Video Messenger.com Corp.

Trademark Trial and Appeal Board

Sep 28, 2007

No. 76611883 (T.T.A.B. Sep. 28, 2007)

Hearing: Mailed: September 28, 2007
February 20, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Video Messenger.com Corp.
________

Serial No. 76611883
_______

Norm D. St. Landau of Drinker Biddle & Reath LLP for Video
Messenger.com Corp.

Katherine M. DuBray1, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Drost and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Video Messenger.com Corp. has filed an application to
register the mark VIDEO MESSENGER, in standard character
format, on the Principal Register for goods ultimately
identified as “computer hardware and software sold as a
unit for generating video images, namely, computer hardware

1 The above application originally was examined by another
examining attorney, but subsequently was reassigned to the
attorney whose name is shown to prepare the appeal brief.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 76611883
2
and software that enables users to place text messages over
video messages” in Class 9.2
The trademark examining attorney has issued a final
refusal to register on the ground that applicant’s mark
VIDEO MESSENGER, when used in connection with the
identified goods, is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). After
the refusal was made final, applicant appealed and
requested reconsideration of the final refusal. On May 26,
2006, the examining attorney denied the request for
reconsideration and the appeal was resumed. Applicant and
the examining attorney filed briefs3 and an oral hearing was
held. We affirm the refusal to register.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or services in connection with which it is used, or

2 Serial No. 76611883, filed September 17, 2004, and alleging
August 1985 as the date of first use of the mark anywhere and in
commerce.
3 The evidence attached to applicant’s brief is the same as that
previously submitted. Accordingly, it is already of record as
part of the application file, and its submission was unnecessary.
See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45
USPQ2d 2021, 2022-23 (TTAB 1998) (submission of duplicative
papers is a waste of time and resources, and is a burden upon the
Board).

Ser No. 76611883
3
intended to be used. See, e.g., in re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the goods or services in order to
be considered merely descriptive; it is enough that the
term describes one significant attribute, feature or
property of the goods or services. In re MBAssociates, 180
USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or intended to be used, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. In re Recovery, Inc., 196 USPQ 830 (TTAB 1977).
Applicant contends that its mark is not merely
descriptive of “computer hardware and software sold as a
unit for generating video images, namely, computer hardware
and software that enables users to place text messages over
video messages” because:
• Contrary to the Examining Attorney’s incorrect
conclusion, Applicant’s product does not enable
the transmission and reception of real-time
visual and textual messages. Applicant’s product
is a character generator that allows users to
Ser No. 76611883
4
place text over existing video images such as
television advertisements, in a variety of fonts,
color selections and character positions.

• A consumer viewing Applicant’s Mark must employ
mental reasoning to even attempt to reach a
conclusion as to how Applicant’s Mark might
relate to Applicant’s character generating
hardware and software. The Examining Attorney’s
reasons for refusing registration of Applicant’s
Mark on descriptiveness grounds demonstrate that
the mark is, at the very least, suggestive of
Applicant’s goods.

• Applicant’s predecessor-in-interest owned a
registration for the identical mark and identical
goods on the Principal Register without a claim
of acquired distinctiveness; and

• There is no evidence in the record to support the
refusal to register Applicant’s Mark on the
ground of descriptiveness.

Applicant’s brief, pp. 1-2.

By contrast, it is the examining attorney’s position
that the mark sought to be registered is descriptive of the
function of applicant’s goods because applicant’s computer
hardware and software transmits messages through video
means. She further argues that “the combination of ‘video’
and ‘messenger’ does not create a unitary mark that
projects a unique, non-descriptive meaning or commercial
impression within the relevant field,” and that allowing
applicant to register the designation VIDEO MESSENGER for
the identified goods would give applicant an unfair
competitive advantage over numerous third parties who use
Ser No. 76611883
5
the term VIDEO MESSENGER to identify a device or service
that relays messages through video means.
In support of the refusal, the previous examining
attorney submitted the following definitions, in relevant
part (emphasis in the original), of “video”:
ADJECTIVE: 3. Computer Science Of or
relating to the production of images on
video displays.

NOUN: 5. Computer Science The appearance
of text and graphic on a video display.4

Additionally, we take judicial notice of the following
definition of “messenger”:5
NOUN: 2. A bearer of news.6

The examining attorney also submitted excerpts of
numerous articles from the Lexis-Nexis® database and the
Internet illustrating the frequent usage of the term “VIDEO
MESSENGER” by a variety of users, principally for video
conferencing and/or sending or relaying text and images
from one electronic device to another. As applicant points
out, its goods do not allow for the transmission of data,

