Tuesday, November 27, 2012

TTAB Reverses Mere Descriptiveness Refusal of "PC ON A STICK" for Computer Software and Hardware

Newly-appointed TTAB Judge Anthony R. Masiello penned the Board's opinion in this appeal from a Section 2(e)(1) mere descriptiveness refusal of the mark PC ON A STICK for "computer software for computer system and application development, deployment and management; computer operating system software; computer operating programs and computer operating systems; computer software and firmware for operating system programs; computer storage devices, namely, blank flash drives and high-speed storage subsystems for storage of computer operating programs and systems either locally or via a telecommunications network; computer memory hardware; and computer hardware." The Board reversed the refusal, finding that a consumer "must undertake a multistage reasoning process through which he or she may appreciate the suggestion that the STICK does not contain a PC, but rather all of the data and software content of a PC." In re Lockheed Martin Corporation, Serial No. 85073741 (November 15, 2012) [not precedential].

The Examining Attorney relied on dictionary definitions of STICK and PC, on several online articles, and on Applicant's specimens of use, in maintaining that PC is a commonly-recognized reference to "personal computer," that STICK is a slang expression for a memory module, such as a USB stick, and that PC ON A STICK directly informs consumers that Lockheed's goods "enable the user to carry the essence of their PC with them on a flash drive. The product enables a flash drive to function as a virtual PC."

The Board found the definitions sufficient to establish the meanings of PC and STICK, and it concluded that Applicant's mark, when considered in its entirety, means "a personal computer installed on, contained within, held upon or otherwise connected to a memory storage device such as a flash drive or other compact data storage medium."

Applicant's software products are not computers, and therefore PC ON A STICK does not describe them. But what about "computer storage devices" and "computer hardware?"  

The evidence showed that Applicant's product is an encrypted flash drive capable of holding the contents of a laptop's hard drive, including operating system and software applications.

The Board recognized that PC and STICK have "some relevance to the nature of applicant's goods." But Applicant's goods are not "computers" of any kind. The product may be a STICK for use with a computer, but the product does not and cannot perform the functions of a computer. The Board concluded that the mark suggests the function and purpose of the goods, but it does not do so "forthwith and with immediacy."

Rather, the  mark is both elliptical and exaggerative. The term PC is used elliptically to stand in for "all of the data and software content of a PC." PC is also exaggerative, as the mark suggests that the product is the equivalent of a PC actually contained within a STICK ...." In order to understand the meaning of the mark in the context of these goods, a customer must undertake a multistage reasoning process, through which he or she may appreciate the suggestion that the STICK does not contain a PC, but rather all of the data and software content of a PC. The indirect way in which the mark conveys this information renders it suggestive rather than descriptive of the nature of applicant's computer storage devices.

The Examining Attorney provided three news items evidencing third-party use of PC ON A STICK for similar goods, but each article acknowledged that the product is not in fact a PC, but rather for use with a PC. Thus each writer understood that PC ON A STICK is an exaggeration. "It is reasonable to conclude that, in using the expression PC ON A STICK, each of these writers independently and coincidentally exercised the same expressive license that the applicant used in developing the trademark." These three items amount to "scant evidence" of the meaning of Applicant's mark in the marketplace.

Finally, what about "computer memory hardware; and computer hardware?" There was no evidence that any such product could accurately be described as a PC ON A STICK, and thus no basis for finding the mark descriptive as to those identified goods.

And so the Board reversed the refusal.

TTABlog note: I think the Board got this one right. Not enough evidence of descriptiveness. What do you think?

Text Copyright John L. Welch 2012.


At 12:33 PM, Blogger Pamela Chestek said...

It's a generic term but the Examining Attorney didn't go far enough to prove it. It's used widely to describe this type of device, i.e., a USB stick with an operating system on it. One just boots the computer from the USB drive rather than the hard drive. So while I agree that it's not descriptive by the Board's reasoning (it's not actually a computer), it is generic through widespread use.


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