Matsushita Electric Corp. of America

Trademark Trial and Appeal Board

May 18, 2001

No. 75419366 (T.T.A.B. May. 18, 2001)

5/18/01
GFR
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Matsushita Electric Corporation of America
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Serial No. 75/419,366
_______
Morton Amster of Amster, Rothstein & Ebenstein for
Matsushita Electric Corporation of America.
James T. Griffin, Trademark Examining Attorney, Law Office
103 (Daniel Vavonese, Acting Managing Attorney).
_______
Before Simms, Cissel and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Matsushita Electric Corporation of America seeks to
register PALMTHEATER as a mark for goods identified as
"portable digital video disc players."1 Registration has
been refused under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that, as used on or in
1 Serial No. 75/419,366, filed January 16, 1998, based upon an
allegation of a bona fide intention to use such term in commerce.
The application was subsequently amended to assert April 30, 1998
as the date of first use and first use in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/419,366
2
connection with applicant's goods, the mark is merely
descriptive of them.
When the Examining Attorney made the refusal final,
applicant appealed. Briefs were filed, but an oral hearing
was not requested. We affirm the refusal of registration.
As a preliminary matter, we note that the application
includes a disclaimer for the term "theater." Applicant,
however, entered that disclaimer when applicant's mark was
set forth as PALM THEATER (two words rather than one) and a
previous Examining Attorney had determined that that mark
would be registrable with such a disclaimer. After
applicant's amendment to allege use was filed, the same
Examining Attorney determined that the mark should properly
be set forth as one word (and should be refused
registration). Applicant filed an amended drawing of the
mark with its brief, setting forth the mark as one word.
The current Examining Attorney has indicated in his brief
both that the amended drawing is acceptable and that the
disclaimer now is not necessary, in view of the unitary
nature of the amended mark. Accordingly, the Board has
corrected Office records to delete the disclaimer.
The Office bears the burden of setting forth a prima
facie case in support of a descriptiveness refusal. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Ser. No. 75/419,366
3
To meet the Office's burden, the Examining Attorney has
made of record excerpts of articles retrieved from the
NEXIS database of publications, some of which show use of
"palm-size(d) DVD," and one of which shows use of "Portable
DVD Theater"2; various definitions of the term "palm" from
the online edition of The American Heritage Dictionary of
the English Language; reprints of information from the
Office's search system regarding registered marks that
include either "palm" or "theater"; and information
retrieved from the applicant's web site.
All the timely introduced evidence from the Examining
Attorney has been considered. We have not, however,
considered a definition of "palm" from an on-line
"technology glossary" offered by the Examining Attorney as
an attachment to his brief. Likewise, we have not
considered the NEXIS evidence offered by applicant in
conjunction with its reply brief. See Trademark Rule
2.142(d) in regard to both of these proffers. See also, in
regard to the Examining Attorney's proffer and request that
we take judicial notice of the on-line glossary definition,
In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76
2 In regard to the NEXIS evidence purportedly relating to the
term "theater," we note that all but the one reference cited
above refer to the Samsung "P-Theater portable DVD" player, and
do not use the word "theater" standing alone.
Ser. No. 75/419,366
4
(TTAB 1999) (The Board will not take judicial notice of
Internet dictionary evidence not made of record by
Examining Attorney prior to briefing).
The Examining Attorney argues that both "palm" and
"theater" are descriptive of a portable DVD player, and
that the combination of the two terms into PALMTHEATER does
not create a composite that is incongruous or registrable
under any similar theory. In regard to the PALM portion of
the composite, the Examining Attorney argues that "palm" is
descriptive because applicant's DVD player is essentially
palm-sized; that one definition of "palm" is a "unit of
length equal to either the width or the length of the
hand"; that pictorial representations of applicant's goods
on its specimens and web site show that the DVD player fits
on an outstretched hand; that "palm" has become descriptive
of "portable devices … small enough to be held in one's
hand"; and that applicant, on its web site, touts its goods
as "'DVD perfection'--in the palm of your hand." In regard
to the THEATER portion of the composite, the Examining
Attorney argues that applicant uses "theater" in a
descriptive or generic fashion in references to its goods;
that applicant readily entered a disclaimer of the term
"theater" when it was requested by a prior Examining
Attorney, and made no argument that the term is not
Ser. No. 75/419,366
5
descriptive; and that the non-party registrations, for
marks including the term "theater" for various items of
audiovisual equipment, evidence the descriptiveness of that
term for such goods because these marks are either on the
Supplemental Register or include disclaimers of "theater."
