Delray Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jun 13, 2001

No. 75622513 (T.T.A.B. Jun. 13, 2001)

06/13/01
Paper No. 10
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Delray Technologies, Inc.
________
Serial No. 75/622,513
_______
Brian M. Mattson of Patents+TMS, P.C. for Delray Technologies,
Inc.
Wm. Patrick Shanahan, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Acting Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Delray Technologies, Inc. seeks registration of the mark
DIRECTWAVERADIO.NET for the following services:
“providing multiple-user, wireless access to a
global computer information network,” in
International Class 38; and
The
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based up
mark in
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB“global computer network development services,
namely, designing and implementing web sites for
others,” in International Class 42.1
Trademark Examining Attorney has refused registration
round that applicant’s mark is merely descriptive of
lication Serial No. 75/622,513, filed on January 19, 1999,
on applicant’s claim of a bona fide intention to use the
commerce.
SERIAL NO. 75/622,513
- 2 -
its services, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed. The
case has been briefed but applicant did not request an oral
hearing. We affirm the refusal of registration as to both
classes of services.
The Trademark Examining Attorney begins by taking the
second level domain name, DIRECTWAVERADIO, and breaking it
down into the three-word phrase “direct wave radio.” Using
technical articles, he shows the relevance of this terminology
to the services herein, and shows that wireless Internet
access is possible using just such radio waves.
By contrast, applicant charges that the Trademark
Examining Attorney has improperly dissected this mark, which
is at worst, suggestive of the access services in
International Class 38 and which is arbitrary as applied to
its Web development services in International Class 42.
It is well settled that a term is considered to be merely
descriptive within the meaning of Section 2(e)(1) of the
Trademark Act, if it immediately conveys information about an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services with which it is being
used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
SERIAL NO. 75/622,513
- 3 -
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 feature about them. On
the other hand, the immediate description must be conveyed
with some “degree of particularity.” In re Entenmann’s Inc.,
15 USPQ2d 1750, 1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir.
Feb. 13, 1991); and In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1987).
Furthermore, 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. 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). We
must look to the context in which the term 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. In
re Bright-Crest Ltd., 204 USPQ 591, 593 (TTAB 1979).
SERIAL NO. 75/622,513
- 4 -
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
In re Abcor Development Corp., supra at 218, and In re Mayer-
Beaton Corp., 223 USPQ 1347, 1349 (TTAB 1984).
The evidence placed into the record by the Trademark
Examining Attorney shows that radio signals are made up of
electromagnetic oscillations, or waves. The ways in which
radio signals travel from a transmitter to a receiver are
known as propagation modes (e.g., direct waves, surface waves
and reflected waves). The “direct wave” is a radio signal
that travels directly from the transmitting antenna to the
receiving antenna via line of sight. Whether marine use,
microwave transmissions, cellular telephones, broadcasting or
paging, the NEXIS articles made of record show that one of the
consistent goals of telecommunication specialists has been
achieving good direct wave conditions between a transmitting
antenna and the receiving antenna.
However, applicant argues that this combination of terms,
combined by applicant in a novel manner, creates a distinctive
term:
SERIAL NO. 75/622,513
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… [E]ven if certain individual components of the
proposed mark are descriptive, the combination is
not merely descriptive per se. Applicant’s mark,
“DIRECTWAVERADIO.NET,” provides a combination of
terms that creates a distinct commercial
impression which is not descriptive.
(Applicant’s appeal brief, p. 3).
Moreover, applicant argues that the Trademark Examining
Attorney has improperly dissected the mark:
The Examining Attorney, by providing articles
discussing the term “direct wave” and “radio”
has, in essence, deemed the mark descriptive by
means of dissecting the mark into its individual
terms. However, the courts have established that
dissection of a mark into individual components
is an incorrect approach. (Applicant’s appeal
brief, p. 3).
Finally, in arguing that this term is at worst suggestive
of the Internet access services in International Class 38,
applicant argues as follows:
Appellant contends that the nature of the
services for International Class 38, namely,
access to a global computer information network,
could not be ascertained simply from the mark
itself. Direct wave radio frequencies may be
able to transmit numerous types of signals.
Consequently, one may not discern from the mark
that direct radio wave frequencies are provided
for internet access without some thought or
imagination… (Applicant’s appeal brief, p. 4-5)
[Underlining in original, Italics supplied].
As noted by the Trademark Examining Attorney, in the
course of making this latter argument, applicant seems to have
contradicted its earlier argument of dissection, at least of
SERIAL NO. 75/622,513
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the term “DIRECTWAVERADIO,” by repeatedly using the term
“Direct wave radio frequencies” in the context of wireless
Internet access. Furthermore, as noted earlier, whether a
term is merely descriptive is determined not in the abstract
but in relation to the services for which registration is
sought. Accordingly, inasmuch as direct wave radio may well
be the mode of radio signal propagation involved in
applicant’s wireless Internet access, we find this portion of
the mark descriptive of a feature of the listed services in
International Class 38. Furthermore, placing this matter into
the format of an Internet domain name does not confer
trademark significance on any otherwise descriptive term:
The proposed mark, DIRECTWAVERADIO.NET, is in the
form of an Internet domain name. Although not
argued by the applicant, the Top Level Domain
indicator, .NET, adds no trademark significance to
the proposed mark [citations omitted] … .
(Trademark Examining Attorney’s appeal brief, p.
5).
Accordingly, we have no doubt that this proposed mark is
merely descriptive of the wireless Internet access services
recited in International Class 38.
We acknowledge that it is a closer case, based upon the
instant record, whether the term “Direct Wave Radio” conveys
with particularity a significant feature of applicant’s Web
development services in International Class 42. However, one
SERIAL NO. 75/622,513
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of the implications of the growth of wireless access to the
Internet is that businesses having Web sites undoubtedly are
increasingly considering wireless users and their needs rather
than just traditional wired PC users. As Internet sites
reshift their priorities and retool their technologies for the
shift to wireless, there will be a growing need for the Web
development services of vendors like applicant in retraining
staff and helping Webmasters to rethink their entire product
lines as to both style and content. Hence, to the extent that
“Direct Wave Radio” is inextricably linked to wireless
Internet access, it does not require imagination, thought or
perception to find that this phrase immediately conveys
information to prospective purchasers about the unique Web
development services provided by applicant in this rapidly
changing environment.
Decision: The refusal to register is affirmed as to both
classes.