JVC Americas Corp.

Trademark Trial and Appeal Board

Jul 18, 2001

No. 75474474 (T.T.A.B. Jul. 18, 2001)

7/18/01 Paper No. 16
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JVC Americas Corp.
________

Serial No. 75/474,474
_______

Morton Amster of Amster, Rothstein & Ebenstein for JVC
Americas Corp.

Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
JVC Americas Corp. has filed an application to
register on the Principal Register the mark shown below

for “automatic set-up feature of video cassette recorder
which provides automatic clock setting and automatic
channel setting and scanning” in International Class 9.1

1 Application Serial No. 75/474,474, filed April 27, 1998, based
on applicant’s claimed first use and first use in commerce date
of January 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/474474
2
Registration has been refused under Section 6(a) of
the Trademark Act, 15 U.S.C. §1056(a) on the basis of
applicant’s failure to comply with a requirement to
disclaim the words “PLUG & PLAY.” Such words, according to
the Examining Attorney, are merely descriptive of
applicant’s goods within the meaning of Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), and therefore
must be disclaimed.
When the refusal to register was made final, applicant
appealed to this Board. Both applicant and the Examining
Attorney have filed briefs. Applicant did not request an
oral hearing.
Applicant contends that the word portion of its mark
is suggestive of the goods as it does not immediately
convey an idea about the automatic set-up feature for VCRs
which provides automatic clock setting and automatic
channel setting and scanning; that the words “plug & play”
could suggest any number of other goods and features of
other goods, as shown by the Examining Attorney’s evidence
relating to computers; that several of the articles
retrieved from the Nexis database refer to applicant’s
products when discussing the “Plug & Play” feature; that
the limited number of Nexis articles including allegedly
descriptive uses of the phrase “plug and play” is an
Ser. No. 75/474474
3
insufficient basis to conclude that the phrase is widely
understood as descriptive; that the word portion of the
mark together with the plug and cord design create a
unitary expression thus negating the need for a disclaimer;
that “under the doctrine of fair use, third parties will
still be able to use the elements PLUG and PLAY in
connection with VCRs. See 15 U.S.C. § 33(b)(4)...)”
(Supplemental Brief, p. 3); and that any doubt on the issue
of descriptiveness resulting in a disclaimer should be
resolved in favor of applicant.
It is the Examining Attorney’s position that “plug &
play” (or “plug and play”) “is a common phrase used in the
computer and home electronics field to refer to an
automatic set-up feature of an electronic product such as a
home computer or a VCR” (brief, p. 3); that in a VCR
containing such a capability, the correct clock and timer-
recording settings, available channel settings and the
like, can be automatically set up merely by plugging in the
unit; that when such a VCR unit is “plugged” in, it is
ready to “play” because it has a capability or feature
known as “plug and play”; that when the mark is viewed in
its entirety, the phrase “plug & play” is an unregistrable
component of applicant’s composite mark; and that the words
Ser. No. 75/474474
4
“plug & play” are not so integrated into the design that
they need not be disclaimed.
As evidence in support of his position, the Examining
Attorney submitted, inter alia, a definition of “plug and
play” from the techweb.com online encyclopedia, and several
excerpted stories from the Nexis database.
The techweb.com online encyclopedia defines “plug and
play” as follows (underlining in original):
1. The ability to add a new component
and have it work without having to
perform any technical analysis or
procedure. 2. (Plug and Play) Also
known as PnP, it is an Intel standard
for the design of PC expansion boards.
Plug and Play is supported directly in
Windows 95/98. It eliminates the
frustration of configuring the system
when adding new peripherals. ...

