Super Vision Internation-al, Inc.

Trademark Trial and Appeal Board

Jul 18, 2003

No. 78071439 (T.T.A.B. Jul. 18, 2003)

Mailed:
July 18, 2003
Paper No. 9
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Super Vision International, Inc.
________
Serial No. 78/071,439
_______
James H. Beusse of Beusse Brownlee Bowdoin & Wolter, P.A.
for Super Vision International, Inc.
Cheryl Clayton, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Quinn, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Super Vision International, Inc. seeks registration on
the Principal Register for the mark FLEXLED for goods
identified, as amended, as “electrical circuit boards with
light emitting diodes,” in International Class 9.1
This case is now before the Board on appeal from the
final refusal to register on the ground that the term
FLEXLED is merely descriptive of applicant’s goods under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1).
1 Application serial no. 78/071,439 was filed on June 28,
2001 based upon applicant’s claim of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78/071,439
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Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing. We affirm the refusal to register.
A term is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, if it forthwith conveys an immediate
idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods with which it is used
or is intended to be used. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978); and In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
1992). It is well settled that a term need not immediately
convey an idea of each and every specific feature of the
applicant’s goods or services in order to be considered
merely descriptive; it is enough that the term describes
one significant feature, attribute, function, property
ingredient, quality, characteristic, purpose or use of the
goods or services. In re Opryland USA Inc., 1 USPQ2d 1409
(TTAB 1986); In re The Weather Channel, Inc., 229 USPQ 854
(TTAB 1985); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). The
question of whether a particular term is merely descriptive
must be determined not in the abstract, but in relation to
Serial No. 78/071,439
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the goods or services for which registration is sought, the
context in which the mark is used or is intended to be
used, and the possible significance that the mark is likely
to have on the average purchaser encountering the goods in
the marketplace. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Consolidated
Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991); In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986) and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979).
That is, the question is not whether someone presented
with only the term or phrase could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
term or phrase to convey information about them. See In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corp., 226 USPQ
365 (TTAB 1985).
On the other hand, applicant argues that its trademark
is not merely descriptive, while conceding that it may well
be suggestive. A mark is suggestive, and therefore
registrable on the Principal Register without a showing of
acquired distinctiveness, if imagination, thought or
perception is required to reach a conclusion on the nature
Serial No. 78/071,439
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of the goods or services. See In re Gyulay, supra.
Accordingly, applicant argues that potential consumers
would have to use some imagination or thought in order
readily to understand the nature of these goods being
offered by applicant in connection with this mark:
“… [T]here is no evidence that the word
‘FLEX’ could be commonly understood to refer
to a FLEXIBLE LED in particular.”
(applicant’s appeal brief, p. 3).
Applicant’s identification of goods makes it clear
that “light emitting diodes” are key components of
applicant’s goods. As noted by the Trademark Examining
Attorney, the entire record (applicant’s webpages, the
LEXIS/NEXIS excerpts, applicant’s responses, brief, etc.)
demonstrates that the initialism “LED” is recognized as
interchangeable with “light emitting diode.” For good
measure, the Trademark Examining Attorney has included an
Internet screenprint from “The Acronym Finder” showing
“light emitting diode” as the first of six listings for the
entry, “LED.”
The areas of disagreement between applicant and the
Trademark Examining Attorney are over (i) whether the term
“Flex” is merely descriptive for the identified goods, and
(ii) whether the composite is descriptive when the prefix,
“flex,” is combined with the LED designation.
Serial No. 78/071,439
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We begin our analysis of this case by noting that the
arguments herein -- those made by applicant as well as
those made by the Trademark Examining Attorney – failed to
provide us with a clear context for understanding these
products. However, we take it from a perusal of
applicant’s webpage that applicant is a manufacturer in the
low-voltage lighting industry, specializing in light
emitting diode, or LED, technology. These particular LED
modules are used in architectural lighting products and
electronic signage products such as channel letters of
lighted signs. Appealing to target customers such as small
entrepreneurs and professional sign makers, applicant touts
its LED lighting as being preferable to neon for lighted
signs.
The excerpt from applicant’s website (placed into the
record by applicant) shows that the recited goods are
generically known as “strips.” Applicant’s promotional
