Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V.

Trademark Trial and Appeal Board

Feb 20, 2013

No. 77782984 (T.T.A.B. Feb. 20, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V.
_____

Serial Number 77782984
_____

Jed R. Spencer of Greenblum & Bernstein, P.L.C. for Fraunhofer-Gesellschaft
zur Förderung der angewandten Forschung e.V.

Christine C. Martin, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
______
Before Quinn, Wolfson, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Applicant has appealed the refusal to register the term HD-AAC on the
Supplemental Register for “computer programs for recording, transmission or
reproduction of sound, data or images; electronic products, namely, magnetic audio
and video decoders; apparatus for recording, transmission or reproduction of sound,
data or images; data carriers, namely, magnetic, optical, biological and binary
semiconductor memories” in International Class 9 pursuant to Section 23(c) of the
Serial No. 77782984
2

Trademark Act on the ground that the term is not capable of distinguishing
applicant’s goods, i.e., it is generic.1
As a preliminary matter, the examining attorney objected to applicant’s
submission of new evidence with its appeal brief. Applicant attached web pages and
third-party registrations to its brief. “The record in the application should be
complete prior to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence … after the appeal is filed.”
Trademark Rule 2.142 (d).
An exception to the rule is made when the applicant or the examining
attorney submits excerpts from articles during examination. Under these
circumstances, the Board will allow the non-offering party to submit the complete
article, even if such submission is made after the appeal is filed. In re Bed &
Breakfast Registry, 229 USPQ 818, 820 (Fed. Cir. 1986). Applicant asks us to
extend this rule to websites. We decline to so extend the rule.
The rationale for the exception is that the offering party had the opportunity
to review the entire article before submission and that the portion submitted “is not
thereby insulated from the context from whence it came.” Id. at 820. Unlike

1 Application Serial Number 77782984 was filed on the Principal Register on July 16, 2009
for goods and services in Classes 9, 38, 41, and 42, based on Sections 1(b) and 44(e) of the
Trademark Act. In response to a descriptiveness refusal pursuant to Section 2(e)(1) of the
Trademark Act, on April 21, 2010, applicant deleted the Section 1(b) basis and requested
that the application be transferred to the Supplemental Register, which request was
granted.
With the exception of the goods at issue in this appeal (consisting of some, but not all, of the
goods in Class 9), the examining attorney has approved all of the goods and services for
registration.
Serial No. 77782984
3

articles, the content on websites can change and, if accessed at a later date than the
original submission, the content may be different. Further, unlike an article, web
pages are not linear and any given page can have links to dozens of other pages. As
such, it is hard to determine the complete record of a given website submission;
what part of the original submission is a follow-up page and what part would be
considered new and separate from the original submission.2
With respect to the web pages attached to applicant’s brief as exhibits A and
C, we find that exhibit A is not admissible, but that exhibit C is admissible.
Exhibit A, which is entitled “Some thoughts on DivX AAC encoder (beta 1),” is a
blog portion of the DIVX website on which comments were posted. Applicant
produced it as a “further portion” of the DIVX Labs website that the examining
attorney affixed to the June 1, 2010 Office action. Reply Brief, pg. 3. The pages
attached to applicant’s brief, however, were printed on April 4, 2012, and include
comments that were added after June 1, 2010, and as such, they could not have
been reviewed by the examining attorney at the time she printed the web pages.
Accordingly, the examining attorney’s objection to the website evidence labeled
exhibit A is sustained and we will not consider the web pages.
Exhibit C is the “Pro-Codec Product Overview” from the sonnixplugins.com
website. Applicant submitted this document as a further portion of the same
website that the examining attorney affixed to the July 16, 2011 Office action. The

2 The better practice would have been for applicant to review the documents made of record
by the examining attorney and to file responsive evidence at the earliest time possible, i.e.
with its response to the June 1, 2010 Office action or in a request for reconsideration after
the July 16, 2011 Office action.
Serial No. 77782984
4

examining attorney submitted the “specification” portion of the site. These pages
included a reference to the “overview,” which means the examining attorney could
have reviewed this portion of the site at the time the “specification” portion was
viewed. Accordingly, the examining attorney’s objection to the website evidence
labeled exhibit C is overruled and we will consider the web page.
Finally, the TARR records attached to the brief are untimely. Accordingly,
the examining attorney’s objection to TARR records is sustained and we will not
consider the records.3
Turning back to the Section 23 (c) genericness refusal, the critical issue in
determining whether a term is generic is “whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v. International Ass'n of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Making this
determination “involves a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be registered … understood by the
relevant public primarily to refer to that genus of goods or services?” Ginn, 228
USPQ at 530. Evidence of the public's understanding of a term may be obtained
from any competent source, including dictionaries, trade journals, newspapers and
other publications. See In re Merrill Lynch, 828 F2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987); and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227
USPQ 961, 963 (Fed. Cir. 1985). The relevant public is described by the examining