While the second definition relates to computers,
there is no such limitation to the meaning given in the
first definition. In addition, the following examples
(emphasis added) of the excerpted Nexis stories
specifically relate “plug and play” to VCRs:
Headline: VIDEOCASSETTE RECORDERS.
TEST. How to buy a VCR (Expect good
picture quality. But some useful
features aren’t widespread.); which
features do you need?
...In our tests, some models drew low
standby power.
Movie advance. Enables viewers of
video movies to skip through the
previews and get quickly to the feature
Ser. No. 75/474474
5
film. It’s not common; in our tests,
only 1 and 10 had this feature.
Plug and play. Does away with setup
preliminaries. Automatically sets the
clock and channels when the VCR is
attached to a cable or antenna and
plugged in. Not common; found on 8 and
14 in our tests.
Universal remote control. Controls not
only the VCR, but also cable boxes and
TV sets of a large number of brands...,
“Consumer Reports,” November 1998;

Headline: VCRs learn new tricks; While
the cost of VCRs continues to fall, the
machines keep getting smarter and
adding features
...If you’re drawn to special features,
you can find VCRs that will: ...
∗Movie advance: It skips through the
movie trailers at the beginning of a
video and returns to regular play when
the real movie begins.
∗Plug and play: Need to setup your new
VCR? Just connect the antenna and plug
in the VCR. Everything from setting
the clock to recording the available
channels is registered automatically.
∗SmartFile: Can’t remember which show
you recorded on which tape? Sony VCRs
with SmartFile register programming
information on a small chip embedded in
special labels. Just...it displays the
information on-screen. The chips can
be rewritten up to 100,000 times.
SmartFile is available on the 450 SLV-
M10HF model released this month.
∗SpeakEZ voice prompts: Available on all
Zeniths, this feature talks you through
VCR setup and programming..., “The Des
Moines Register,” June 23, 1998;

Headline: Programming the VCR gets
easier
...If you’re drawn to special features,
you can find VCRs that will:
...
Ser. No. 75/474474
6
∗Plug and play: Need to setup your new
VCR? Connect the antenna, plug in the
VCR, and consider it done, with this
handy feature. Everything from setting
the clock to recording the available
channels is registered automatically.
Various manufacturers may call this
feature by different names, such as
easy setup or smart setup.
..., “The Detroit News,” June 19, 1998;

Headline: New Mac Blazes Technology
Trails
...the Quadra 840AV also has four video
I/O ports: in and out ports for both
composite video and S-video. With the
right software, video capture to a
QuickTime movie is practically plug-
and-play. I connected a portable VCR’s
output to the Mac’s composite video
input, fired up a video-capture
application from VideoFusion (a demo
version of the program comes bundled
with the Mac), watched the incoming
live video in a ..., “Byte,” January
1994;

Headline: Video machine: True Desktop
Video
...VM can drive the VCRs using Control-
L/Control-S or five-pin Syncro Edit
control protocols. ... A significant
plus for VM is its two on-board frame
synchronizers, which function as TBCs
(timebase correctors). As owners of
NewTek’s Toaster discovered, the
toaster is not plug-and-play unless you
plug in the TBCs, too...., “Byte,”
September 1993; and

Headline: VIDEO PLAYERS. TEST. Getting
the picture (A guide to your options
for playback, taping, and programmed
recording.); Which features do you
need?
...
Helpful VCR features
Ser. No. 75/474474
7
Plug and play. You connect the VCR to
the cable system or an antenna, then
plug it in. It reads signals from
broadcasters to automatically program
the channels and the clock.
Auto clock set. A VCR with this
feature can read broadcast signals to
automatically set the time and date.
No more blinking “12:00.”

VCR features for programming and
editing
Cable-channel changer. ...
Power backup. ...
VCR plus. ...
Search. ...
Auto speed-switching. ...
Editing features. ...
Front audio-video jacks. ...

Features at a glance
VCRs
Key no.
Plug and play
..., “Consumer Reports,” December 1999.

