Immersive Design, Inc.

Trademark Trial and Appeal Board

Jan 13, 2000

No. 75200113 (T.T.A.B. Jan. 13, 2000)

Paper No. 13
DEB
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB 1/13/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Immersive Design, Inc.
________
Serial No. 75/200,113
_______
Patrick R. Roche of Fay Sharpe Beall Fagan Minnich & McKee
for Immersive Design, Inc.
Glenn G. Clark, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney)
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Immersive Design, Inc. has filed an application to
register the mark “Interactive ! PreAssembly,” for “computer
software for use by engineering and manufacturing companies
to communicate product form and function through
visualization or animation of product design,” in
International Class 9.1

1 Serial No. 75/200,113, in International Class 9, filed
November 19, 1996, claiming dates of first use of November 1,
1995.
Serial No. 75/200,113
2
The Trademark Examining Attorney issued a final refusal
to register based upon Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e)(1), on the ground that applicant’s mark
is merely descriptive of the goods.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
Before considering the substantive issue herein, we
deal first with an objection made by the Trademark Examining
Attorney to electronic search results of third-party
registrations submitted as an appendix to applicant's appeal
brief, as well as applicant’s objection to the request of
the Examining Attorney that we take notice of a dictionary
definition of “interactive system” which entry was attached
to his appeal brief.
We agree with the Trademark Examining Attorney that the
fifteen third-party, federal registrations attached to
applicant’s brief (Exhibit “B”) were not properly made of
record. These registrations purported to show instances
where the Patent and Trademark Office had registered the
word “Interactive” within composite marks, in connection
with computer software, without requiring disclaimers
thereof. However, in order to make third-party
registrations of record, soft copies of the registrations or
Serial No. 75/200,113
3
photocopies of the appropriate U.S. Patent and Trademark
Office electronic printouts should be submitted. See
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). This
was not done. Furthermore, the printouts of the search
results were merely printouts attached to applicant’s appeal
brief. Copies of the registrations are to be made part of
the record prior to the time of the appeal. See, 37 CFR
2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). In his appeal brief, the Trademark Examining
Attorney never treated these registrations as if of record,
and explicitly objected thereto.2 Hence, because applicant
failed to comply with the established rules as to the form
and timing for the submission of the evidentiary record in
an application, we have not considered this evidence in
reaching our decision.
Applicant's request that we not take judicial notice of
the definition of “interactive system” from a computer
dictionary is not well taken and is denied. We may take
judicial notice of facts of universal notoriety,3 which need

2 Presumably, if these registrations had been timely submitted
by applicant in an appropriate form, the Trademark Examining
Attorney would then have had opportunity to proffer copies of
federal registrations for computer software applications where the
term “interactive” was disclaimed.
3 Judicial Notice: “…the cognizance of certain facts which
jurors and judges may properly take and act upon without proof,
because they already know them.” Black's Law Dictionary (1990).
Serial No. 75/200,113
4
not be proved, and of whatever is generally known within our
jurisdiction. See Brown v. Piper, 91 U.S. 37, 42 (S. Ct.
1875). To that end, dictionaries may be consulted. United
States v. Merck & Co., 8 Ct.Cust.Appls. 171 (1917).
Applicant objects to this “so-called definition” without
making any allegations about the infirmities of this
particular dictionary. Furthermore, the statement from the
submitted definition to which applicant objects, “Nowadays
[1996] almost all computing is interactive…,” appears to us
not to be a contentious inference in need of further proof.
Under the guidance of Fed.R.Evid. 201(b) and (f), we
conclude that this is an appropriate occasion for using
judicial notice. We find that computer dictionary
definitions are suitable subject matter for judicial notice
by the Board. See, 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);
In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 423
(CCPA 1962) at n. 6; and Hancock v. American Steele & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953). Additionally, the Board has, in the past, taken
judicial notice of dictionary listings sua sponte, or when
submitted by the Trademark Examining Attorney after the
notice of appeal. Accordingly, we have taken notice of the
Serial No. 75/200,113
5
definitions submitted with the Examining Attorney’s brief as
requested therein. See In re Tekdyne Inc., 33 USPQ2d 1949
(TTAB 1994).
Furthermore, even in the absence of this latest
dictionary evidence, we would affirm the refusal on the
basis of the other evidence made of record by the Trademark
Examining Attorney. The entire record of this case before
the Board fully supports this conclusion. For example,
perhaps the best evidence of record as to the meaning of the
word “interactive” in the field of computer programs
includes applicant’s own user’s guide. These specimens
demonstrate the context in which applicant repeatedly uses
this term in a descriptive or generic sense.4
The sole question to be determined herein is whether
the designation “Interactive ! PreAssembly,” is descriptive of
features, characteristics, intended purposes, functions, or
uses of applicant’s goods, as contended by the Trademark
Examining Attorney; or whether, as urged by appellant, this
is a coined term, not used by anyone else in connection with
goods of the type sold by applicant, that the term sought to
be registered is incongruous, and therefore meaningless as
applied to the goods, and that the Examining Attorney is

