Matsushita Electric Corp. of America

Trademark Trial and Appeal Board

Apr 28, 2004

No. 76328037 (T.T.A.B. Apr. 28, 2004)

Mailed: April 28, 2004
Paper No. 20/21
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Matsushita Electric Corporation of America
___________
Serial Nos. 76328037 and 76328039
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Morton Amster and Holly Pekowsky of Amster, Rothstein &
Ebenstein for Matsushita Electric Corporation of America.
Carolyn Pendleton Cataldo, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
____________
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Matsushita Electric Corporation of America has filed
two applications to register on the Principal Register the
marks shown below for “digital camcorders having the
capability of functioning as a digital still camera and/or
as a camera providing connection to the Internet or web,” in
International Class 9.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial Nos. 76328037 and 76328039
2

1
2
Following publication and issuance of a notice of
allowance, applicant filed a statement of use and specimens
of use in each application. The Examining Attorney then
required a disclaimer of “3 IN 1” and “2 IN 1,”
respectively. She also stated that the specimens showing
wording around the rim of each design mark (as in the

1 Serial No. 76328037 (“’037 application”), filed October 22, 2001,
based on an allegation of a bona fide intention to use the mark in
commerce. In its statement of use, applicant alleged dates of first use
and use in commerce as of January 25, 2002. Subsequent to filing the
specimens, applicant amended its mark as shown above and entered a
disclaimer of DIGITAL CAMCORDER, DIGITAL STILL CAMERA and WEB CAM apart
from the mark as a whole.
2 Serial No. 76328039 (“’039 application”), filed October 22, 2001,
based on an allegation of a bona fide intention to use the mark in
commerce. In its statement of use, applicant alleged dates of first use
and use in commerce as of January 25, 2002. Subsequent to filing the
specimens, applicant amended its mark as shown above and entered a
disclaimer of DIGITAL CAMCORDER and DIGITAL STILL CAMERA apart from the
mark as a whole.
Serial Nos. 76328037 and 76328039
3
pictures above) are materially different from the marks
shown in the applications as filed, wherein each design mark
has an outer black ring without any wording contained
thereon; and that, thus, an amendment to the drawing would
be inappropriate. She required substitute specimens showing
use of the mark as originally filed.
Applicant responded by submitting substitute drawings
of the two marks (as shown above) and entering disclaimers
of the wording contained in the outer black ring of each
mark. Applicant argued that a disclaimer of “3 IN 1” and “2
IN 1,” respectively, is unnecessary as neither term is
merely descriptive.
The Trademark Examining Attorney issued a final
requirement, under Section 6 of the Trademark Act, 15 U.S.C.
1056, for a disclaimer in each application of “3 IN 1” or “2
in 1,” respectively, apart from the respective mark as a
whole on the ground that this portion of each of applicant’s
marks is merely descriptive in connection with the
identified goods.3

