Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ANALOG DEVICES, INCORPORATED
Serial No. 543,943
March 21, 1988
Hearing: January 14, 1988
Parmelee, Bollinger & Bramblett for applicant
Trademark Examining Attorney
Law Office 3
(Myra Kurzbard, Managing Attorney)
Before Krugman, Cissel and Hanak
Analog Devices, Incorporated has applied to register 'ANALOG DEVICES' as a trademark on the Principal Register for the following goods:
'operational amplifiers, power supplies, active filters, converters including analog-to-digital and digital-to-analog converters, instrumentation and isolation amplifiers, analog computational circuits, voltage references, transducers, sample track-hold amplifiers, data-acquisition modules, switches, multiplexers, monolithic chips, linear IC testers, analog multiplier/dividers, log-analog amplifiers, signal conditioners, digital panel meters, microcomputer I/O subsystems comprising input/output boards, measurement and control systems comprising signal conditioners, signal isolators and converters, computer programs for electronic data processors for computer based measurement of signals, computer programs for electronic data processors for computer based measurement and display of input signals and computer programs for electronic data processors for computer based measurement of input signals and generation of output signals in response to measured input signals for control thereof; computer programs for visual inspection of assembly and production lines, quality control for production and assembly lines, robot guidance of assembly operations, inventory control; digital thermometers; computer interface products, namely, real-time interfaces and data exchangers, serial transmittal card/modules, serial receiver card/modules and serial multiplier card/modules.' [FN1]
Registration was refused under Section 2(e)(1) of the Trademark Act on the ground that the designation 'ANALOG DEVICES' is merely descriptive of applicant's goods. Applicant, while maintaining its position that the term sought to be registered is only suggestive of the goods, has alternatively claimed that the term 'ANALOG DEVICES' has acquired distinctiveness in the industry and that registration should be allowed pursuant to the provisions of Section 2(f) of the Act.
In support of applicant's Section 2(f) showing, applicant submitted a declaration of a corporate officer attesting to applicant's substantially exclusive and continuous usage of 'ANALOG DEVICES' for the five years next preceding the application filing date as well as attesting to sales and advertising expenditures for the years 1972-1985 inclusive. In addition, applicant has submitted various publications showing use of the term 'ANALOG DEVICES' by applicant, a copy of the results of a 1985 Brand Recognition Survey performed by Electronic Design magazine, two declarations from an employee of applicant concerning the Brand Recognition Survey, a copy of an advertisement appearing in the Wall Street Journal and some twenty customer declarations.
*2 In response to applicant's claim of distinctiveness under Section 2(f), registration was refused on the ground that the record did not support applicant's claim of distinctiveness; that the record showed that the term 'analog devices' is used in the trade to apply to a variety of data communications devices and that applicant's goods, as identified in the application, include items which are in the nature of analog devices. The Examining Attorney concludes that 'ANALOG DEVICES,' as applied to those products, is so highly descriptive as to be on apt commercial name for them. While the Examining Attorney has considered the evidentiary submissions of applicant in support of the claim of distinctiveness, he contends that the designation sought to be registered is a generic or common descriptive designation for products such as those of applicant and that the term 'ANALOG DEVICES' is legally incapable of distinguishing applicant's goods from those of others regardless of the existence of evidence of de facto secondary meaning.
In support of the Examining Attorney's refusal, he has submitted dictionary excerpts as well as copies of excerpts from articles taken from the NEXIS research data base.
It is clear that in order to determine whether a term is a generic or common descriptive designation, one must determine whether members of the relevant public primarily use or understand the term to refer to the genus of goods. See: H. Marvin Ginn Corp. v. International Association of Fire Chefs, Inc. 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Evidence of the public's understanding of the term may be obtained from any competent source, including newspapers, trade journals and other publications. See: In re Merrill, Lynch, Pierce, Fenner, and Smith, Inc., ___ F.2d ___, 4 USPQ2d 1141 (Fed. Cir. 1987), citing In re Northland Aluminum Products, 777 F.2d 1556, 1559, 227 USPQ 961, 963 (Fed. Cir. 1985); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979); In re Thunderbird Products Corp., 406 F.2d 1389, 1390-91, 160 USPQ 730, 731-32 (CCPA 1969). As is made clear from the Merrill, Lynch case, the burden of proving genericness lies with the Office and the Examining Attorney must demonstrate clear evidence of genericness. We believe that this burden has been met in this case and that the refusal of registration is well taken.