3 Although we have not considered Exhibit A and the TARR copies, even if we had, the
evidence would not be persuasive of a different result in this case.
Serial No. 77782984
5

attorney as “consumers who record, reproduce, and/or listen to digital audio.”
Examining Attorney’s Appeal Brief, pg. 10. The applicant did not contend that the
description is incorrect. Accordingly, we accept this description of the relevant
public.
The genus (category or class) of the goods in question is products or devices
for recording, processing, transmitting and/or reproducing sound using HD-AAC
(high-definition advanced audio coding).
Applicant is in the business of developing audio codecs.4 November 30, 2010
Response Exhibit 1, pg. 3. Examples of the audio codecs developed by applicant
include mp3 and AAC. Id at pg. 3. “AAC” is a generic term, defined in the
Computing Dictionary as: “advanced audio coding audio – (AAC) A successor to
MP3, allowing lower bit rates and more stable quality.”5 HD-AAC, which is an
acronym for “high-definition advanced audio coding,” is also a codec.6 “HD-AAC
extends AAC to a lossless and near-lossless audio coding scheme.”7 In other words,
HD-AAC is an improvement of the advanced audio coding (AAC) codec.

4 We take judicial notice of the definition of “codec” provided by the examining attorney in
her brief, from The New Penguin Dictionary of Computing, “a contraction of
compress/decompress, a type of software driver or protocol use to create and playback
compressed video and audios files: for example MPEG files require the installation of an
appropriate codec before they can be viewed.
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

5 Definition introduced by the examining attorney in the October 21 Office Action, pg. 10.
6 November 30, 2010 Response Exhibit 1, pg. 1.
7 November 30, 2010 Response Exhibit 1, pg. 5.
Serial No. 77782984
6

As discussed below, the only significance conveyed by the term HD-AAC is
that of a format or codec for compressing and decompressing music files.
The examining attorney has established by clear evidence that the term HD-
AAC is generic for products or devices for recording, processing, transmitting and/or
reproducing sound using HD-AAC (high-definition advanced audio coding) and thus
unregistrable. While the applicant has contested the value of much of the evidence
submitted by the examining attorney, we find that numerous documents produced
by the examining attorney constitute clear evidence of the generic use of the term
HD-AAC, including the following excerpts from documents attached to the Office
action dated June 1, 2010:
• “HD-AAC offers better sound than CDs and the file sizes are small
enough to put online. The codec is based on MPEG-4 SLS, a scalable
lossless format. From now on you don’t have to rip different versions of
your music from different codecs for different devices… That sounds
good. HD-AAC delivers high-quality 24-bit/96KHz files. You will play
these on a home media server, and after that use the base version
(AAC-LC layer) to play back on an iPod.” (myce.com);

• “When consumers purchase HD-AAC files from a Web music store,
they are not just “buying a filename.” HD-AAC files may include all
the art, lyrics, liner notes and metadata that consumers associate with
a tangible purchase. These files can be conveniently copied from
consumer electronics device to device without keeping track of multiple
bitrate copies or associated metadata, and can even be streamed over
home networks at the best possible quality for the available band-
width. HD-AAC is the audio format of the future that, due to its AAC
core layer, also plays on many of today’s legacy devices.”
(webcache.googleusercontent.com);