3 The Examining Attorney also issued a final requirement, under C.F.R.
2.72(b), for substitute specimens that show use of the mark shown in the
original drawing, concluding that the mark shown on the specimens and in
the amended drawing is a material alteration of the mark in the original
drawing. However, in her brief in Application Serial No. 76328037 and
following remand after applicant’s submission of its reply brief in
Application Serial No. 76328039, the Examining Attorney withdrew the
requirement for substitute specimens and accepted the amended drawing
and disclaimer in each application. Therefore, this issue is no longer
before us in these appeals.
Serial Nos. 76328037 and 76328039
4
In each case, applicant has appealed. Both applicant
and the Examining Attorney have filed briefs but an oral
hearing was not requested. The Board will consider the
appeals in these two applications in a single consolidated
decision because the issues on appeal are essentially the
same in each application.
The Examining Attorney contends that the wording
“3 IN 1” and “2 IN 1” are commonly used in the electronics
industry to refer to products, such as camcorders, that
contain three (or two) features in one product, i.e., in
both of these applications the product is a camcorder and a
digital still camera and, in the ‘037 application, it is
also a web camera. In support of her position, the
Examining Attorney submitted excerpts of articles retrieved
from the Lexis/Nexis database. The following are several
examples from the excerpted articles:
“3 IN 1”:
“Argus Camera is demonstrating an array of digital
cameras with features for a variety of
photographic needs …. The DC-1540 is a 3-in-1
device that can be used as a digital camera, a PC
cam, or a video camera, and when not in use, can
be folded up to fit in a pocket or purse.”
[Twice, March 24, 2003.]
“Micro ‘Cool-Cam’ 3-in-1 digital camera; $49.99 at
JCPenney.com.” [Los Angeles Magazine, December 1,
2002.]
“TV/DVD/VCR combo: One of this season’s hottest
video items is the entertainment combo. Combining
a television set, DVD player and videocassette
recorder in one compact tabletop cabinet model has
Serial Nos. 76328037 and 76328039
5
marketing appeal. This three-in-one concept made
its debut last Christmas when Panasonic introduced
a 20-inch TV combo.” [The Oregonian, November 29,
2002.]
“If size is not an issue, try Brookstone’s 3-in-1
Digital Camera, which goes for $99.” [The Daily
Record (Baltimore, MD.), November 21, 2002.]
Three-In-One – Imagine a digital camera, digital
camcorder and PC camera combined into one feature-
packed, high-tech, palm-size package. The
PenCamII does it all ….” [Popular Mechanics, June
1, 2001.]
Panasonic is taking those wishes to the proverbial
next level with its e-wear line of products, all
built around the tiny Secure Digital removable
memory card. There’s a digital audio player
($350), a photo printer ($220) and a three-in-one
digital camera/camcorder/audio recorder ($450) –
each weighing less than four ounces. We took the
three-in-one device for a spin and found it to be
a thoughtfully designed, pocket-friendly gadget.”
[Newsweek, July 8, 2002.]
“2 IN 1”:
“If you can’t decide between a new digital
camcorder and a digital still camera, consider
getting both gadgets with Panasonic’s PV-VM202
MultiCam. What distinguishes this $2,200 model
from other digital camcorders that can record both
video and still images is a detachable 1-megapixel
digital camera that can capture still pictures and
MPEG-4 video and sound on its own. If all that
this 2-in-1 camera had going for it were a clever
design, it would be easy to write it off as just
another tech gimmick.” [Des Moines Register, May
14, 2002.]
“Electric Fuel’s new batteries initially support
Sony and JVC camcorders and Nikon and Sony digital
cameras, but additional brand support will be
added soon. The company also introduced a 2-in-1
Instant Power package for cell phones and PDAs.
This features an Instant Power cell plus a car
adapter ….” [Twice, January 8, 2002.]
Serial Nos. 76328037 and 76328039
6
This trend toward true higher-resolution sensors …
means you can have a camera that’s literally a
two-in-one product. You no longer have to carry
around a camcorder AND a digital still camera.
These new Combo-Cam models feature the best
features of both, and they’re actually less
expensive than buying both.” [Camcorder and
Computer Video, June 1, 2001.]
“For consumers with limited shelf space and TV
input jacks, integrated boxes combining a DVD
player with a VHS VCR have proven a big hit. Now
makers are building these two-in-one video players
into HtiBs. [Philadelphia Daily News, February 5,
2003.]
Applicant contends that the “3 IN 1” and “2 IN 1”
portions of its marks are not merely descriptive because
“these elements could be construed as suggesting any number
of goods”; that a term is not merely descriptive if it
“could be used suggestively as to a number of different
goods”; that “there is no evidence of others using the[se]
term[s] in connection with applicant’s consumer electronics
products…”; and that “there are numerous third-party
registrations for various goods in which [these terms are]
not disclaimed.”
Both the Examining Attorney and applicant submitted
third-party registrations in support of their positions.
Applicant’s submission is from search reports taken from a
private company’s databases, which is not acceptable
evidence of those registrations. See In re Carolina
Apparel, 48 USPQ2d 1542, footnote 2 (TTAB 1998); and In re
Smith & Mehaffey, 31 USPQ2d 1531, footnote 3 (TTAB 1994).
Serial Nos. 76328037 and 76328039
7
However, since the Examining Attorney addressed the evidence
on its merits, we have considered applicant’s submission for
whatever probative value it may have. In this regard, this
Board has stated that “third-party registrations simply are
not conclusive on the question of descriptiveness, and a
mark which is merely descriptive cannot be made registrable
merely because other similar marks appear on the register.”
In re Scholastic Testing Service, Inc., 196 USPQ 517, 519
(1977). Moreover, applicant’s submitted registrations,
coupled with the ones submitted by the Examining Attorney,
indicate that the register is mixed. While uniform
treatment under the Trademark Act is an administrative goal,
our task in this appeal is to determine, based on the record
before us, whether these terms in applicant’s marks are
merely descriptive. As often noted by the Board, each case
must be decided on its own merits. Moreover, as stated in
In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001), “[e]ven if some prior registrations
had some characteristics similar to [applicant’s]
application, the … allowance of such prior registrations
does not bind the Board or this court.”
The test for determining whether a mark (or a portion
thereof) is merely descriptive is whether it immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product or
Serial Nos. 76328037 and 76328039
8
service in connection with which it is used, or intended to
be used. In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find that a mark
(or a portion thereof) is merely descriptive, that it
describe each feature of the goods or services, only that it
describe a single, significant quality, feature, etc. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
We conclude that, notwithstanding applicant’s arguments
to the contrary, the “3 IN 1” and “2 IN 1” portions of
applicant’s marks are merely descriptive of the fact that
the electronic device identified in each application has 3
(or 2) functions combined in one device, i.e., in the ‘037
application the product is a digital camcorder, a digital
still camera and a camera providing connection to the
Internet or web; and in the ‘039 application the product is
a digital camera as well as a camera providing connection to
the Internet or web. Thus, three (or two) functions are
Serial Nos. 76328037 and 76328039
9
combined in one electronic device. The excerpted articles
clearly show descriptive use of these two terms in
describing several different types of electronic products
and, with respect to cameras, several different brands.
Applicant notes that the references to Panasonic are
references to applicant and, thus, those excerpts are
inapposite. We disagree. Even those excerpts referring to
Panasonic use the terms “3 IN 1” and “2 IN 1” in a
descriptive, rather than trademark, manner.
In conclusion, we find that when applied to applicant’s
respective goods, the terms “3 IN 1” and “2 IN 1”
immediately describe, without conjecture or speculation, a
significant feature or function of applicant’s respective
goods, namely that the identified goods are three (or 2)
devices combined in a single electronic device. Nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
purchasers of and prospective customers for applicant’s
services to readily perceive the merely descriptive
significance of the terms as they pertain to applicant’s
respectively identified goods.
Decision: The requirement, under Section 6 of the
Trademark Act, 15 U.S.C. 1056, for a disclaimer of “3 IN 1”
(or “2 IN 1”) apart from each mark as a whole, is affirmed.
Serial Nos. 76328037 and 76328039
10
However, if applicant, no later than thirty days from
the mailing date hereof, submits an appropriate disclaimer
of “3 IN 1” (or “2 IN 1”) in each of the applications,
registrations will be allowed with these disclaimers. See,
Trademark Rule 2.142(g).