing with a plurality
of standard data network protocols; and
a beam pointing device, namely a
plurality of Risley prisms, a gimbal,
or an optical phase array, all for use
in national defense, in Class 9.3

Registration was refused on the ground that LASERLINK
and LAZ-R-LINC when used in connection with a laser
communication system are merely descriptive. Section
2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1). When the
refusals were made final, the applicant appealed.
Applicant and the examining attorney filed briefs. We
affirm.

3 Applicant explains that, “The goods are used to transmit data
by laser in space, air to air, air to satellite, air to ground,
ground to air, ground to satellite, and ground to ground.”
(Applicant’s December 21, 2004 Response in Serial No. 76512472
and November 24, 2004 Response in Serial No. 76552608).
Accordingly, applicant’s goods are essentially a laser based
communication system.
Serial No. 76512472
Serial No. 76552608

3
Inasmuch as the applications have been filed by the
same applicant and involve common questions of fact and
law, we will decide the appeals in one decision.
The examining attorney contends that the marks are
merely descriptive because they are proposed for use in
connection with a system that uses a laser to form a
communications link and, therefore, the word “Laser”
describes a feature of the product and the word “Link”
describes the purpose of the product. The examining
attorney asserts that the combination of the descriptive
words “Laser” and “Link” retain their descriptive
significance and do not form an inherently distinctive
composite mark. Finally, with respect to the mark LAZ-R-
LINC, the examining attorney argues that, where as here, a
novel spelling of a term that is merely descriptive remains
merely descriptive because purchasers will perceive the
unique spelling as the equivalent of the descriptive term.
The examining attorney relies on the following
evidence to support her refusal:
1. The definition of the word “Link” as “a
broadcasting unit or system used to relay radio
or television signals, e.g. a transmitter,
receiver, or relay station.” (MSN.Encarta
Dictionary at http://encarta.msn.com);4

4 The examining attorney requests that we take judicial notice of
definitions from the online versions of the Encarta World English
Dictionary, North American Edition and the Compact Oxford English
Serial No. 76512472
Serial No. 76552608

4

2. An October 28, 2004 press release on applicant’s
website (www.na.baesystems.com) that references
applicant’s “LaserLink” contract to build a
“free-space laser communications terminal” and
“to develop and demonstrate the potential of
laser communications”; and,

3. Statements in applicant’s December 21, 2004 and
November 24, 2004 responses wherein applicant
explained that through its product “a link may be
selectively established to transmit data to
either a moving platform in space, air or ground
environment.” Applicant also explained, “The
apparatus for which the mark is intended to be
used would be interfaceable with any standard
network protocol, or at least a plurality of such
protocols.”

The applicant argues that the marks are not merely
descriptive because they do not “clearly describe the very
specific commandable system for free space transmission of
data which is recited in the present application so that a
potential customer would understand what the goods are or
their function or characteristics.” In other words, the
marks might suggest “any one of a large variety of

Dictionary. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed
format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006). The source of the MSN.Encarta
definition is the Encarta World English Dictionary (North
American Edition (2006). While that “publication” may not be
available as a print publication, it is a widely known reference
that is readily available. Thus, it is the electronic equivalent
of a print publication and applicant may easily verify the
definition. For this reason, we find it is acceptable material
for judicial notice. Id. We hasten to add, however, that the
preferable procedure would have been to for the definition and
argument associated therewith to have been submitted during
examination.
Serial No. 76512472
Serial No. 76552608

5
communication systems which includes a laser and a data
path.” (Applicant’s Briefs, p. 2). With respect to the
mark LAZ-R-LINC, applicant argues that LAZ-R is unique, and
because it is not an easily recognizable misspelling, the
mark is not merely descriptive.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods or services with
which it is used, or intended to be used. In re Gyulay,
820 F.2d 1216, 3 USPQ 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in
relation to the goods or services for which registration is
sought and the context in which the term is used, or is
intended to be used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ 1222,
1224 (TTAB 2002). In other words, the issue is whether
someone who knows what the goods or services are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ 1314, 1316-1317 (TTAB 2002);
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 UPSQ 365, 366 (TTAB 1985).
Serial No. 76512472
Serial No. 76552608

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When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. If each component
retains its merely descriptive significance in relation to
the goods or services, the combination results in a
composite that is itself merely descriptive. See, In re
Tower Tech, Inc., supra (SMARTTOWER merely descriptive of
commercial and industrial cooking towers); In re Sun
Microsystems Inc., 59 USPQ 1084 (TTAB 2001) (AGENTBEANS
merely descriptive of computer programs for use in
developing and deploying application programs); In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of new information
services in the food processing industry).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive. In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Serial No. 76512472
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With respect to the LAZ-R-LINC trademark, we agree
with the examining attorney that a misspelling of a word
will not turn a descriptive word into a nondescriptive
word. In re Hubbard Milling Co., 6 UPSQ2d 1239, 1240 (TTAB
1988)(“Mineral-Lyx” is the phonetic equivalent of “Mineral
Licks” which is descriptive of mineral licks for animals);
In re State Chemical Manufacturing Co., 225 USPQ 687, 689
(TTAB 1985)(“Fom” is the phonetic equivalent of “Foam”
which is descriptive of cleaners for rugs and carpets).
In analyzing the descriptiveness issue, we must
consider the mark sought to be registered in the context of
the product on which it is used and how the purchaser would
view the mark in its marketplace setting. In re State
Chemical Manufacturing Co., supra. LAZ-R-LINC is proposed
for use in connection with a laser based communication
system designed to create a link to a moving platform.
Based on the description of goods, purchasers would
perceive LAZ-R-LINC as the phonetic equivalent of “Laser
Link.”
The combination of the words “Laser” and “Link” in the
LASERLINK trademark (and the LAZ-R-LINC trademark) maintain
their descriptive significance if used in connection
applicant’s laser communication system. The components of
the mark are common words with readily understood meanings,
Serial No. 76512472
Serial No. 76552608

8
which when combined, produce a mark with descriptive
significance. A “laser” is a component of applicant’s
laser communication system whose purpose is to create a
“link” with a moving platform. Based on the record before
us, the marks LASER LINK and LAZ-R-LINC, if used in
connection with a laser communication system to create a
“link” with a moving platform, immediately describes a
feature and purpose of the product without resort to
imagination, conjecture, or speculation.
Contrary to applicant’s argument, the marks do not
have to “describe the very specific commandable system for
free space transmission of data . . . so that a potential
consumer would understand what the goods are or their
function or characteristics.” (Applicant’s Briefs, at p.
2). “The question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them.” In re Tower Tech Inc., supra.
Moreover, the marks do not have to describe every quality,
feature, function, etc. of the products to be merely
descriptive. Id. In this case, we have no doubt that a
person who is familiar with applicant’s product will
understand that the marks LASERLINK and LAZ-R-LINC refer to
a laser communication system.
Serial No. 76512472
Serial No. 76552608

9
In view of the foregoing, we find that the marks
LASERLINK and LAZ-R-LINC if used in connection with a laser
communication system are merely descriptive.
Decision: The refusal to register is affirmed.