• “HD-AAC provides the technology to move the digital music paradigm
closer to the CD world. Even as consumers continue to download 128
kbps (or 48/64 kbps in the mobile environment) in AAC (Apple’s iPod)
music format or to rip CDs into lossy quality digital music files using
iTunes or other similar music jukebox applications, HD-AAC enables
Serial No. 77782984
7

the possibility (and capability) to add-on the rest of the music layers to
create and experience lossless quality music listening.” (www.exploit-
tech.com);

and the following excerpts from documents attached to the Office action dated
December 20, 2010:
• “Recently, the combination of SLS (Scalable Lossless coding) and AAC
(Advanced Audio Coding) coder is renamed as ‘High Definition
Advanced Audio Coding’ (HD-AAC). It is observed that HD-AAC can
be further improved at intermediate enhancement bitrate when the
core bitrate is low. Perceptually Prioritized Bit-Plane Coding for High-
Definition Advanced Audio Coding (http://ieeexplore.ieee.org);

• “HD-AAC profile and MPEG Surround signaling” International
Organization for Standardization (http://www.iso.org);

• “The High Definition AAC (HD-AAC) Profile contains the audio object
types 2 (AAC LC) and 37 (SLS).” International Organization for
Standardization Organisation Internationale de Normalisation
ISO/IEC JTC 1/SC 29/WG 11 coding of moving pictures and audio
(www.itscj.ipsj);

• “MPEG-4 High Definition Advanced Audio Coding (HD-AAC) enables
scalable-to-lossless (SLS) audio coding with Advanced Audio Coding
(AAC) base layer, and fin-grained enhancements based on the MPEG
SLS standard… A novel trellis-based algorithm for optimization of the
HD-AAC encoding process in proposed.” Joint Optimization of the
Perceptual Core and Lossless Compression Layers in Scalable Audio
Coding, Department of Electrical and Computer Engineering,
(www.scl.ece.ucsb.edu); and

• “…the quality of different types of audio coded by the enhanced HD-
AAC is more stable at the same bitrate…. The perceptual quality of
output audio at intermediate bitrates is improved by using the
proposed method comparing with the original HD-AAC for most of
audio sequences.” (http://books.google.com).

Moreover, the evidence made of record by applicant also establishes that HD-
AAC is a generic term for products or devices for recording, processing, transmitting
and/or reproducing sound using HD-AAC (high-definition advanced audio coding).
Serial No. 77782984
8

For example, in Exhibit 1 to applicant’s November 30, 2010 response, which is
entitled, “HD-AAC by Fraunhaufer IIS HIGH-DEFINITION ADVANCE AUDIO
CODING -NEW MPEG AUDIO CODEC RENDERS CD COLLECTIONS
OBSOLETE,” applicant provides information about HD-AAC and its uses,
including:
• The new HD-AAC codec offers music quality superior to the CD and
compatibility with iPods and AAC enabled mobile phones. Based
on the MPEG-4 standards SLS and AAC-LC, Fauhofer’s HD-AAC
provides future-proof, lossless compression of 16/24-bit quality
music content. --- The underlying objective for HD-AAC, therefore,
is to make this new high-quality sound experience conveniently
available to consumers, electronic music distribution services and
the consumer electronics industry;

• Online Music Distribution: Consumers will be able to buy content
at online music stores that sounds better than Audio-CD. For
casual listening, HD-AAC files can be played on all iPods and other
AAC enabled devices;

• Home Media Servers and Connected Devices: In the modern,
digital music-ready home, songs stored on media servers in the HD-
AAC format can be streamed to multiple devices at varying bit-
rates. This maximizes the sound quality under difficult network
conditions…The same files stored on portable devices can also be
enjoyed in the car when docked to high-end sound systems. In
addition, car radios will be able to convert music contained on CDs
into the HD-AAC format;

• Digital Archiving: Consumers and digital archives
have the opportunity to archive music productions and
CD collections for the future by encoding content in
the HD-AAC format. Every aspect of the original
information is preserved and ready to be played back
through compatible devices; and
• Technology: Based on the MPEG-4 Scalable to Loseless Coding
(SLS) technology, HD-AAC extends AAC to a lossless and near-
lossless audio coding scheme. Building upon MPEG-4 AAC, a
scalable extension layer further enhances the signal representation
progressively from perceptually transparent to near-lossless to a
Serial No. 77782984
9

lossless representation. At the latter stage HD-AAC achieves an
average compression ratio of about 50 percent (2:1), comparable or
superior to other state-of the art pure lossless codecs.

