Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE THE PORT AUTHORITY OF NEW YORK AND NEW JERSEY
Serial No. 406,220
April 9, 1987
Hearing: November 13, 1986
Lee C. Robinson, Jr. for applicant
Martin H. Marks
Trademark Examining Attorney
Law Office VI
(Ronald Wolfington, Managing Attorney)
Before Rice, Allen and Simms
The Port Authority of New York and New Jersey has appealed from the final refusal of the Trademark Examining Attorney to register the mark TELEPORT for 'telecommunications services.' [FN1] The Examining Attorney has refused registration on three grounds: (1) that applicant was not the owner of the asserted mark at the time of filing of the application, in contravention of Section 1 of the Act, 15 U.S.C. § 1051; (2) that applicant was not rendering telecommunications services under the mark as of the filing date of the application; and (3) that the term sought to be registered is merely descriptive under Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1). We affirm on grounds (2) and (3), but reverse on ground (1).
Ownership of the Mark
The specimens filed with the application, including a brochure and an accompanying folder, indicate that the TELEPORT satellite communications center/office park is a 'joint project' and a 'joint venture project' of applicant, The Port Authority of New York and New Jersey, Merrill Lynch & Co. Inc. and Western Union Telegraph Company. The Examining Attorney contends that the user and apparent owner of the asserted mark is the joint venture, only one of whose members is the applicant herein. It was incumbent upon applicant, the Examining Attorney contends, to furnish evidence, either of a documentary nature or a verified explanation, demonstrating that it, rather than the joint venture, owns the mark herein sought to be registered.
It is applicant's position, on the other hand, in its brief and at the oral hearing, that the term 'joint venture' in the brochure was not being used in the strict legal sense, that applicant is indeed the owner of the mark and that Merrill Lynch and Western Union are licensees who use the mark only with applicant's permission and under applicant's control. According to applicant, the nature and quality of the communications services rendered by the licensees under the mark are controlled by applicant.
We find applicant's arguments persuasive and supported by this record. It appears from the brochure and other information of record that the development and operation of the communications aspect of the satellite communications office park are to be performed under license by Teleport Communications, a partnership composed of Merrill Lynch and Western Union. [FN2] Counsel has represented that the licensee (partnership) has acknowledged that applicant is the owner of the mark and that the license agreement requires that the licensee and any sub-licensee shall meet the standards of quality established by applicant. While applicant and the Examining Attorney have argued about the propriety of the submission of the license agreement, applicant contending that it does not wish such an agreement to be placed on the public record, we believe that this record establishes to our satisfaction that applicant was the owner of the asserted mark at the time of filing.
Use of the Mark as of the Filing Date
*2 It is the Examining Attorney's position that this record reflects only the advertising of telecommunications services to be rendered at some time in the future under the asserted mark. Such use does not provide a basis for federal registration. [FN3] On the basis of this record and the arguments, it is clear that applicant had no use of the asserted mark in connection with 'telecommunications services' as of the filing date.
The brochure submitted with the application is replete with references as to how applicant's communications center and office park to be developed on Staten Island 'will provide' satellite communications services. For example:
The office park will provide the latest technological advances in satellite and terrestrial communications systems. The proposed location, suburban Staten Island, meets the technical clearance requirements of satellite communication and provides the opportunity to construct modern energy efficient, custom designed buildings to house communication and information processing equipment and staff. The complex will also provide the availability of emergency and/or alternate power sources to insure the continuance of operation in the event of a utility power failure. The earth station segment will have the capability of accessing almost all of the satellites in the domestic satellite arc. International access is also feasible. (The Teleport brochure, p. 3)
[Merrill Lynch and Western Union] will have the permanent role of coordinating and overseeing the continuing operation of the earth station facilities, fiber optic network, telecenter control building, and tenant communications systems. They will also act in a marketing and consulting role with prospective tenants. The private sector will play an important part in creating the actual telecommunications services. For example, it is expected that firms such as RCA, Western Union, GTE, American Satellite, AT&T, ITT, etc., may invest in the installation of satellite earth stations at the park. At the same time, the presence of these earth station facilities near the central business districts of New York and New Jersey will enable them to continue to provide state-of-the-art services to the region's employers.
