IN RE FREESTYLE AUDIO, LLC, 78617838 (TTAB 7-16-2007)
In re Freestyle Audio, LLC
Serial No. 78617838United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: July 16, 2007Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Kit M. Stetina of Stetina Brunda Garred Brucher for Freestyle Audio, LLC.
Amy C. McMenamin, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney).
Before Grendel, Cataldo and Wellington, Administrative Trademark Judges.
Opinion by Grendel, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register of the mark WATERPROOF MP3 PLAYER (in standard character form) for goods identified as "audio equipment."[fn1]Page 2
At issue in this appeal is the Trademark Examining Attorney's refusal to register the mark on the ground that it is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Also at issue is the Trademark Examining Attorney's final refusal to register based on applicant's failure to comply with her requirement for an acceptable identification of goods which does not exceed the scope of the goods as identified in the original application. Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a).
We affirm the refusals to register.
We turn first to the refusal based on applicant's failure to submit an acceptable amendment of the identification of goods. In the original application, the identification of goods was "audio equipment." In her first Office action, the Trademark Examining Attorney required applicant to submit a more definite identification of goods, i.e., to specify the nature of the audio equipment. In response, applicant submitted a proposed identification of goods reading: "audio equipment, namely, MP3 players, armbands for securing the MP3 player, and earphones sold on-line and through authorized dealers."Page 3
The Trademark Examining Attorney, in her final Office action, rejected the proposed amendment because it included "armbands for securing the MP3 player," finding that this wording was beyond the scope of the "audio equipment" identified in the original application. She suggested that an acceptable amendment to the identification of goods would be "audio equipment, namely, MP3 players and earphones sold on-line and through authorized dealers."
Applicant did not comply with the Trademark Examining Attorney's requirement, nor did it respond to or adopt the Trademark Examining Attorney's suggested amended identification of goods as set forth in the final Office action. Likewise in its appeal brief, applicant has not mentioned or presented any argument on the Trademark Examining Attorney's final requirement with respect to the identification of goods. In her brief, the Trademark Examining Attorney has maintained her requirement for an acceptable identification of goods.
A written application must specify the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.15 U.S.C. §§ 1051(a)(2) and 1051(b)(2);37 C.F.R. § 2.32(a)(6). To "specify" means to name in an explicit manner. Thus, the identification of goods in anPage 4
application must be specific, definite, clear, accurate and concise. See TMEP Section 1402.01 (4th ed. April 2005), and cases cited therein. Based on these authorities, we find that the Trademark Examining Attorney correctly rejected as indefinite the "audio equipment" identified in the original identification of goods, and correctly required an amended identification which set forth the goods with greater specificity.
Trademark Rule 2.71(a) provides that: "The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services." We agree with the Trademark Examining Attorney that the wording "armbands for securing the MP3 player" in applicant's proposed amended identification of goods is beyond the scope of the original identification of goods, i.e., "audio equipment." Armbands are not audio equipment. We therefore affirm the refusal to register which is based on applicant's failure to comply with the Trademark Examining Attorney's requirement for an acceptable identification of goods which does not exceed the scope of the original identification of goods.[fn2]Page 5
Because the Trademark Examining Attorney never accepted applicant's proposed amendment to the identification of goods, the operative identification of goods in this case remains the identification set forth in the original application, i.e., "audio equipment."[fn3] Cf. TMEP Section 1402.07(d) (4th ed. April 2005) (if proposed amendment is not accepted, original identification of goods remains operative for purposes of any future proposed amendment).
We turn now to the Section 2(e)(1) mere descriptiveness refusal, which requires us to determine whether applicant's mark, WATERPROOF MP3 PLAYER, is merely descriptive of the goods identified in the application, i.e., "audio equipment."
A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor DevelopmentCorp., 588 F.2d 811, 200 USPQ 215,Page 6
217-18 (CCPA 1978). 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 attribute, function or property of the goods or services. See In reH.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In reMBAssociates, 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 on or in connection with those goods or services, 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. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that "[t]he question is not whether someone presented with only the mark 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 mark to convey information about them." Inre Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).Page 7See also In re Patent Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Associationof Greenville, 18 USPQ2d 1313 (TTAB 1990); andIn re American Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applying these principles in the present case, and based on the evidence of record discussed below, we find that applicant's mark WATERPROOF MP3 PLAYER is merely descriptive of the goods identified in the application i.e., "audio equipment."
"Waterproof" is defined as "impervious to or unaffected by water." The American Heritage Dictionary of the EnglishLanguage (4th ed. 2000).[fn4] "MP3" is defined as "1. an MPEG standard used especially for digitally transmitting music over the Internet. 2. A file containing a song or other audio data that is encoded using this standard: The band released its latest single as anMP3 on the Internet." (Id.)[fn5]
"Player" is defined, in pertinent part, as "a machine that reproduces recorded audio or audiovisual material." (Id.) The word "audio," as itPage 8
appears in applicant's identification of goods and in the above-quoted definitions of "MP3" and "player," is defined in pertinent part as "2a. Of or relating to the broadcasting or reception of sound. b. Of or relating to high-fidelity sound reproduction." (Id.)
