Sony Kabushiki Kaisha

Trademark Trial and Appeal Board

Jan 26, 2001

No. 75425823 (T.T.A.B. Jan. 26, 2001)

1/26/01
Paper No. 13
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sony Kabushiki Kaisha
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Serial No. 75/425,823
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Robert B. G. Horowitz of Cooper and Dunham for Sony
Kabushiki Kaisha.
Michele-Lynn Swain, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Hanak, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Sony Kabushiki Kaisha has filed an application to
register NEWS CACHE as a mark for goods identified as
"television program serving system comprised of personal
computers, peripherals therefor, computer software for
recording, editing and supplying of television programs,
and television program servers."1 Registration has been
1 Serial No. 75/425,823, filed January 29, 1998, based upon an
allegation of a bona fide intention to use such term in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/425,823
2
refused under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that, when used on or in
connection with applicant's goods, the mark will be 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.
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods.
In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). To meet
this burden, the Examining Attorney has made of record
definitions from general dictionaries for the words "news"
and "cache," and definitions from technical sources or
specialized computer dictionaries for "cache."2 The
Examining Attorney has also made of record numerous
excerpts retrieved from the NEXIS computerized database of
periodicals, each of which includes some combination of the
words "news," "cache" or "caching," "server" or "computer"
or plural forms thereof.
2 Some of these definitions were retrieved from "on-line" sources
and the record does not always reveal exactly how they were
retrieved. Nonetheless, although applicant disputes which
definition of cache would readily come to mind for prospective
purchasers of its goods, applicant has not objected to any of the
definitions because of their source. Accordingly, we consider
all this evidence properly of record.
Ser. No. 75/425,823
3
The term "news" is defined as "[i]nformation about
recent events or happenings, especially as reported by
newspapers, periodicals, radio, or television." Applicant
has not challenged the Examining Attorney's reliance on
this particular definition. Further, applicant has not
contested the Examining Attorney's contention that
"television programs," i.e., the content recorded, edited
and served by applicant's serving system, includes news,
and would, therefore, be descriptive when used in
connection with applicant's goods.
In contrast, applicant has contested the definitions
of "cache" on which the Examining Attorney relies.
Relevant dictionary definitions of the term made of record
by the Examining Attorney include "computer memory with a
very short access time used for storage of frequently used
instructions or data," and "a special memory subsystem in
which frequently used data values are duplicated for quick
access." In addition, the Internet website www.whatis.com,
lists the following information in its definition of cache:
A cache (pronounced CASH) is a place to store
something more or less temporarily. Web pages
you request are stored in your browser's cache
directly on your hard disk. That way, when you
return to a page you've recently looked at, the
browser can get it from the cache rather than the
original server, saving you time and the network
the burden of some additional traffic. …
Ser. No. 75/425,823
4
Computers include caches at several levels of
operation, including cache memory and a disk
cache. Caching can also be implemented for
Internet content by distributing it to multiple
servers that are periodically refreshed. …
Altogether, we are aware of these types of
caches:
• International, national, regional,
organizational and other "macro" caches to
which highly popular information can be
distributed and periodically updated and
from which most users would obtain
information.
• Local server caches (for example,
corporate LAN servers or access provider
servers that cache frequently accessed
files). This is similar to the previous
idea, except that the decision of what
data to cache may be entirely local.
[remainder omitted]
Applicant contends that these definitions "do not
pertain to applicant's goods" and it is more appropriate to
consider "cache" to be "a hiding place for concealing or
preserving provisions or implements, and a secure place of
storage." Applicant contends that this definition is what
the "average purchaser of the applied for goods" would
think of when confronted with the term cache.
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
Ser. No. 75/425,823
5
used on or in connection with those goods and the possible
significance that the term would have to the average
purchaser because of the manner of its use. See In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979) and In re
Recovery, 196 USPQ 830 (TTAB 1977). Apart from the
referenced definitions, we have a wide variety of NEXIS
excerpts that aid our determination of the likely