4 “Interactive ! PreAssembly (IPA) is an interactive visualization
and animation system…” p.1-1 (emphasis supplied).
Serial No. 75/200,113
6
improperly dissecting the mark in this attempt to conclude
that it describes the goods. Applicant concludes that this
matter should be considered, at worst, suggestive of the
identified goods.
We must consider the question of descriptiveness under
Section 2(e)(1) with respect to the goods as stated in the
application, i.e., “computer software for use by engineering
and manufacturing companies to communicate product form and
function through visualization or animation of product
design.”
Applicant’s literature and the above identification of
goods both stress that this product is a specialized
communications tool. This desktop computer application
permits complex, information to move in real time among
those involved in product design, development, creation,
training, sales and service. The large organization using
this software reaps the benefits of cross-functional
collaboration as to the form and function of a new product.
This is an “interactive” application, as computer software
programmers and users understand that term.5 If the mark

5 In re Omaha National Corporation, 819 F2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [“FirsTier” -- the phonetic equivalent of "first
tier" -- is merely descriptive of banking services because
corporate users of banking services who understand the industry
meaning of a "first tier" bank constitute "average" or "ordinary"
customers]; and In re Intelligent Instrumentation Inc., 40 USPQ2d
1792 (TTAB 1996) [“VISUAL DESIGNER,” is descriptive for “computer
Serial No. 75/200,113
7
consisted solely of the word “Interactive,” we would readily
sustain the instant refusal under Section 2(e)(1) as being
merely descriptive of a critical feature of these goods.
We turn next to the “PreAssembly” portion of
applicant’s alleged mark. During the design phase of a
complex product, it has traditionally been necessary to
construct costly, full-scale mock-ups of the product. In
this digital age, it is clear that one of the advantages of
computer aided design (CAD) to the manufacturer of an
innovative, new product is the use of sophisticated digital
preassembly applications. Even during the conception phase
of product development, the product can be “preassembled” on
the computer, eliminating the need for a costly prototype.
Clearly, the goods as defined are used by professionals
accustomed to working with CAD programs. Such consumers,6
when confronted with applicant’s alleged mark for the
identified goods, will immediately conclude that the
software allows for interactive computer simulations of
proposed products prior to the assembly of a solid model,