Exhibit 2 to applicant’s November 30, 2010 response, which is an article
posted on the myce site (www.myce.com), is entitled “CD is history HD-AAC is the
future.”8. The article states:
“The minds behind MP3 and MPEG4 codecs have come up
with a new audio format. This format could mean the end
of our beloved CD. Scientists of the Fraunhofer Institute
for Integrated Circuits state that HD-AAC could be the
future.
HD-AAC offers better sound than CDs and the file sizes
are small enough to put online. The codec is based on
MPEG-4SLS, a scalable lossless format. From now on you
don’t have to rip different versions of your music from
different codecs for different devices…That sounds good.
HD-AAC deliver[e]s high-quality 24-bit/96KHz files. You
will play these on a home media server, and after that use
the base version (AAC-LC layer) to play back on an iPod.
If this really is the future we from CDFreaks.com should
do something with the name…HD-AAC? How do you
pronounce that? Anyone has a better name? Already
heard MPEG5 somewhere else.”
There were numerous responsive postings, which show the relevant public’s
understanding of the term “HD-AAC.”
• “Wait what? So how does this compare to other
lossless compression? The only advantage that I
see here is that you can extract a standard AAC file
from it to play on your iPod …”;
• “Unless HD-AAC provides better compression than
FLAC, what we really need is playback support for
FLAC in portable devices”;

8 The examining attorney also quoted from this article.
Serial No. 77782984
10

• “Considering the fact that most of the music
produced today is garbage, I don’t think that such
demand for the so called ‘high definition’ is that
big”; and
• “Well I guess the main advantage here is the ability
to (hopefully easily enough) extract the smaller
size, lower bitrate AAC-LC layer … anyway this
has already been done with WavPack and it’s
almost perfect…”
Other evidence proffered by applicant also reflects the generic nature of the
term, e.g. Exhibit C to the Appeal Brief, entitled ““Pro-Codec Product Overview”
from sonnixplugins.com, lists “Features of the Sonnox Fraunhofer Pro-Codec,”
including the following supported codecs: mp3, mp3 Surround, AAC-LC, HE-AAC,
and HE-AACv2, mp3-HD and HD-AAC (Lossless Codecs).
Despite its tacit acknowledgement that mp3 and AAC are generic terms,9
applicant contends that since it developed HD-AAC, the product is associated with
applicant and further that “every piece of evidence that [e]xamining [a]ttorney has
provided as evidence refers to [a]pplicant as the origin of the goods at
issue/originator of the mark, or uses the [m]ark in connection with the commonly-
defined generic terms for [a]pplicant’s goods provided under the [m]ark.” Appeal
Brief, pg. 4.
“The fact that an applicant may be the first or only user of a generic
designation … does not justify registration if the only significance conveyed by the
term is that of the category of goods.” In re Greenliant Systems Ltd., 97 USPQ2d

9 Both AAC and mp3 are used as generic terms in evidence produced by both the applicant
and the examining attorney.
Serial No. 77782984
11

1078, 1083 (TTAB 2010). See also In re Stanbel Inc., 16 USPQ2d 1469, 1472 (TTAB
1990); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX
held generic for mineral licks for feeding livestock).
In light of the evidence of record, applicant’s other arguments that the term
HD-AAC is not generic are similarly not persuasive. First, Applicant contends that
a single term, HD-AAC, cannot be the generic term for all of the goods at issue.
Appeal Brief, page 6. Applicant is incorrect. A generic term can encompass a range
of products. See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988);
affirmed unpublished at 10 USPQ2d 1879 (Fed. Cir. 1989).
The goods at issue are “computer programs for recording, transmission or
reproduction of sound, data or images; electronic products, namely, magnetic audio
and video decoders; apparatus for recording, transmission or reproduction of sound,
data or images; data carriers, namely, magnetic, optical, biological and binary
semiconductor memories.” All of these goods involve “high-definition (HD)
formatting.” See: amendment to Class 9 goods in response dated April 21, 2010.
While some of the foregoing items may not fall within the category of class of
products or devices for recording, processing, transmitting and/or reproducing
sound using high-definition advanced audio coding, at least some of the goods, such
as computer programs for recording, transmission or reproduction of sound;
electronic products, namely, magnetic audio decoders; and apparatus for recording,
transmission or reproduction of sound, would fall within this category. It is settled
law that registration will be refused for a term that is generic of a category or class
Serial No. 77782984
12