(The Teleport brochure, pp. 6-7)
The Teleport is uniquely suited to meet the telecommunication needs for the future since it is the region's best available site, free of radio frequency interference. This factor will permit the installation of the shared satellite earth station facilities that will enable users to economically reach the 24 U.S. domestic satellites.
There will be redundant fiber optic links connecting The Teleport and its earth stations with the central business districts of New York and New Jersey.
(The Teleport brochure, p. 10)
[Merril Lynch and Western Union] will provide a high quality communications service with facilities that will be flexible, easily expandable and ready to meet all the needs of your organization. Ground breaking will take place in the first quarter of 1983 with initial service starting during the last half of 1983.
*3 (The Teleport brochure, p. 16)
Subsequent articles made of record by the Examining Attorney discussing applicant's projected Staten Island facility continue to speak in the future tense about applicant's proposed services. Indeed, applicant concedes that its Staten Island facility 'was not fully on stream for telecommunications services' at the time of filing of the application. Nevertheless, applicant contends that its TELEPORT telecommunications services were being offered and rendered in commerce prior to the filing date. In support of this argument, applicant's counsel points to certain declarations attesting to use of the service mark 'by transmitting the communications in interstate commerce from its facility at the World Trade Center in New York' to users of the service. This declaration explains that the brochure submitted with the application was used by applicant in the sale and advertising of its telecommunications services rendered in interstate commerce from the World Trade Center. When pressed on this issue at the oral argument, however, counsel indicated that the nature of this 'telecommunications service' was providing information out of its World Trade Center business office by telephone to inquiring parties. This can hardly be classified as a telecommunication service as indicated in the description in the application. See footnote (1), supra. It is clear that applicant's satellite communications services were not being rendered in commerce under the mark at the time that this application was filed. The use of a mark in connection with advertising, promotion and preparatory activities for services to be available at some time in the future cannot support registration. In re Sanger Telecasters, Inc., ---- USPQ2d ----, Serial No. 495,364 (TTAB September 10, 1986), In re Billfish International Corp., 229 USPQ 152 (TTAB 1986) (solictation and compilation of information and contributors for a journal not yet published) and In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) (promotion of a marine entertainment park addition before the addition opened). See also Avakoff v. Southern Pacific Company, 765 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985). [FN4]
Descriptiveness of the Term 'TELEPORT'
Although our decision on the question of use precludes registration on the basis of this application, we shall also address the question of mere descriptiveness. The Examining Attorney has made of record copies of several magazine articles and numerous NEXIS excerpts from the LEXIS information retrieval system which refer to 'teleports,' or satellite communication facilities. For example, High Tech Facilities, August 1984, pp. 14-15, discusses a Texas teleport facility:
The City of San Antonio has taken a major step in its drive for economic growth in general and high-tech growth in particular with its massive new teleport. Actually, it involves more than just a teleport: In a 12-15-year development program recently announced by San Antonio Mayor Henry G. Cisneros, the Texas Teleport Communications Control Center including a 35- acre antenna farm will be just part of something called the New World, a 3,000-acre master-planned MXD . . .
*4 . . . As well as interconnecting with the New York Teleport, currently under construction on Staten Island, the Texas Teleport has made arrangements to link with the Chicago Teleport and the Chicago link. Also, preliminary discussions are underway between the Texas Teleport and the San Francisco Teleport to arrange interconnectivity.
A linking of the nation's teleports will offer a competitive, alternative nationwide communications network with regional, national and international access. The interconnectivity and shared usage between teleports will substantially reduce communications costs for users of the Texas and other teleports.
An article discussing applicant's New York facility in Management Technology, August 1984, pp. 34-35, states:
New York's teleport may be making the most noise right now. But the idea of creating teleports to bounce millions of messages off of satellites is catching on fast in many major cities across the country. San Antonio is one conspicuous example . . . But other cities such as Chicago, San Francisco, and Los Angeles are also either building, blueprinting, or finding backers for teleports of their own. The promoters are selling these 'gateways' to the sky as the logical, lower-cost, and more reliable alternative to the familiar and increasingly well-entrenched telephone systems . . .