The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term or phrase immediately conveys information
concerning a significant quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Venture Associates, 226 USPQ 285 (TTAB 1985); and In
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). The
determination of mere descriptiveness must be made in
relation to the goods or services for which registration is
Ser. No. 75/474474
8
sought, the context in which the term or phrase is being
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). That
is, the question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
The Examining Attorney has established a prima facie
case that the phrase “plug & play” is merely descriptive of
applicant’s goods, “automatic set-up feature of video
cassette recorder which provides automatic clock setting
and automatic channel setting and scanning.” The above
quoted Nexis stories clearly establish that “plug and play”2
will immediately be understood by purchasers and
prospective purchasers for its common meaning which is that
the VCR has a “plug and play” feature or capability.

2 We find no distinction between “plug and play” and “plug &
play.”
Ser. No. 75/474474
9
Several of the stories specifically refer to automatic
clock setting and automatic channel setting for VCRs, and
applicant’s goods are precisely that automatic set-up
feature for VCRs.
Applicant’s argument that the stories relating to
computers do not establish the meaning with regard to VCRs
may have merit. However, there is sufficient evidence
specifically relating “plug & play” to VCRs to establish
the descriptive meaning with relation thereto.
While applicant argues that some of the excerpted
stories from the Nexis database refer to applicant’s
products, applicant did not cite to any specific excerpted
story referring to applicant’s products. In fact, several
of the stories refer to certain VCR features in relation to
a particular manufacturer (e.g., SmartFile on Sony VCRs,
SpeakEZ voice prompts on Zenith VCRs), but there is no such
reference to applicant with regard to the “plug and play”
feature. In addition, some of the Nexis stories refer to
“plug and play” in a general descriptive sense. We find
the phrase “plug & play” is merely descriptive of
applicant’s identified goods.
Next, we must determine whether the words and design
form a unitary mark negating the need for a disclaimer. In
order to decide that question, we must consider whether the
Ser. No. 75/474474
10
mark as a whole creates a commercial impression separate
and apart from any unregistrable component. See TMEP
§1213.06. In this case, we agree with the Examining
Attorney that the design feature is not so integrated with
the words as to be unitary. The mark, as displayed on the
specimens of record, (photographs on which the relevant
wording is somewhat difficult to read), would be perceived
by purchasers as essentially the terms “plug & play,” in
the descriptive context established in this case. That is,
the depiction of a plug and a cord does not negate the
descriptive significance of the words “plug & play” as
applied to automatic clock and channel setting set-up
features for VCRs. The slightly elongated line coming down
from the ampersand appears to be merely a fanciful
ampersand font. The plug design on the tail of the “Y” in
the word “PLAY” is also not of such significance that the
composite mark creates a commercial impression that is
wholly separate and distinct from the words “plug & play.”
Inasmuch as the visual presentation of the mark does not
form a unitary whole, the phrase “plug & play” must be
disclaimed. See Dena Corp. v. Belvedere International
Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re
Lean Line, Inc., 229 USPQ 781 (TTAB 1986); In re IBP, Inc.,
228 USPQ 304 (TTAB 1985); and In re Truckwriters Inc., 219
Ser. No. 75/474474
11
USPQ 1227 (TTAB 1983), aff’d unpubl’d Appeal No. 84-689
(Fed. Cir., November 1, 1984). Cf. In re Texsun Tire and
Battery Stores, Inc., 229 USPQ 227 (TTAB 1986).
Finally, applicant’s argument that third parties would
still be able to use the words “plug” and “play” is of
little merit. There is sufficient evidence of record to
show that purchasers will understand “plug & play” to refer
to a certain set-up feature of a VCR, namely, one which
automatically sets the clock and the channel settings.
That is, the phrase unquestionably projects a merely
descriptive connotation, and we believe competitors would
have a competitive need to use this phrase, not the words
separately as argued by applicant. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2000).
Decision: The requirement under Section 6 for a
disclaimer of the words “plug & play” is proper. In the
absence of a disclaimer of “plug & play,” the refusal to
register is affirmed. If a disclaimer is entered within
thirty days from the mailing date hereof, this decision
will be vacated and the mark will then be published for
opposition. See Trademark Rule 2.142(g).