materials point out that these linear strips can easily be
field cut, wired together and bent for lighting in outdoor
signage. In fact, according to these materials, one of the
keys to the product’s commercial success is its mechanical
flexibility.
As to nomenclature, throughout applicant’s webpages
(found at www.flexled.com and at www.svision.com),
Serial No. 78/071,439
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applicant’s alleged trademark (“Flex-LED”2) is actually used
interchangeably with highly descriptive (if not generic)
names such as “flexible LED strip,” flex-LED strip, “flex-
LED board,” and “flex-strip.”
Among the benefits touted by applicant at its website,
(e.g., flexibility, energy saving, ease of installation,
etc.), one of the main advantages applicant stresses is its
mechanical “flexibility.” Accordingly, we agree with the
Trademark Examining Attorney that in this context, the
unabbreviated word, “flexible,” would clearly run afoul of
Section 2(e)(1) as applied to the identified goods. The
term “flex,” whether used as a stand-alone term or as a
prefix with other matter, means “Flexible.”3 Moreover,
given the ease with which applicant itself uses “flexible”
and “flex” interchangeably on its website, we find that the
2 Interestingly, except in its trademark application drawing,
at no point does applicant present its alleged mark as FLEXLED
(i.e., in an unbroken string of same-sized, upper-case letters).
While the “Flex” syllable is always set off in some manner from
the “LED” designation, applicant is otherwise quite inconsistent
in how it presents its mark, using variations such as flexLED,
Flex-LEDs, Flex-Led’s and the special form, .
While not in any way critical to the outcome of this case,
these visual presentations as actually written out by applicant
suggest that this alleged mark, when spoken, is articulated as a
one-syllable word followed by three spoken letters, e.g., “flex-
L-E-D”.
3 We take judicial notice of two separate dictionary entries:
flex: … n. … 3. Pliancy; flexibility …
flex-: pref. Flexible …
The American Heritage Dictionary of the English Language, (4th ed.
2002).
Serial No. 78/071,439
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clearly descriptive term, “flexible,” loses nothing in this
context when shortened to “flex.”4
We turn briefly to the LEXIS/NEXIS excerpts placed
into the record by the Trademark Examining Attorney in
support of her position. While most stories contain the
word “flexible” within several words of “light emitting
diode,” we agree with applicant they do not help in any
manner the case being made by the Trademark Examining
Attorney herein. These articles all reflect contracts for
cutting-edge military technologies having nothing in common
with the goods we are dealing with herein.
Turning to the final issue in this case, midway
through its brief, applicant seems almost to concede the
descriptiveness of the two separate components of this
composite mark. Applicant then points to several trademark
registration cases for the proposition that even if one
were to conclude that the two separate components of this
composite mark were individually merely descriptive of
applicant’s goods, the unique combination will not permit
potential customers to grasp the nature of applicant’s
products. See In re Pennwalt Corporation, 173 USPQ 317
4 In spite of the fact that applicant argues that this record
is devoid of any evidence showing that the word “flex” would be
understood to refer to a “flexible LED,” applicant’s own website
employs a telling parallel construction within a single sentence,
Serial No. 78/071,439
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(TTAB 1972) [DRI-FOOT is not merely descriptive of anti-
perspirant deodorant for feet]; and In re Shutts, 217 USPQ
363 (TTAB 1983) [SNO-RAKE is not merely descriptive of a
snow removal hand tool]. Specifically, applicant argues
that the applied-for mark creates a “whimsical and
incongruous combination” (applicant’s appeal brief, p. 4).
It is in the context of this disagreement over whether
applicant’s mark comprises a unique combination of terms
that applicant argues that each one of its traditional LED
components is rigid5 (and hence not flexible). Applicant is
correct, and the Trademark Examining Attorney appears to
agree. In turn, the Trademark Examining Attorney argues
that the printed circuit boards making up the backbone of
the linear strips are undeniably flexible. And on this
point, the Trademark Examining Attorney is correct, and
applicant seems to agree. However, this exchange appears
much too theoretical. Absent sufficient illumination of
the practical realities of these products, applicant and
the Trademark Examining Attorney have engaged this issue
much like two blind jousters. As seen in our discussion
stating that “Flex-LED’s is a low voltage, flexible,
monochromatic, LED strip…” http://www.flexled.com/ABOUT/ABOUT.html.
5 According to the photograph on applicant’s website, each
diode measures only a few millimeters across, and according to
applicant, is constructed with rigid materials such as Gallium
Arsenide, Aluminum Gallium Arsenide, Indium Phosphide, etc.
Serial No. 78/071,439
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above, whether the involved goods are thought of as
“lighting strips” or “LED modules” (the flexible circuit
board connected to rigid lighting components), the combined
term, “Flex-LED” is not at all “whimsical” or “incongruous”
as applied to flexible lighting strips containing rigid
LED’s.
Decision: The refusal to register FLEXLED as merely
descriptive under Section 2(e)(1) of the Lanham Act is
hereby affirmed.