Microvision, Inc.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 75162011 (T.T.A.B. Jun. 26, 2001)

06/26/01
Paper No. 28
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Microvision, Inc.
________
Serial No. 75/162,011
_______
Kent A. Fischmann of Holme Roberts & Owen LLP for
Microvision, Inc.
Wendy B. Goodman, Trademark Examining Attorney, Law Office
103 (Daniel P. Vavonese, Acting Managing Attorney).
_______
Before Quinn, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On September 6, 1996, Microvision, Inc. (applicant)
filed a trademark application to register the mark VIRTUAL
RETINAL DISPLAY (typed drawing) for goods ultimately
identified as “electro-optic image projection devices,
namely devices for projecting an image directly onto the
eye” in International Class 9.1
1 Serial No. 75/162,011. Applicant requests registration under
Section 1(b) of the Trademark Act, alleging a bona fide intent to
use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/162,011
2
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the goods, is
merely descriptive. 15 U.S.C. § 1052(e)(1).
The Examining Attorney’s position is that the mark
VIRTUAL RETINAL DISPLAY is merely descriptive for
applicant’s goods, which are “used to project images onto
the retina. The retina is transformed into a virtual
display from which the person can view these images.”
Examining Attorney’s Brief, p. 3 (emphasis in original).
The Examining Attorney cites numerous LEXIS/NEXIS
articles to demonstrate the descriptiveness of the term
VIRTUAL RETINAL DISPLAY. Some of these excerpts are set
out below:
[A] helmet-mounted virtual retinal display system
would allow pilots to keep their eyes on their flying
while getting information that normally would be on
cockpit dials and gauges (Seattle Post-Intelligencer,
May 31, 1999).
He showed the educators the cutting-edge technology,
including a virtual retinal display that would fit
like a contact lens. It would allow a person to have
20-20 vision and surf the Web, watch TV or compute at
the same time (The Daily Oklahoman, February 26,
1999).
This virtual retinal display utilizes photon
generation and manipulation to create a panoramic,
high resolution, color virtual image that is projected
directly onto the retina of the eye without creating a
real or an aerial image that is viewed via a mirror or
optics (Display Development News, November 1997).
Ser. No. 75/162,011
3
The Examining Attorney also relied on numerous
dictionary definitions to support the refusal to register
the mark.2
These definitions include3:
Virtual – (1) Simulated; especially simulated by
electronic technology (High–Tech Dictionary); (2) An
adjective that expresses a condition without
boundaries or constraints. It is often used to define
a feature or state that is simulated in some fashion.
However, it has become such a fashionable computer
word that it may be a prefix to “virtually” any
electronic concept or product without regard to the
original meaning of the term (Tech Encyclopedia); (3)
being such in essence or effect though not formally
recognized or admitted; of, relating to, or being a
hypothetical particle whose existence is inferred from
indirect evidence (Merriam-Webster’s Collegiate
Dictionary, 10th Edition (1993)).
2 The Examining Attorney requests that we take judicial notice of
more than ten definitions for the following words, which were
submitted for the first time with the Examining Attorney’s appeal
brief: retina, retinal, virtual display, virtual, virtual image,
and display. Some words have more than one definition. We, of
course, can take notice of dictionary definitions. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983). While we normally take judicial notice of dictionary
definitions submitted in applicants’ and examining attorneys’
appeal briefs, we are less comfortable in this case where we are
asked to take judicial notice of more than ten definitions.
Obviously, this is not the ideal way to prosecute a trademark
application. However, we do take judicial notice in this case
because the definitions do not substantially change the
underlying basis of the Examining Attorney’s refusal. In
addition, applicant has not objected. While applicant requested
an extension of time to file a reply brief, no reply brief was
ever filed.
3 The Examining Attorney also attached excerpts from The Computer
Dictionary but no specific reference was made to those
definitions.
Ser. No. 75/162,011
4
Virtual Image – (1) an image (as seen in a plane
mirror) formed of points from which divergent rays (as
of light) seem to emanate without actually doing so.
(Merriam-Webster’s Collegiate Dictionary, 10th
Edition(1993)); (2) in graphics, the complete graphic
image stored in memory, not just the part of it that
is displayed at the current time (Tech Encyclopedia).
Virtual Display – a display technology that creates a
full screen image in a small space (Tech
Encyclopedia).
Display – (1) an electronic device (as a cathode ray
tube) that temporarily presents information in visual
form (Merriam-Webster’s Collegiate Dictionary, 10th
Edition (1993)); (2) to present or hold up to view
(The American Heritage Dictionary of the English
Language, 3rd Edition (1992)); (3) to put or spread
before the view (Merriam-Webster’s Collegiate
Dictionary, 10th Edition (1993)).
Retinal – of, relating to, involving a retina
(Merriam-Webster’s Collegiate Dictionary, 10th Edition
(1993)).