4 The American Heritage Dictionary of the English Language (4th
ed. 2000).
5 The Board may take judicial 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).
6 The American Heritage Dictionary of the English Language (4th
ed. 2000).
Ser No. 76611883
6
but rather allow consumers to add their own text to
existing video images such as closed-circuit advertising
systems. Therefore, the probative value of this evidence
is limited, at best, in assessing the consuming public’s
perception of the term VIDEO MESSENGER as describing
applicant’s computer hardware and software that enables
users to place text messages over video messages.
Notwithstanding that applicant’s goods do not enable
the transmission and reception of real-time visual and
textual messages, the record sufficiently demonstrates that
the designation VIDEO MESSENGER conveys forthwith the
function and/or purpose of applicant’s goods. The
dictionary definitions submitted by the examining attorney
as well as applicant’s own use of the term “video” in the
identification of goods show that VIDEO directly describes
an attribute of applicant’s goods, i.e., the generation of
video images. Additionally, as previously indicated, the
term “messenger” means “[a] bearer of news.” Because
applicant’s goods allow the user to communicate or “bear
news” by placing text messages over video messages the word
“messenger” is merely descriptive of applicant’s goods.
In view of the above, we find that the individual
terms VIDEO and MESSENGER have descriptive significance as
used in connection with the identified goods.
Ser No. 76611883
7
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods, then the resulting combination is
also merely descriptive. See, e.g., In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely
descriptive of commercial and industrial cooling towers).
Contrary to applicant’s contention, we find that the
record establishes that the designation VIDEO MESSENGER, as
a whole, is descriptive of the identified goods. When the
mark VIDEO MESSENGER is viewed on or in connection with the
goods listed in the application, there is nothing in the
mark which is incongruous, nor is there anything which
would require the gathering of further information, in
order for the merely descriptive significance thereof to be
readily apparent to prospective purchasers of the goods.
See, for example, In re Abcor Development Corp., Inc., 588
F.2d 811, 200 USPQ 215 (CCPA) (Rich, J., concurring)
[GASBADGE described as a shortening of the name “gas
monitoring badge”]; and Cummins Engine Co., Inc. v.
Continental Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA
1966) [TUBODIESEL held generically descriptive of engines
having exhaust driven turbine super-chargers]. That is,
Ser No. 76611883
8
the combination of the words “video” and “messenger” fail
to create a new and distinct commercial impression.
As evidenced by applicant’s informational brochure and
specimens of record, the purchasing public would perceive
the designation VIDEO MESSENGER as descriptive of
applicant’s computer hardware and software that enables
users to place text messages over video messages. The
brochure reads, in relevant part, as follows:
Put Your Message on Your TV
***
No matter what your business is Video
Messenger has an affordable system that will
help you communicate more efficiently with
your customers and guests. We offer a
variety of systems from multi-channel,
multi-location networks to a single set
solution.

***

Your Televisions can now be Video Bulletin
Boards!

The specimen reads, in relevant part, as follows:
The Video Messenger, VM-3 is an innovative,
multimedia communications device that is
much more than a character generator. It
allows you, the user, to effectively
communicate with your customers, guests,
residents, students, etc., using text,
digital images and video clips. You can
educate, inform and motivate your target
audience in ways that would have cost $
thousands more before the introduction of
this little giant. If you can use the V-3
system in any of the applications listed
Ser No. 76611883
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(click on the Applications Button), we
invite [sic] to explore our website to see
how the Video Messenger can help you get the
word out.
***
Applications
… Any application that needs quick and easy
information delivery
***

Note: This system is designed as a video
bulletin board with built-in backgrounds of
various colors. It will also gunlock text
messages over any external video source.

When prospective consumers encounter the designation
VIDEO MESSENGER in this context, it is clear that it would
immediately inform these consumers that applicant’s
computer hardware and software allows them to post and/or
relay messages by or over video.
Lastly, applicant contends that its predecessor-in-
interest owned a prior registration, now cancelled due to
applicant’s inadvertent failure to timely file an affidavit
under Section 8 of the Lanham Act, for the mark VIDEO
MESSENGER for the same goods, i.e., computer hardware and
computer programs sold as a unit for generating video
images.” Thus, applicant argues, “it follows that
Applicant’s Mark is not merely descriptive and is
registrable on the Principal Register without a claim of
distinctiveness.” Although applicant contends that the
Ser No. 76611883
10
goods are “the same,” the identifications read differently
and, unlike the present case, there is nothing in the
record to indicate that the prior registrant’s computer
hardware and software programs functioned as bulletin
boards or messaging service. Moreover, it is settled that
each case must be considered on its own merits based on
evidence of record at the time registration is sought. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001); and In re Scholastic Testing Service,
Inc., 196 USPQ 517 (TTAB 1977).
We conclude that when applied to applicant’s goods,
the designation VIDEO MESSENGER immediately describes,
without any kind of mental reasoning, the function of the
goods listed in the application, i.e., “computer hardware
and software sold as a unit for generating video images,
namely, computer hardware and software that enables users
to place text messages over video messages.”

Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.