perception of cache, as that term would be used in
conjunction with applicant's identified goods.
The NEXIS excerpts discuss a wide range of caching
products, caching engines, and caching servers. The
excerpts also reveal that there are news servers and that
news traffic and the content of news databases is routinely
cached by such products to facilitate later access and use:
…Most push products today supply preconfigured
channels of general-interest news and
information. To access this content, the push
server caches the channel information from the
Internet locally, acting as a proxy server so
that network clients don't need to access the
Internet for every update request. …
--PC Magazine (June 10, 1997).
…This proxy caching news server can combine
multiple news servers to look like one. …
--Internet World (June 9, 1997).
…PointCast's intranet caching server, I-Server,
and First! Intranet are tied to a comprehensive
set of news sources that can fulfill most any
business news interest. …
--Network Computing (April 1, 1997).
Ser. No. 75/425,823
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…I-Server also condenses the stream of public
news and information from the PointCast Network
using intelligent caching technology. …
--INTERNET WEEK (March 10, 1997).
In addition, two of the NEXIS excerpts discuss use of
caching products for video applications:
Traffic Server supports Cache HTTP 1.1 and is one
of the only caching products that supports audio,
streaming video, Usenet news and Network News
Transfer Protocol content. …
--Network World (April 26, 1999).
HEADLINE: NewsMaker lands cable sales;
Telenoticias and Time Warner choose StarDrive
automation system
BODY: …"The nice thing about StarDrive is that
it's transparent to the user, so the producers
won't see any change," Neugeboren says.
The network considered using a video server as
a cache to the LMS, Neugeboren says, but decided
that a cache architecture didn't provide enough
versatility for news: "We like the flexibility
of changing an event to air--right now with tape,
we change up to 90 seconds to air. This will
give us the flexibility of changing the playlist
very quickly, with a window of 10 to 15
seconds."…
--Broadcasting & Cable (November 4, 1996).3
Though applicant has provided no information about the
prospective purchasers of its goods, its system does not
appear to be an item that will be targeted to a home
3 We would have preferred a fuller copy of the Broadcasting &
Cable article, rather than an excerpt. Nonetheless, it is clear
from the context of the excerpt that cable television
broadcasters have various options available to them for storing,
editing and playing or serving video, including caching products.
That the companies discussed in the article apparently chose to
Ser. No. 75/425,823
7
computer user. Rather, it appears to be a commercial item
intended for Internet Service Providers, broadcasters, or
computer network administrators. In this context, we find
entirely unpersuasive applicant's argument that prospective
purchasers of a "television program serving system" which
includes computers, peripherals, software and servers would
perceive cache to mean a hiding place for provisions or
implements. Such purchasers would clearly perceive cache
to be a reference to a feature of applicant's system, i.e.,
that it caches television programs.
We conclude that both "news" and "cache" are
descriptive terms when considered in conjunction with
applicant's goods. Applicant, however, correctly notes
that terms which, when considered individually, are
descriptive of a product or service, nonetheless may be
combined to create a trademark. Applicant further contends
that its combination of the terms "news" and "cache"
accomplishes this result. In support of its position,
applicant argues that the absence of any NEXIS references
for "news cache" is telling. We disagree, and find that
the terms when combined are no less descriptive than the
terms are individually, when considered in conjunction with
use an alternative to "caching architecture" does not detract
from the probative value of this evidence.
Ser. No. 75/425,823
8
applicant's goods. See, e.g., In re Copytele Inc., 31
USPQ2d 1540 (TTAB 1994) (combination of SCREEN FAX PHONE
held merely descriptive and without incongruity resulting
from combination), and In re Lowrance Electronics, 14
USPQ2d 1251 (TTAB 1989) (generic terms COMPUTER and SONAR
held just as generic and not incongruous when used in
combination).
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, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987). It is not necessary that a term
describe all of the properties or functions of the goods in
order for it to be merely descriptive thereof; rather, it
is sufficient if the term describes a significant attribute
or idea about them. In re Venture Lending Associates, 226
USPQ 285 (TTAB 1985).
Contrary to applicant's argument, we find that
prospective purchasers of applicant's television program
serving system, if confronted with NEWS CACHE used in
Ser. No. 75/425,823
9
conjunction therewith, would, without need of thought,
imagination or perception, be immediately apprised of a
significant feature of applicant's goods, i.e., that it can
cache news prior to serving it.
Decision: The refusal of registration is affirmed.