Retina – The sensory membrane that lines the eye is
comprised of several layers, including one containing
the rods and cones, and functions as the immediate
instrument of vision by receiving the image formed by
the lens and converting it into chemical and nervous
signals which reach the brain by way of the optic
nerve (Merriam-Webster’s Collegiate Dictionary, 10th
Edition (1993)).
Previously, the Examining Attorney submitted excerpts
from eleven patents and printouts from the Internet, which
showed the use of the term “virtual retinal display” and
related terms in United States patents and other documents.
Based on this evidence, the Examining Attorney concluded
that the term VIRTUAL RETINAL DISPLAY is merely descriptive
in relation to applicant’s goods.
Ser. No. 75/162,011
5
Applicant, on the other hand, maintains that its term
is suggestive and not merely descriptive. Applicant argues
that its “goods are not ‘Virtual Displays’ they are actual
physical objects and the term virtual is no more
descriptive of Applicant’s goods than of any other physical
object.” Applicant’s Appeal Brief, p. 3. In addition, it
claims that its “goods scan a beam of light into user’s eye
so that the user perceives an image without the need for a
display screen. That image need not, and almost never is,
a display of a retina. Thus, the device is not a ‘Retinal
Display.’” Applicant’s Appeal Brief, p. 2. Further,
applicant notes that eight of the eleven cited patents are
either assigned to the University of Washington or refer to
the assigned patents. Applicant identifies the University
of Washington as “a development partner of Applicant and
Applicant has been engaged in discussions with the
University regarding the mark.” Id. at 7. In addition to
these points, applicant also maintains that the term is
incongruous and not used by competitors. Therefore, it
concludes the term is not descriptive.
After the Examining Attorney’s final refusal, this
appeal followed. Applicant and the Examining Attorney4 have
4 The current Examining Attorney was not the original Examining
Attorney.
Ser. No. 75/162,011
6
filed briefs. An oral hearing was not requested. We
affirm the Examining Attorney’s refusal to register
applicant’s mark.
We begin our analysis by noting that a mark is merely
descriptive if it immediately describes the ingredients,
qualities, or characteristics of the goods or services or
if it conveys information regarding a function, purpose, or
use of the goods or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). A term
may be descriptive even if it only describes one of the
qualities or properties of the goods or services. In re
Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether
the mark is descriptive. Abcor, 588 F.2d at 814, 200 USPQ
at 218.
We agree with the Examining Attorney’s position that
“applicant’s goods are used to project images onto the
retina. The retina is transformed into a virtual display
from which the person can view these images.” Examining
Attorney’s Appeal Brief, p. 3 (emphasis omitted). While
applicant argues that its goods are not a virtual display,
the patents that applicant claims to have the “exclusive
right to market” (Request for Reconsideration, p. 4)
Ser. No. 75/162,011
7
clearly describe the resulting image as a “virtual image.”
See, e.g., “Further, the photon generator may utilize color
light generators so as to scan a colored virtual image
directly onto the retina of the user’s eye” (Pat. No.
5,467,104, abstract) and “A virtual image display utilizes
photon generation and manipulation to create a panoramic,
high resolution, color virtual image that is projected onto
the retina of the eye.” (Patent No. 5,596,339, abstract).
See also Id. (Description of the Preferred Embodiment)
(“Because the virtual retinal display does not use a real
image display”). In addition, the evidence that applicant
submitted with its “Submission of Additional Evidence
Pursuant to Grant of Request for Remand” includes a paper
entitled “MICRODISPLAYS – What are microdisplays?” that
explains how the term “virtual” is used to describe
microdisplays.
These tiny displays called miniature flat panels, are
the engines which create the images in two broad
classes of devices. They are projection-based systems
and virtual display-based systems.
Optics magnify and produce a real image that is
projected and imaged upon a screen. Front projection
configurations utilize a distant wall or screen to
view the magnified image. Rear projection
configurations enclose the magnification optics in
back of an imaging screen to produce a self-contained
system. . . .
Virtual Microdisplays
Ser. No. 75/162,011
8
Optics magnify the display image but create a virtual
(as opposed to real) image that appears recessed
inside a viewfinder. A user looks into a small
viewfinder but sees an image that appears much larger
and floating some distance from the viewer.
The Examining Attorney’s definitions of “virtual” as
“simulated” (High-Tech Dictionary) and “virtual display” as
“display technology that creates a full screen image in a
small space” (Tech Encyclopedia) support the
descriptiveness of the terms. In addition, the patentees
used the terms “virtual” and “display” descriptively. Pat.
No. 5,467,104 Summary of the Invention (“In accordance with
the present invention, the disadvantages of prior virtual
image display systems have been overcome”). See also The
Commercial Appeal, November 16, 1996, p. 4B (“But rather
than seeing something real, with Microvision the user sees
an image created by a computer”).