New York's teleport, like others around the U.S., will be a semi-public, semi-private switchboard through which voice, data, facsimile, and video signals may be transmitted and received over satellite circuits leased by users. The dishes, similar to those atop many office buildings, will beam and receive satellite signals from users' telephones that are connected to the teleport by fiber-optic or local lines.
An article entitled 'Teleports catch on but face competition,' in Data Communications magazine of October 1984, pp. 64, 66, refers to teleports as follows:
Elsewhere in major cities across the country, teleports, or 'satellite farms' as they are sometimes called, are springing up like mushrooms due to a combination of technical advances, deregulation and higher communications costs. 'There are some 30 teleport projects in various stages of development,' said Jerome Lucas, president of Telestrategies Inc. of McLean, Va. Perhaps a dozen teleports are currently under construction, and six of these will go on-line in 1985 . . .
Whether New York's teleport will be the first in operation depends on the definition of 'teleport.' The newly formed World Teleport Association says that a teleport comprises a satellite communications facility coupled with a real estate development consisting of intelligent office buildings. But . . . the American Teleport Association, also just organized, says that the facility need not take in real estate development.
According to the ATA, then, there were at least nine teleports in operation in the United States at the beginning of the year, including those in Chicago and Washington, D.C.
*5 Other articles, including NEXIS excerpts, similarly refer to teleports as the name of these new satellite communications facilities.
The Examining Attorney argues that this record shows that the trade and others commonly use the term 'teleport' to describe 'in a generic context' (Final action, May 14, 1986) telecommunications facilities and services. In the face of this evidence, applicant's counsel contends that the Board may not take 'judicial notice' of the materials offered by the Examining Attorney, that they are hearsay evidence which should be accorded little weight and that these articles were written after applicant's first use. [FN5] In this regard, evidence of the relevant public's understanding of a term may be obtained from any competent source, including newspapers and magazines. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). These materials are not being offered to to prove the truth of the matter asserted, but only as evidence of how the term is used.
We have no doubt that the Examining Attorney has adequately established that, at the very least, the term TELEPORT is merely descriptive of applicant's services. Applicant has simply failed to rebut this persuasive showing.
Decision: The refusal of registration is affirmed.
J. E. Rice
D. B. Allen
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 406,220, filed December 16, 1982, alleging first use since April 1, 1982. In the original application, applicant described its services as follows:
Providing services, installations and equipment for the sending and/or receiving of information in the form of voice, video, data and facsimile information to and from satellites, and for the transmission of such information to users and subscribers through the use of cables, including but not limited to telephone lines, coaxial and fibre optic cables.
Pursuant to a suggestion by the Examining Attorney, applicant amended the description to 'telecommunications services.'
Merrill Lynch & Co., Inc., through its communications manager, the Western Union Telegraph Company, will undertake all of the financial and managerial requirements to design and implement the communications facilities, including the fiber optic network. They will have the permanent role of coordinating and overseeing the continuing operation of the earth station facilities, fiber optic network, telecenter control building, and tenant communications systems. They will also act in a marketing and consulting role with prospective tenants.
FN3. Sec. 45, 15 U.S.C. § 1127, defines 'use in commerce' as follows:
For the purposes of this Act a mark shall be deemed to be used in commerce . . . (b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith.
FN4. Applicant has pointed to its ownership of a registration covering a design for the same services as evidence in support of applicant's position. While the record of that case is not before us, it appears that the specimens of record in that case, letterheads and business cards, afforded no basis for further inquiry on the part of the Examining Attorney, unlike the situation herein.
FN5. Of course, because these materials have been made of record, the concept of judicial notice is not involved. Judicial notice is usually understood to mean notice taken of adjudicative facts which are not of record. See Fed. R. Evid. 201 and Notes of Advisory Committee.