programs for controlling the acquisition of data from measurement
devices for the purposes of analysis, display, testing and
automatic control,” especially because the sophisticated and
technically knowledgeable purchasers and users of applicant’s
goods would be familiar with the programming trade’s uses of the
generic terminology “visual design tools” in connection with
software development tools such as applicant's computer
programs].
6 Id.
Serial No. 75/200,113
8
prototype or the first manufactured item. Accordingly, if
the mark consisted solely of the word “PreAssembly,” we
would readily sustain a refusal under Section 2(e)(1) as
being merely descriptive of another critical feature of
these goods.
This alleged mark comprises two critical features of
the software application -- both of which are merely
descriptive. When these two components are joined, the
Trademark Examining Attorney argues that the combined
phrase, “Interactive PreAssembly,” contains no incongruities
or unusual results, and hence is still merely descriptive.7
Applicant has not made a persuasive case to the contrary,
and we agree with the Trademark Examining Attorney on this
key point. The facts herein are quite similar to the facts
in In re International Game Technology Inc., 1 USPQ2d 1587,
1588-89 (TTAB 1986):
We hold the term “ON-LINE, ON-DEMAND” to be
merely descriptive of applicant's computer lottery
terminals. It is well settled that a term which,
when applied to the goods, forthwith conveys to
prospective purchasers information as to the
characteristics or features of the goods, is
merely descriptive of the goods. In re Bright-

7 See also In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994)
[“SCREEN FAX PHONE” is merely descriptive of applicant’s goods
absent anything incongruous in the combination of these three
words]; and In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989)
[“COMPUTER SONAR” is generic for “sonar apparatus for detecting
the depth of water and the depth of objects and fish in the
water,” because the combination of the two generic terms is not
incongruous].
Serial No. 75/200,113
9
Crest Ltd., 204 USPQ 591 (TTAB 1979).
Descriptiveness is determined from the viewpoint
of the relevant purchasing public, In re Abcor
Development Corp., 588 F.2d 811, 814, 200 USPQ
215, 218 (CCPA 1978), and must be considered in
relation to the particular goods in connection
with which the mark is used. In re Universal
Water Systems, Inc., 209 USPQ 165 (TTAB 1980).
The evidence submitted by the Examining Attorney
establishes that the two component terms that make
up the mark have readily understood meanings as
applied to applicant’s goods. Applicant has not
made of record any evidence to contradict this
fact. The combination of the two merely
descriptive terms does not result in an unusual or
incongruous result. As the Examining Attorney
points out, the situation here is rather like
using "white, granulated" to describe sugar. The
descriptive significance of each term is not
altered by combining it with the other descriptive
term. The result of the combination is simply
that more information about the characteristics of
the applicant’s computer lottery terminals is
provided than if only one of the descriptive terms
were used by itself. See In re Nash-Fitch Co.,
160 USPQ 210 (TTAB 1968), where “TENDER FRESH” was
held unregistrable on the Supplemental Register
for fresh cut chickens. Applying the ordinary
meanings to the words which make up a mark does
not constitute improper dissection of the mark in
this case, nor does it result in any incongruity.
Applicant's argument that the mark is not
merely descriptive because the term is not used by
anyone else is not well taken. A merely
descriptive term used first or only by one party
is no less descriptive because of its limited use,
nor is it registrable as long as the relevant
public perceives of the term as describing the
goods.
In summary, because the term sought to be
registered would immediately convey to purchasers
of computer lottery terminals that the terminals
operate on-line and provide tickets on demand, the
term is merely descriptive of the goods and
unregistrable under Section 2(e)(1) of the Act.
Applicant argues that the Trademark Examining Attorney
has incorrectly “dissected” this designation. We disagree
with this argument. As seen above, multiple descriptive
Serial No. 75/200,113
10
terms such as “SCREEN FAX PHONE” and “COMPUTER SONAR” are
still merely descriptive absent anything incongruous in the
combination of the several words.8
Accordingly, we find that the term “Interactive ! PreAssembly”
is merely descriptive for “computer software for use by
engineering and manufacturing companies to communicate
product form and function through visualization or animation
of product design.”
Decision: The refusal to register is affirmed.
R. L. Simms
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

8 Moreover, the drawing herein shows a large, raised dot after
the word “Interactive” and before the term “PreAssembly. This
presentation in the special form drawing calls to mind the Board’s
conclusions about “ON-LINE, ON-DEMAND,” where a comma separates
the two descriptive terms. cf. International Game Technology
Inc., supra.