Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE COPYTELE, INC.
Serial No. 74/132,330
May 16, 1994
Released: June 23, 1994
Blanca I. Santiago-Torres
Trademark Examining Attorney
Law Office 3
(Kathryn Dobbs, Managing Attorney)
Before Sams, Rice and Quinn
Administrative Trademark Judges
Opinion by Sams
Chief Administrative Trademark Judge
Copytele, Inc. (applicant) has appealed from the trademark examining attorney's refusal to allow registration of its trademark "SCREEN FAX PHONE" for goods identified as "facsimile terminals employing electrophoretic displays." [FN1] Applicant filed its application under Section 1(b) of the Trademark Act, claiming a bona fide intention to use its trademark in commerce. The examining attorney refused registration on two grounds. She refused registration under Section 2(e)(1), holding that applicant's mark is merely descriptive of the goods on which applicant proposes to use the mark. And she refused registration under Section 2(d), citing a registration, on the Supplemental Register, of the mark "FAXPHONE" for goods identified in the cited registration as "electronic facsimile communications units featuring multifunctional desk telephones and parts therefor. [FN2] We affirm the refusal to register--on both grounds asserted by the examining attorney.
The Section 2(e)(1) Refusal
The examining attorney argues that applicant's mark "SCREEN FAX PHONE," when applied to applicant's "facsimile terminals employing electrophoretic displays," would merely inform prospective purchasers that applicant's goods are facsimile transmission devices that incorporate display screens and telephones. In support of her refusal, the examining attorney made of record several dictionary definitions, including definitions of the words "display" ["The physical representation of data, as on a screen or display"], [FN3] "FAX" ["An acronym for FACSIMILE. An equipment configuration that facilitates the transmission of images over a common carrier network."], [FN4] "screen" ["A surface on which information is displayed, such as a video display screen."], [FN5] "electrophoretic display" ["A liquid crystal display in which a light-absorbing dye has been added to the liquid to improve both color and luminance contrast."], [FN6] and "phone" ["a telephone"]. [FN7]
Applicant argues that its mark as a whole is not merely descriptive, because the word "SCREEN" has "no meaning" as applied to its goods. Applicant argues also that, even assuming that each of the three words "SCREEN," "FAX," and "PHONE" describes an aspect of its goods, its mark "SCREEN FAX PHONE" must be viewed as a unitary expression that combines the three words in a way that is only suggestive of the goods rather than merely descriptive of them; that "mature thought" would be required, upon seeing applicant's mark, to formulate an idea about the nature of applicant's goods.
The goods for which applicant seeks registration of its mark are identified as "facsimile terminals employing electrophoretic displays." Because this is an application under Section 1(b), we have of record no specimens of use nor product literature illustrating applicant's goods. And applicant has not described in any detail the nature of the goods on which it intends to use its mark--in particular, the "electrophoretic displays" that are to be part of its facsimile terminals. We must look, then, to the dictionary definitions made of record by the examining attorney to make conclusions about the nature of applicant's goods. While applicant claims that the word "SCREEN" has "no meaning" when applied to its goods, the dictionary definition of "electrophoretic display" ["a liquid crystal display in which a light-absorbing dye has been added to the liquid to improve both color and luminance contrast"] suggests otherwise. An "electrophoretic display" appears, from this definition, to be a species of display "screen."
*2 While applicant is correct that a non-descriptive trademark may be fashioned from the incongruous combination of several words that are, individually, merely descriptive of an applicant's goods, we fail to see anything incongruous in the combination of the words "SCREEN FAX PHONE." The mark consists of nothing more than a list of the three principal parts of applicants goods--a screen, a facsimile transmission device, and a telephone. And, if one were to encounter applicant's goods bearing its mark "SCREEN FAX PHONE," "mature thought" would hardly be required to conclude that the goods comprised those three components. See In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) [mark "COMPUTER SONAR" refused registration on the Supplemental Register for "sonar apparatus for detecting the depth of water and the depth of objects and fish in the water," the Board finding that the combination of the two generic terms was not incongruous].
The Section 2(d) Refusal
The examining attorney cited, as a Section 2(d) bar to registration of applicant's mark, the Supplemental Register registration of the mark "FAXPHONE" for "electronic facsimile communications units featuring multifunctional desk telephones and parts therefor." The examining attorney argues that confusion is likely in the contemporaneous use of applicant's mark and the mark of the cited registrant, because the goods listed in the cited registration are virtually the same as those set forth in applicant's application and because applicant's mark and the cited mark are substantially similar.
Applicant, for its part, argues that, because its mark contains the word "SCREEN," while the cited mark does not, the two marks convey wholly different impressions. Applicant argues also that the cited mark, which is registered on the Supplemental Register, is a weak, obviously descriptive, mark and that, where a cited mark is weak, even slight differences between marks may be deemed sufficient to avoid a finding that confusion is likely.
Applicant's goods and those listed in the cited registration are substantially similar, if not identical. And, like the examining attorney, we find the marks "SCREEN FAX PHONE" and "FAXPHONE" substantially similar in appearance. True, applicant's mark contains the additional word "SCREEN." But "SCREEN" is a descriptive word--a word that names one of the components of applicant's goods--and, as such, it is insufficient to invest applicant's mark as a whole with an appearance or connotation substantially different from the appearance and connotation of the cited mark. Moreover, to the extent that potential purchasers were aware of the differences between these marks, we believe it likely that, because of the similarities in the marks, those purchasers would assume the marks identified two different facsimile devices-- one with a screen and one without--emanating from a single source.
*3 Applicant is correct in its assertion--and has cited apt case law to support it--that, in the case of weak marks, even slight differences between marks may be deemed sufficient to avoid a finding that confusion is likely. Nonetheless, we agree with the examining attorney in this case that the weakness of the marks involved, as a factor weighing against a finding of likelihood of confusion, is overbalanced by the virtual identity of the applicant's and the cited registrant's goods and the substantial similarity in the overall appearance of their marks.
DECISION: The refusal to register is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Ser. No. 74/132,330, filed January 22, 1991.
FN2. Registration No. 1,551,475, issued September 8, 1989 to Canon Kabushiki Kaisha Corp.
FN3. Webster's New World Dictionary of Computer Terms (3d ed. 1988).
FN6. McGraw-Hill Dictionary Of Scientific and Technical Terms (3d ed. 1984).
FN7. Webster's II New Riverside University Dictionary (1984).