The evidence of record establishes that an "MP3 player" is a type or sub-category of "audio equipment;" it therefore is encompassed within the goods identified in applicant's application. Indeed, the proposed amended identification of goods proffered by applicant (see supra) specifically identifies "MP3 player" as a type of "audio equipment" ("audio equipment, namely MP3 players. . .")
The evidence of record likewise clearly shows that a sub-category of MP3 players is "waterproof MP3 players." The record is replete with examples of usage (in reference to the products of third parties) of "waterproof MP3 player" to directly describe MP3 players which are waterproof. For example:
HGTV's "I Want That," the Finis swiMP3 . . . is a combination swimming goggle and waterproof MP3 player that you'll want too.
(San Antonio Express-News, Nov. 28, 2005);
Action Accents started selling the waterproof MP3 players in January. . .
(Des Moines Register, June 30, 2005) ;Page 9
Equally surprising is the raft of waterproof MP3 players to hit the market recently. Sony has one, . . . as does Oregon Scientific. . .
(Forbes FYI, June 20, 2005);
Coffee shop and retail chain Sanborns will be the first company to stock Oregon's products, which include waterproof MP3 players, laptops for early learners and digital voice recorders.
(Business News, Nov. 18, 2005);
H20 Audio and iRiver are out with the H20 Audio SV i700, he first waterproof MP3 player designed for the action water sports market.
(PC Magazine, Oct. 5, 2004);
Finally, Oregon Scientific also has another MP3 player offering something new. It's the first waterproof MP3 player with LCD.
(Time Out, Sept. 1, 2004);
If you want to pump up your program with music, check out a waterproof MP3 player. . .
(Shape, Aug. 1, 2004); and
The company also hopes to launch a waterproof MP3 player in the fall that it plans to call H20 Man. The player even can be used while swimming and surfing. . .
(The Honolulu Advertiser, May 28, 2003).
Furthermore, on applicant's own website (made of record by the Trademark Examining Attorney), there are several uses, including by applicant itself, of "waterproof MP3 player" in a descriptive manner, i.e., in lowercase letters, in reference to applicant's goods. For example:Page 10
"Completely submergible waterproof MP3 Players"; "With this in mind, Freestyle Audio has fused these two elements to introduce the world's first completely submergible and waterproof MP3 player"; "By far the best waterproof MP3 player to date"; and "I'd definitely recommend the Freestyle Audio waterproof MP3 player to all surfers." Applicant's own merely descriptive usage of "waterproof MP3 player" is especially probative evidence of the mere descriptiveness of WATERPROOF MP3 PLAYER. See, e.g., In re Gould Paper Corp.,834 F.2d 1017, 5 USPQ2d 1836 (Fed. Cir. 1987).
Based on this evidence of record, we find without doubt that WATERPROOF MP3 PLAYER, the mark applicant seeks to register, is merely descriptive of the "audio equipment" identified in applicant's application. MP3 PLAYER merely describes the particular type of "audio equipment," and WATERPROOF merely describes a significant feature or characteristic of the MP3 player, i.e., that it is waterproof. The combination of these terms does not result in a composite which is any less merely descriptive than each of the terms considered separately as applied to the goods. We have considered applicant's arguments inPage 11
traversal of the mere descriptiveness refusal, but we find them to be wholly unpersuasive.[fn6]
Decision: The Section 2(e)(1) mere descriptiveness refusal to register is affirmed. The refusal based on applicant's failure to comply with the requirement for an acceptable identification of goods likewise is affirmed.
[fn1] Serial No. 78617838, filed April 27, 2005. The application is based on applicant's asserted bona fide intention to use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C. § 1051(b). As discussed below, the operative identification of goods in the application is the original identification, i.e., "audio equipment," and not the amended identification of goods proposed by applicant and deemed unacceptable by the Trademark Examining Attorney, i.e., "audio equipment, namely, MP3 players, armbands for securing the MP3 player, and earphones sold on-line and through authorized dealers."
[fn2] We add that even if we were to deem applicant's proposed amended identification of goods as the operative identification of goods for purposes of this appeal, we would still affirm the Section 2(e)(1) mere descriptiveness refusal.
[fn3] It appears that notwithstanding the Trademark Examining Attorney's refusal to accept applicant's proposed amendment to the identification of goods, that proposed amendment was erroneously entered into the application record. The application record shall be corrected to reflect the operative identification of goods, i.e., "audio equipment."
[fn4] The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C.Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
[fn5] The same dictionary defines "MPEG" as "1. Any of a set of standards established for the compression of digital video and audio data. 2. A file of digital video and audio data that has been so compressed."
[fn6] Genericness is not at issue in this appeal, because applicant is not seeking registration on the Supplemental Register or pursuant to the acquired distinctiveness provisions of Trademark Act Section 2(f). The Trademark Examining Attorney's statements in her Office actions regarding genericness (i.e., that she could not recommend that applicant seek registration on the Supplemental Register or pursuant to Section 2(f)) were advisory only. Applicant's arguments in its brief regarding genericness therefore are inapposite in this case. However, we will note that if genericness had been an issue in this case, we would not hesitate to find that the evidence set forth above clearly establishes that WATERPROOF MP3 PLAYER is the generic name of a particular sub-category of "audio equipment," namely waterproof MP3 players.