Applicant argues that PALM is not descriptive of its
portable DVD player because it cannot fit in the true palm
of one's hand; that "the commonly understood meaning of the
word 'palm'," in the context of references to size, is
something that is small enough to fit in a person's palm,
not something sized to fit in a person's hand; that use of
"palm-size(d)" may refer to something the size of one's
hand, but the use of palm alone does not; that even if palm
has become descriptive for certain portable devices, it has
not become descriptive for DVD players; that "palm" is only
suggestive of the "portable nature and reduced size" of
applicant's goods; that applicant's ownership of prior
registrations for marks including the term "palm" evidence
the suggestiveness of the term; that "theater," defined as
a site for presentation of dramatic performances or movies
is incongruous as used in conjunction with applicant's
goods; and that its mark must be considered as a composite
which combines "incompatible" terms, is "disconcerting" to
those confronted with the mark, and requires some measure
Ser. No. 75/419,366
6
of imagination or pause for the meaning of the composite to
be grasped.
It is, of course, well settled that the question
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods for which
registration is sought, the context in which it is being
used on or in connection with those goods and the possible
significance that the term would have to the average
purchaser or user of the goods. See In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979) and In re Recovery, 196
USPQ 830 (TTAB 1977). A proposed mark is considered merely
descriptive of goods, within the meaning of Section 2(e)(1)
of the Trademark Act, if it immediately describes an
ingredient, quality, characteristic or feature thereof, or
if it directly conveys information regarding the nature,
function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218
(CCPA 1978); see also In re Gyulay, supra.
By its argument, applicant essentially has conceded
that characterizing an object as "palm-size(d)," as in the
NEXIS references to "palm-size(d) DVD" players, is
equivalent to characterizing the object as capable of being
held in one's hand. Yet applicant contends that one would
not use the term "palm" alone as a descriptor for the same
Ser. No. 75/419,366
7
object unless the object could truly fit in only the palm
of the hand, i.e., that portion of the hand from the end of
the wrist to the base of the fingers.
We find the distinction strained. We rely, in this
regard, on the Examining Attorney's definition of "palm" as
including the measure of the length or width of one's hand
and on the following two definitions, of which we take
judicial notice3:
palmtop A computer small enough to hold in one
hand and operate with the other. Palmtops may
have specialized keyboards or keypads for date
entry applications or have small qwerty
keyboards. The Computer Glossary 287 (9th ed.
2001).
palmtop computer (palm-tahp com-pyoo-ter) A
teensy-tiny computer that fits in the palm of
your hand. Or, following the laptop metaphor, a
computer that would fit into the palm of your
hand if you had abnormally huge hands. Palmtop
computers generally have all the hardware of
their desktop cousins, but a tinier keyboard and
monochrome display. … Illustrated Computer
Dictionary for Dummies 219 (4th ed. 2000).
Each of these two definitions evidences colloquial use
of "palm" to refer to electronic devices (in these
references, computers) which can be held in one's hand. We
find it unlikely that, as applicant contends, "palm" and
3 The Board may take judicial notice of dictionary definitions.
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727,
6 USPQ2d 1719 (Fed. Cir. 1988).
Ser. No. 75/419,366
8
"palm-size(d)" would be carefully used by manufacturers or
consumers of handheld electronic devices to distinguish
between different measures of such objects. We find it a
much more reasonable conclusion that "palm" and "palm-
size(d)" would be used interchangeably to refer to the size
of a portable electronic device as roughly that which would
fit in or on one's hand.
We also find persuasive the Examining Attorney's
argument that the PALM portion of PALMTHEATER, given the
photographs applicant employs in its advertising (which
show its DVD player resting on an open hand) and given
applicant's promotion of its goods as "'DVD perfection'-in
the palm of your hand," would be taken as a direct
reference to the handheld size of the goods. We find
unpersuasive applicant's argument that the phrase "'DVD
perfection'-in the palm of your hand" would be taken as a
figurative reference to users of applicant's goods having
mastery or control over the best DVD technology available.
Applicant's intent in adopting and using the phrase is not
determinative. Even if the promotional phrase were viewed
by some as embodying this message, we find that a majority
would be likely to view the phrase as a reference to the
size of the goods, especially in view of the images
Ser. No. 75/419,366
9
applicant employs, and its characterization of its goods as
"ultra-compact."