of products where some but not all of the goods identified fall within that category.
See In re Analog Devices Inc., 6 USPQ2d at 1810. Therefore, if the mark is deemed
generic, the refusal will apply to all of the goods at issue.
Next applicant contends that the generic terms for its goods are “one or
several of the following terms: MPEG, MPEG-4, MPEG SLS, codec, MPEG-4 codec,
or lossless audio codec,” and thus HD-AAC would not be considered a generic term.
Appeal Brief, pg. 7. Initially we note that applicant has provided seven generic
terms for its product. The generic nature of these terms does not contravene a
finding that HD-AAC is a generic term for applicant’s goods since, as applicant has
shown, there can be more than one generic term for a particular genus of goods. See
In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir.
2009).
Finally, applicant contends that HD-AAC must be deemed descriptive and
not generic because it is an adjective used in connection with the noun, “codec.” We
readily acknowledge the sometimes-used distinction that generic names are nouns
and descriptive terms are adjectives.10 However, this case does not present the
classic case of a generic noun. Since the term HD-AAC directly names the most
important or central aspect or purpose of applicant's goods, that is, that products or
devices for recording, processing, transmitting and/or reproducing sound using

10 “A rule of thumb sometimes forwarded as distinguishing a generic name from a
descriptive term is that generic names are nouns and descriptive terms are adjectives …
However, this ‘part of speech’ test does not accurately describe the case law results.” In re
Central Sprinkler Co., 49 USPQ2d at 1199 referencing 2 J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, Section 12:10 (4th ed. 2012)
Serial No. 77782984
13

high-definition advanced audio coding (HD-AAC), HD-AAC is generic and should be
freely available for use by competitors. See In re Central Sprinkler Co., 49 USPQ2d
at 1199 and the following cases cited therein: In re Northland Aluminum Products,
Inc., 777 F.2d 1566, 227 USPQ 961, (Fed. Cir. 1985) [BUNDT for coffee cake held
generic]; In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970)
[CUSTOMBLENDED for gasoline held generic because category of gasoline was
blended personally for the motorist]; In re Helena Rubinstein, Inc., 410 F.2d 438,
161 USPQ 606 (CCPA 1969) [PASTEURIZED for face cream held generic]; In re
Preformed Line Products Co., 323 F.2d 1007, 139 USPQ 271 (CCPA 1963)
[PREFORMED for preformed electrical equipment held generic]; Roselux Chemical
Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (CCPA 1962)
[SUDSY for aqua ammonia containing a synthetic detergent held generic]; Servo
Corp. of America v. Servo-Tek Products Co., 289 F.2d 955, 129 USPQ 352 (CCPA
1961) [SERVO for servomechanisms held generic]; J. Kohnstam, Ltd. v. Louis Mark
& Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960) [MATCHBOX for toy vehicles held
generic because that category of toy cars was sold in matchbox-sized boxes]; In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) [MULTI-VIS for multiple
viscosity motor oil held generic]; In re Reckitt & Colman, North America Inc., 18
USPQ2d 1389 (TTAB 1991) [PERMA PRESS for soil and stain removers held
generic]; In re National Patent Development Corp., 231 USPQ 823 (TTAB 1986)
[ULTRA PURE for biological interferons for medical use held generic]; Fluid Energy
Processing & Equipment Co. v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981)
Serial No. 77782984
14

[FLUID ENERGY for hydraulic/pneumatic equipment held generic]; Copperweld
Corp. v. Arcair Co., 200 USPQ 470 (TTAB 1978) [COPPERCLAD for copper-coated
carbon electrodes held generic]; In re Demos, 172 USPQ 408 (TTAB 1971)
[CHAMPAGNE for salad dressing held unregistrable]; and Ethicon, Inc. v.
Deknatel, Inc., 183 USPQ 503 (TTAB 1963) [COTTONY for sutures held generic].
Based on the record, we find that the term HD-AAC is generic for some or all
of the goods described as “computer programs for recording, transmission or
reproduction of sound, data or images; electronic products, namely, magnetic audio
and video decoders; apparatus for recording, transmission or reproduction of sound,
data or images, data carriers, namely, magnetic, optical, biological and binary
semiconductor memories” and, thus, not registrable on the Supplemental Register.
Decision: The refusal to register is affirmed. The goods at issue in this
appeal will be deleted. The application will then be registered on the Supplemental
Register.