Philips Electronics North America Corp.

Trademark Trial and Appeal Board

May 22, 2001

No. 75673321 (T.T.A.B. May. 22, 2001)

5/22/01
Paper No. 12
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Philips Electronics North America Corporation
________
Serial No. 75/673,321
_______
Gregory L. Thorne for Philips Electronics North America
Corporation.
Ellen Awrich, Trademark Examining Attorney, Law Office 113
(Meryl Hershkowitz, Managing Attorney).
_______
Before Hairston, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Philips Electronics North America Corporation has
appealed from the final refusal of the Trademark Examining
Attorney to register EDITSTREAM as a trademark for “a
computer-based networked audio-video editing system,
comprising computer software and hardware for the
recording, editing and playback of digital and analog
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/673,321
2
audio/video media.”1 Registration has been refused pursuant
to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that the applied-for mark is
merely descriptive of the goods.
We affirm the refusal to register.
A mark is considered to be merely descriptive, within
the provisions of Section 2(e)(1), if it directly conveys
information regarding the ingredients, qualities,
characteristics, function, purpose or use of the goods. In
re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215
(CCPA 1978). See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987) [A mark is merely descriptive
if it “immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods with which it is
used”].2
The Examining Attorney has submitted definitions of
“edit” as meaning “to prepare (written material) for
publication or presentation, as by correcting, revising, or
adapting; to prepare an edition of for publication; to
1 Serial No. 75/673,321, filed April 2, 1999, asserting a bona
fide intention to use the mark in commerce.
2 Applicant cites Ex parte Heatube Corporation, 109 USPQ 423
(Com’r. Pats. 1956) for the test for determining if a mark is
merely descriptive. In the 40 years since that case was decided,
the test for determining mere descriptiveness has evolved, and we
therefore quote the test set forth above by our primary reviewing
court, a test which we are, in any case, constrained to follow.
Ser No. 75/673,321
3
modify or adapt so as to make suitable or acceptable”3 and
“stream” as meaning “a contiguous group of data.”4 The
Examining Attorney asserts that the words individually
describe the use of applicant’s goods, which edit a stream
of audio and video data. Further, the Examining Attorney
submitted a number of excerpts from the NEXIS data base
which refer to the editing of video, audio and data
streams. The following are representative examples:
When used with certain specially coded software
packages, this machine lets you input multiple
streams of video, edit them with various effects,
then output them in real time.
(PC Magazine;, July 1, 1999);
Premier or Speed Razor with Matrox DigiSuite or
DigiSuite ie cards allows users to edit two
streams of DI video up to uncompressed quality
with 32-bit animated graphics in realtime.
(Playback; January 11, 1999);
. . . software that lets you record, edit, and
play back MIDI music, track a logical or
physical entity that lets you record and edit
an audio stream independent of the content of
other tracks.
(Windows Sources; October 1995); and
In addition to the hardware, C-Cube will provide
editing software able to input, convert, edit,
and save the video streams.
(Techweb News; October 30, 1998).
3 The American Heritage Dictionary of the English Language (3d.
ed. 1992).
4 Tech Encyclopedia, www.techweb.com.
Ser No. 75/673,321
4
When the two descriptive words EDIT and STREAM are
combined in the mark EDITSTREAM, we agree with the
Examining Attorney that the mark as a whole is merely
descriptive of “a computer-based networked audio/video
editing system, comprising computer software and hardware
for the recording, editing, and playback of digital and
analog audio/video media.” That is, the relevant
purchasers upon seeing this mark in connection with the
goods will immediately understand that the goods are used
to edit streams of audio and video data. Applicant’s own
brochure describes its system as “allow[ing] the editor to
begin screening and editing incoming media within 5 seconds
of the start of capture.”5
Applicant argues that the mark is only suggestive
because the word “stream” has additional definitions which
have no relation to a networked computer-based system. In
particular, applicant points to the definitions of the word
“stream” which relate to water. Further, in this regard,
applicant argues that the mark EDITSTREAM is in fact
intended to bring about the suggestion of water because it
is part of a group of products, each of which has a water
5 Although applicant based its application on an intent-to-use
the mark, during the course of prosecution applicant submitted
product brochures. We note, however, that applicant has not
filed an amendment to allege use.
Ser No. 75/673,321
5
theme, namely MediaPool, Surf, and Wave. According to
applicant, these are a related group of products which it
offers for sale.
It is well-established that the determination of mere
descriptiveness must be made not in the abstract or on a
guesswork basis, 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, Inc., 196 USPQ 830 (TTAB 1977). When applicant’s
mark is considered in connection with the identified goods,
it is the meaning of “a contiguous group of data” that
purchasers will ascribe to STREAM, and not such definitions
as “a body of water flowing in a channel on the surface of
the ground, in a cavern below the surface, or beneath or in
a glacier,” “brook, rivulet,” or “an outpouring of a fluid
from a source or container.” Also, as noted by the
Examining Attorney, purchasers may not necessarily be aware
of applicant’s other “water-themed” products when they
encounter the involved goods.
Accordingly, we find that applicant’s applied-for
mark, EDITSTREAM, is not incongruous, creates no double
entendre, and does not create or present a commercial
Ser No. 75/673,321
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impression or meaning other than the editing of audio and
video streams of data.
Further, 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.
Decision: The refusal to register is affirmed.
Ser No. 75/673,321
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