In regard to the THEATER portion of applicant's mark,
we also find this term descriptive, as evidenced by
applicant's own characterization of the goods as "the
world's first portable DVD theater," by the registrations
made of record by the Examining Attorney4, and by
applicant's statement on its web site that a survey of its
customers "indicated that a majority of PalmTheater owners
connect their portable players to a TV or home theater
system when not being used during travel." It is clear
that "theater" and "home theater" have a descriptive
connotation when used in conjunction with audio and video
devices marketed to consumers. We find nothing in the
4 Registrations can be considered to indicate the meaning of
portions of marks in the same way as dictionary definitions or
other evidence of common usage. See The Conde Nast Publications
Inc. v. Miss Quality, Inc., 180 USPQ 149, 152 n.3 (TTAB 1973),
aff'd 184 USPQ 423 (CCPA 1975).
Registrations of record on the Supplemental Register include:
HOME THEATER MASTER for a remote control device for home audio
and video equipment; for THEATER SURROUND for televisions and
their audio circuits; and for VIRTUAL THEATER for "speakers,
amplifiers, subwoofers, motion actuators, motion controllers."
Registrations of record on the Principal Register with a
disclaimer of "home theater" include HOME THEATER MADE EASY for
loudspeaker systems; AUDIOFILE HOME THEATER for a variety of
audio products, including speakers; and HOME THEATER SYNERGY for
"consumer electronic equipment; namely, audio and video speakers,
amplifiers, players, and displays." Finally, there is a
Principal Register registration for SUPERCO HOME THEATER &
APPLIANCES and design, with a disclaimer of "home theater &
appliances," for televisions, radios, and stereo equipment, among
other items.
Ser. No. 75/419,366
10
nature of applicant's goods that would lead consumers to
view the term "theater" in any other way.
While we are mindful that we must consider PALMTHEATER
in its entirety, this does not preclude our foregoing
consideration of the component parts to determine their
usual meaning in conjunction with applicant's goods.
Having determined that the two component parts are merely
descriptive, we must consider whether, as applicant
contends, the combination of the terms creates a
registrable composite.
We find that the combination is no less descriptive
than the individual components. In this regard, we note
that we consider the composite in conjunction with the
identified goods, not in the abstract. When so considered,
consumers will not likely think of the "incompatible" ideas
of a movie theater or place for dramatic performances and
the anatomically precise palm of one's hand. Rather,
consumers will readily perceive, without need of thought or
imagination, that applicant's DVD players are "home
theater" type components that have been miniaturized to
handheld or "palm" size.
The fact that applicant may be the first and/or only
entity using the phrase PALMTHEATER is not dispositive
where, as here, the term unequivocally projects a merely
Ser. No. 75/419,366
11
descriptive connotation. See In re MBAssociates, 180 USPQ
338, 339 (TTAB 1973). Moreover, it is not necessary that
the term be in common usage in the particular industry
before it can be found merely descriptive. See In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018,
1020 (TTAB 1983).
Finally, we note applicant's argument that it has
obtained other registrations for PALMCAM, PALMCORDER IQ,
and PALMCORDER, and that PALMTHEATER is another in a
"family of suggestive PALM-formative Marks and is therefore
entitled to registration." It is well settled that each
case must be taken on its own merits and that the Examining
Attorney's refusal to register PALMTHEATER is not an
impermissible collateral attack on applicant's prior
registrations. See In re Sunmarks Inc., 32 USPQ2d 1470
(TTAB 1994). In addition, the records developed in those
cases may have been different than in the case at hand.
Finally, we note that those registrations are based on
applications that were filed years ago and during the
interim there has been a proliferation of portable and
handheld electronic devices of various types, so that
analysis of an application to register a "PALM-formative"
mark today is different from the analysis of just a few
years ago. Cf. In re Styleclick.com Inc., 57 USPQ2d 1445,
Ser. No. 75/419,366
12
1448 (TTAB 2000) (discussing rapid advancement of the
Internet in time that had passed since certain "e-"
prefixed marks had been registered). In short, we do not
find applicant's prior registrations persuasive support for
applicant's argument that we must view PALMTHEATER as one
member of a family of suggestive marks.
Decision: The refusal of registration under Section
2(e)(1) of the Trademark Act is affirmed.