Digital Lightwave, Inc.

Trademark Trial and Appeal Board

Sep 16, 2003

No. 76285088 (T.T.A.B. Sep. 16, 2003)

Mailed:
Sept. 16, 2003
Paper No. 9
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Digital Lightwave, Inc.
________
Serial No. 76/285,088
_______
Stefan V. Stein of Holland & Knight LLP for Digital
Lightwave, Inc.
Russ Herman, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark PROGRAMMABLE PROTOCOL PROCESSOR, in typed form,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/285,088
2
for “electronic testing equipment, namely,
telecommunication line integrity testing apparatus.”1
The Trademark Examining Attorney has refused
registration on the ground that the mark is merely
descriptive of the identified goods. Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1). When the refusal was made
final, applicant filed this appeal. Applicant and the
Trademark Examining Attorney filed appeal briefs, but
applicant did not file a reply brief, nor did applicant
request an oral hearing.
In support of his refusal, the Trademark Examining
Attorney has submitted and relied on the following
definitions from The American Heritage Dictionary of the
English Language (3rd ed. 1992):
program - “verb, transitive … 4. Computer Science.
To provide (a computer) with a set of instructions for
solving a problem or processing data.” We note that the
dictionary excerpt also defines “program” as a verb meaning
“to provide (a machine) with a set of coded working
instructions,” and as a noun meaning “a set of coded
instructions for insertion into a machine, in accordance
1 Serial No. 76/285,088, filed July 13, 2001. The application is
based on applicant’s asserted bona fide intention to use the mark
in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
Ser. No. 76/285,088
3
with which the machine performs a desired sequence of
operations.” The excerpt also shows that “programmable” is
the adjectival form of the word “program.”
protocol - “noun … 5. Computer Science. A standard
procedure for regulating data transmission between
computers.”
processor - “noun … 2. Computer Science. a. A
computer. b. A central processing unit. c. A program that
translates another program into a form acceptable by the
computer being used.”
The Trademark Examining Attorney also has submitted
the following evidence obtained from the NEXIS database:
From Electronic Design (July 10, 2000):
HEADLINE: Network Processors Take the High
Road… And the Low Road: Technology Information
BODY: Under the watchful eye of an on-chip
Power PC core, IBM Microelectronics packs 16
programmable protocol processors into its
network processor. A PCI control-bus interface
provides access to an external control
processor. The protocol processors are …;
From Business Wire (October 9, 2001):
HEADLINE: UTStarcom Selects Virata’s Helium
210-80 for its AN-2000-IB IP-based DSLAM
Product Being Deployed by Yahoo! BB in Japan
BODY: …single-chip communications processor,
performing ATM switching and Layer 2/3
processing. A general-purpose RISC protocol
processor runs higher layer protocols, while a
higher-performance micro-coded RISC network
processor is used for …
Ser. No. 76/285,088
4
From TELECOMWORLDWIRE (September 26, 2001):
HEADLINE: Virata introduces communications
processor family
BODY: … processor to control and manage the
direct connections to Ethernet and USB and to
handle Ethernet bridge filtering and advanced
DMA functions. A protocol processor,
meanwhile, runs Virata’s bridging and routing
software as well as management and control
functions such as embedded web management and
universal plug and …;
From Business Wire (September 25, 2001):
HEADLINE: Virata Targets the Switch/Router
Market With New Nitrogen Processor Family
BODY: … manages the direct connections to
Ethernet and USB, and handles Ethernet bridge
filtering and advanced DMA functions. The chip
also includes a protocol processor that runs
Virata’s high-level bridging and routing
software as well as management and control
functions such as embedded web management and
UPnP …;
From Business Wire (September 25, 2001):
HEADLINE: Virata Delivers complete “Home
Router Kit” With New Processor, Reference
Designs, and Software Suite
BODY: … manages the direct connections to
Ethernet and USB, and handles Ethernet bridge
filtering and advanced DMA functions. The chip
also includes a protocol processor that runs
Virata’s high-level bridging and routing
software as well as management and control
functions such as embedded web management and
UPnP …;
From PR Newswire (September 13, 2001):
HEADLINE: KC Technology’s MicroPAX™ Bluetooth™
controller Gets BQB Qualification; MicroPAX
Proved Its Functionality Going Through an
Ser. No. 76/285,088
5
Official Qualification Process Compliant with
Bluetooth Spec v1.1
BODY: … much sought MicroPAX Bluetooth
controller KC2680. The MicroPAX KC2680 is a
highly integrated low cost, low power protocol
processor for hosted Bluetooth applications.
Powered only by an 8-bit CPU running at 8 MHz …
From Transmission and Distribution World (September 2001):
HEADLINE: Atlanta IEEE/PES T&D Expo 2001 Show
Guide; Developing Perspectives
BODY: … substation communication, Schweitzer
Engineering Laboratories (SEL), announces its
SEL-2701 Ethernet Processor, an Ethernet
physical interface and protocol processor
specifically designed for the demands of the
electrical industry. Installed into host
devices like the SEL-2030 Communications
Processor and protection and …
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
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). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
Ser. No. 76/285,088
6
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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; that a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, “[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 Corporation, 226 USPQ
365, 366 (TTAB 1985).
Applying these principles in the present case, we find
that the mark applicant seeks to register, PROGRAMMABLE
PROTOCOL PROCESSER, is merely descriptive of the goods
identified in the application, “electronic testing
equipment, namely, telecommunication line integrity testing
apparatus.” Applicant’s goods, as identified, may be used
to test the integrity of a telecommunications line to
determine whether it adheres to a particular
telecommunications protocol, e.g., data transmission rate
Ser. No. 76/285,088
7
in terms of low speed or high speed. Viewed in connection
with applicant’s goods, the mark immediately informs
purchasers of a significant feature or characteristic of
the goods, i.e., that applicant’s testing apparatus
incorporates or employs a processor which can be programmed
or reprogrammed to accommodate different such
telecommunications protocols.
We are not persuaded by applicant’s arguments in
opposition to the mere descriptiveness refusal. Contrary
to applicant’s contention, it is not dispositive that there
may be no dictionary entry for the entire phrase
“programmable protocol processor.” See, e.g., In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Each
of the words in the mark has a readily-understood merely
descriptive meaning as applied to the goods, and they are
as merely descriptive when considered in the composite as
they are when considered separately. Applicant certainly
has not identified any new, inventive or otherwise
distinctive commercial impression which results from the
combining of the three words. Likewise, applicant
misstates the test for mere descriptiveness by contending
that purchasers would not be able to guess, simply by
viewing the mark, what the goods are or what they do. In
re American Greetings Corporation, supra, 226 USPQ at 366.
Ser. No. 76/285,088
8
Applicant also contends that its competitors “may, and
do, use a wealth of other words in any number of
combinations, to describe their competing goods.” Even if
that is so (and applicant has not given any examples of
such alternatives), it would not negate the mere
descriptiveness of applicant’s mark, nor would it justify
registration of that mark. See, e.g., In re The Officers’
Organization For Economic Benefits, Limited, 221 USPQ 184
(TTAB 1984). Finally, it is not dispositive that none of
applicant’s competitors currently uses the term to describe
their goods, or that applicant may be the first or only
user of the term in connection with such goods. See, e.g,
In re National Shooting Sports Foundation, Inc., 219 USPQ
1018 (TTAB 1983).
In summary, we find that applicant’s mark is merely
descriptive of the goods identified in the application, and
that the Trademark Examining Attorney’s refusal to register
the mark is proper.
Decision: The refusal to register is affirmed.