Satellite Imagery Ltd.

Trademark Trial and Appeal Board

Jul 12, 2001

No. 75505778 (T.T.A.B. Jul. 12, 2001)

7/12/01 Paper No. 10
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Satellite Imagery Limited
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Serial No. 75/505,778
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Edwin D. Schindler for Satellite Imagery Limited.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
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Before Hanak, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Satellite Imagery Limited (applicant) seeks to register
THE SATELLITE IMAGE BANK in typed drawing form for the
following goods and services. The intent-to-use application
was filed on June 17, 1998. At the request of the Examining
Attorney, applicant entered the following disclaimer: “No
claim is made to the exclusive right to use BANK apart from
the mark as shown.”
Printed material, namely, archived photographs of
satellite images for purchase by the media, general
public, or specialist organizations, and special
satellite images, namely, satellite photographs, near
infra-red satellite photographs, infra-red satellite
photographs, radar satellite photographs, black-and-
white satellite photographs, and multi-spectral
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/505,778
satellite photographs in Class 16 and
Information services, namely, providing a database
featuring satellite photographs or satellite infrared,
radar, or multi-spectral images available in printed
form or accessible through the use of a computer in
Class 42.
The Examining Attorney has refused registration on the
basis that applicant’s mark, as applied to applicant’s goods
and services, is merely descriptive pursuant to Section 2(e)
(1) of the Trademark Act.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a hearing.
A mark is merely descriptive pursuant to Section 2(e)
(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic of
the relevant goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986).
Whether a mark is merely descriptive is determined in
relation to the identified goods and services, not in the
abstract. In re Omaha National Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Condensing the rather lengthy description of goods and
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Ser. No. 75/505,778
services, applicant seeks to register THE SATELLITE IMAGE
BANK for photographs of satellite images for purchase
(goods) and for providing a database featuring satellite
photographs or satellite images (services). We will
consider first whether applicant’s mark is merely
descriptive of its services. By disclaiming the word BANK,
applicant tacitly conceded that this word is descriptive for
both its services and its goods. In this regard, we note
that at page 5 of its brief applicant states that it “can
agree with the Examiner that the word BANK may be
descriptive.” The word “bank” is defined not only as “an
establishment for receiving or lending money,” but also as a
“reserve supply; pool.” Webster’s New World Dictionary
(1996). Hence, a database can be viewed as a bank or pool
of data.
Thus, in its entirety the “mark” THE SATELLITE IMAGE
BANK immediately informs prospective consumers of the nature
of the bank, namely, that it features satellite images. The
term “satellite image bank” is just as understandable as is
the term “blood bank.”
At pages 4 and 5 of its brief, applicant makes the
following argument: “It is contended that upon viewing
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Ser. No. 75/505,778
applicant’s mark, or hearing it pronounced, one is forced to
engage in a multi-step reasoning process before such person
is even likely to realize the nature of applicant’s goods
and services ... In any event, one viewing or hearing
applicant’s trademark would almost certainly have to devote
a reasonable measure of thought, conjecture and speculation
in order to be able to offer an educated guess at that which
is being offered by applicant under its trademark.”
Applicant appears to be arguing that if a person simply saw
applicant’s mark THE SATELLITE IMAGE BANK by itself and was
not told about the services and goods with which it is used,
that person would be unable to “realize the nature of
applicant’s goods and services.” Such is not the test for
determining whether a mark is merely descriptive. As noted
earlier, the mere descriptiveness of a mark is not
determined in the abstract, but rather is determined in
relationship to the identified goods and services. Stated
somewhat differently, the pertinent inquiry is whether a
relevant purchaser who is informed both of applicant’s mark
and of the description of applicant’s goods and services
would be able to readily discern any significant quality or
characteristic of the goods or services.
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Ser. No. 75/505,778
Applying this proper test for mere descriptiveness, we
have no doubt that a prospective purchaser upon being
informed both of applicant’s mark (THE SATELLITE IMAGE BANK)
and of applicant’s services (a database featuring satellite
photographs or satellite images) would immediately
understand that applicant’s bank is a database which
features satellite photographs and satellite images.
Indeed, while applicant’s test is not the test for mere
descriptiveness, even under applicant’s test we are of the
view that a prospective purchaser who is informed only of
applicant’s mark THE SATELLITE IMAGE BANK would understand
that applicant provides a bank or database featuring
satellite images. In this regard, we note the following
sentence appearing at page 5 of the Examining Attorney’s
brief: “Without being generic, a more descriptive expression
[THE SATELLITE IMAGE BANK] identifying applicant’s goods and
services would be difficult to devise.”
Turning to a consideration of whether applicant’s
“mark” THE SATELLITE IMAGE BANK is merely descriptive of
applicant’s goods (photographs of satellite images for
purchase), we find that while the “mark” is not as highly
descriptive of the goods as it is of the services, it
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Ser. No. 75/505,778
nevertheless is still merely descriptive of applicant’s
goods. Put quite simply, a prospective purchaser upon being
informed both of applicant’s “mark” THE SATELLITE IMAGE BANK
and of applicant’s goods (photographs of satellite images
for purchase) would immediately understand an important
quality or characteristic of said goods, namely, that they
emanate from a bank or database containing satellite images.
By way of analogy, if one saw the hypothetical “mark” THE
USED CAR DEALERSHIP on a car, one would understand that the
car emanated from a used car dealership. Clearly, the term
“used car dealership” is generic for the services of
operating a used car dealership. At an absolute minimum,
the term “used car dealership” is merely descriptive of the
cars (i.e. goods) which emanate from such dealerships. In
similar fashion, applicant’s “mark” THE SATELLITE IMAGE BANK
is, at a minimum, merely descriptive of photographs of
satellite images in that it immediately informs prospective
purchasers that the satellite images come from a bank or
database containing satellite images.
Decision: The refusal to register on the basis that
applicant’s mark is merely descriptive of both its goods and
its services is affirmed.
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