Thus, the terms “virtual” and “display” describe
features of applicant’s goods since they create an image
or display that is small but it appears much larger as the
image in the viewfinder. Accord In re Styleclick.com Inc.,
58 USPQ2d 1523, 1526 (TTAB 2001) (“[P]eople have come to
recognize that the term ‘virtual,’ when used in connection
with computers and related goods and services, means that
someone at a computer is able to encounter things in a non-
physical or ‘virtual’ manner”).
Ser. No. 75/162,011
9
Applicant’s argument that the word “retinal” is not
descriptive of its goods because the goods do not normally
display an image of a retina does not mean the term is not
descriptive for goods that display an image on the retina.
Applicant itself acknowledges that its competitors’ patents
use the terms “retinal” and “retina” to describe a system
that displays an image on the retina. “Rather, the
Motorola patent (No. 5.369,415) describes its product as a
‘direct retinal scan display.’ Similarly, Sony describes
its device as a ‘retina direct display apparatus’ (U.S.
Patent No. 5.371,556).” Request for Reconsideration, p. 7.
This is also consistent with the Examining Attorney’s
definition of “retinal” as “of, relating to, involving, or
being a retina.” Merriam-Webster’s Collegiate Dictionary,
10th Edition.
While we have examined the terms “virtual,” “retinal”
and “display” and have found that they describe the goods,
that is not the test in determining whether applicant’s
mark is merely descriptive. Applicant is correct when it
maintains that we must consider the mark as a whole.
Indeed, applicant argues that “the terms ‘retinal’ and
‘display’ are incongruous because display denotes a
presentation in ‘open view’ whereas the retina is concealed
within the eye.” Applicant’s Brief, p. 4.
Ser. No. 75/162,011
10
We find nothing incongruous about the term “virtual
retinal display” for electro-optic image projection
devices, namely devices for projecting an image directly
onto the eye. There are two types of display systems,
virtual and projection. A virtual display is display
technology that creates a full screen image in a small
space. “Retinal” merely describes where the image is
displayed. The evidence from the patents and LEXIS/NEXIS
evidence supports the Examining Attorney’s determination
that the term as a whole is merely descriptive. While
applicant points out that many, if not most, of these
references are to a partner of applicant or to applicant
itself, this does not preclude their use in determining
whether the term is merely descriptive. See Gyulay, 3
USPQ2d at 1010 (“Appellant argues that it is ‘unfair to use
appellant’s wholesale catalog to determine whether or not
the trademark APPLE PIE is descriptive. We discern no
error or inequity in the Board’s use of appellant’s catalog
as evidence of what it contains”). Here, there is also
nothing “unfair” about referring to patents owned by a
partner of applicant to see how the term was used in the
patent document. These underlying patents use the term
descriptively when referring to the invention. Pat. No.
5,596,339, Field of Invention (“The present invention is
Ser. No. 75/162,011
11
directed to a virtual image display system and more
particularly to a virtual retinal display”); id.,
Description of Preferred Embodiments (“In order to provide
a stereoscopic system a second virtual retinal display may
be utilized in parallel to the first retinal display”).
The LEXIS/NEXIS printouts that the Examining Attorney
made of record, even if they refer to applicant or its
partner, show that the term is used descriptively. See,
e.g., The Seattle Times, March 27, 1998, p. D4 (“The
Seattle maker of virtual retinal displays”); Display
Development News, November 1997 (“The Board of Trustees of
the University of Washington received US Patent 5,659,327
for a virtual retinal display in August, 1997. This new
technology has been receiving considerable attention”);
Electronic Engineering Times, June 6, 1997, p. 35
(Microvision and Saab “are joining forces to explore the
commercial possibilities for advanced visual displays based
on virtual retinal-display (VRD) technology”); The
Commercial Appeal, November 19, 1996, p. 4B (“Virtual
retinal display doesn’t have that problem. It projects
light directly into the eye”). Thus, the printouts show
that the term “virtual retinal display” is used to describe
the new technology developed by the University of
Washington.
Ser. No. 75/162,011
12
Applicant also argues that the term is not descriptive
because its competitors do not need to use the term. This
is not the test. Merely because the references are to
applicant does not mean that the term is not descriptive.
In re Helena Rubinstein, Inc., 410 F.2d 438, 441, 161 USPQ
606, 609 (CCPA 1969) (“Applicant’s long use of the wording,
and the fact that others have not used it up to this time,
does not make it any less an apt description for the
goods”). This is particularly true here where the
technology is a new refinement of the technology of which
applicant is apparently the exclusive licensee under the
patents.
Because we conclude that the term VIRTUAL RETINAL
DISPLAY describes a feature of the goods when the term is
considered as a whole, the mark is merely descriptive.
Decision: The Examining Attorney’s refusal to
register the mark VIRTUAL RETINAL DISPLAY on the ground
that the mark is merely descriptive of the involved goods
is affirmed.