The Examining Attorney has shown that the term 'analog' is defined as 'pertaining to representation by means of continuously variable physical qualities. . . .' See: Computer Dictionary (2nd ed.) of record herein. Similarly, Webster's New World Dictionary of Computer Terms of record herein defines 'analog' as 'referring to the representation of numerical quantities by the measurement of continuous physical variables for example, the magnitude of an electronic signal might represent a number. Compare DIGITAL.' The Examining Attorney also points to the definition of the term 'device' in McGraw-Hill's Dictionary of Scientific and Technical Terms (1984 Third Ed.) as '(Comput Sci.) A general-purpose term used, often indiscriminately, to refer to a computer component or the computer itself. (Electr.) An electronic element that cannot be divided without destroying its stated function; commonly applied to active elements such as transistors and transducers. (Eng.) A mechanism, tool, or other piece of equipment designed for specific uses.'
*3 In addition to the foregoing definitions of the individual terms 'analog' and 'device,' the Board notes that McGraw-Hill's Dictionary of Scientific and Technical Terms referred to above, defines the term 'analog device' as '(Electr.) A control device that operates with variables represented by continuously measured voltages or other quantities.' (copy attached) Similarly, the IEEE Standard Dictionary of Electrical and Electronics Terms (1972) defines 'analog device' as 'A device that operates with variables represented by continuously measured quantities such as voltages, resistances, rotations, pressures, etc.' (copy attached. [FN2]
We think it is clear from the foregoing evidence of the dictionary meanings of the individual words 'analog' and 'devices' and the dictionary meanings of the composite term 'analog device' that 'analog devices' names a category or class of devices having analog capabilities. While some of the products enumerated in applicant's recitation of goods may not include devices in this category or class, at least some of the goods, such as analog to digital and digital to analog converters, analog computational circuits and analog multipliers/dividers would, in our view, fall within the category of analog devices. In this regard, it is a well settled legal principle that where a mark may be merely descriptive of one or more items of goods in an application but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought. See: In re Canron, Inc., 219 USPQ 820 (TTAB 1983) and cases cited therein). There is no logical reason to treat differently a term that is generic of a category or class of products where some but not all of the goods identified in an application fall within that category.
In addition to the foregoing dictionary evidence, the NEXIS excerpts made of record by the Examining Attorney demonstrate use of 'analog devices' as a common descriptive designation for a variety of products. For example, a September/October 1981 article in High Technology magazine states: 'Replacing analog devices, digital computers and instruments promise lower cost through greater fuel efficiency and easier maintenance.' A March 17, 1986 article in U. S. News World Report states that '. . . Most of today's audio and video products are analog devices that use changes in electrical voltage to create sounds and pictures.' Other NEXIS articles have been made of record from a variety of publications in specialized technical areas evidencing use of 'analog devices' in its ordinary generic sense referring to a variety of products having analog capabilities. These include Defense Electronics, Mechanical Engineering, Electronics, Aviation Week and Space Technology and the Oil & Gas Journal.
We are satisfied from the foregoing evidence that 'analog devices' is a generic designation, within the guidelines set forth in the Ginn decision, supra, and that the term cannot be exclusively appropriated by a single entity. Applicant argues that the term is too nebulous and vague to be commercially useful for competitors of applicant to use to describe any products. However, while we readily concede that the category of products which the term 'analog devices' names encompasses a wide range of products in a variety of fields, we do not believe this fact enables such a term to be exclusively appropriated by an entity for products, some of which fall within that category of goods. For example, while terms such as 'digital devices,' 'computer hardware,' 'computer software' and 'electronic devices,' just to name a few, may be broad and even nebulous terms, nevertheless, these terms may not be exclusively appropriated but must be left for all to use in their ordinary generic sense.
*4 We have considered the evidence submitted by applicant in support of its showing of acquired distinctiveness and we readily concede that said evidence is substantial. However, considering the character of the term sought to be registered, we find that the evidence of record shows that the primary significance of the term 'analog devices' as applied to at least certain of the goods listed in the application is a generic or common descriptive name. [FN3]
G. D. Krugman
R. F. Cissel
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 543,943 filed June 20, 1985.
FN2. While the above definitions of 'analog device' have not previously been made of record, it is well settled that the Board may taken judicial notice of definitions of terms in dictionaries, including technical trade dictionaries. See: Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852 (TTAB 1981) and cases cited therein.
FN3. In the event it is ultimately determined that our decision herein is incorrect and that the designation sought to be registered is not a generic, common descriptive term, we find that the evidence of secondary meaning submitted by applicant is sufficient to allow registration pursuant to Section 2(f) of the Trademark Act.