National Semiconductor Corporation (applicant) seeks to register in typed drawing form WEBPAD for "wireless handheld computers for accessing a global computer network." The Examining Attorney has refused registration on the basis that applicant's mark, as applied to applicant's goods, is merely descriptive pursuant to Section 2(e)(1) of the Trademark Act. When the refusal to register was made final, applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. Applicant did not request a hearing.
A mark is merely descriptive pursuant to Section 2(e)(1) of the Trademark Act if it immediately conveys information about a significant quality or characteristic of the relevant goods or services. In order to be held merely descriptive, a term need not immediately convey information about all of the significant qualities or characteristics of the relevant goods or services. A term is merely descriptive if it immediately conveys information about "one of the qualities" of the relevant goods or services.
There is no dispute that the two individual components of applicant's mark — namely, "web" and "pad" — are, taken individually, merely descriptive of applicant's "wireless handheld computers for accessing a global computer network." In this regard, reference is made to the following statements made by applicant: "Applicant admits that the prefix of its mark refers to the World Wide Web. Applicant has also acknowledged that the suffix is an acronym for Personal Access Device. The only issue on appeal is: Whether WEBPAD, a composite of two descriptive terms, creates a unitary mark with a separate non-descriptive meaning."
In arguing that WEBPAD is not merely descriptive when applied to wireless handheld computers for accessing a global computer network, applicant makes essentially five arguments. First, applicant argues that there are many different meanings for the term "pad" both as a word and as an acronym. Applicant is entirely correct. The Examining Attorney's own evidence shows that when used as an acronym, PAD can mean a number of different things besides "personal access device." For example, the acronym PAD also refers to "pressure actuated device" and "projected availability date." However, what applicant fails to understand is that the mere descriptiveness of a term is not judged in the abstract, but rather is judged in relation to the goods or services for which applicant seeks registration. When the term PAD is used in connection with wireless handheld computers for accessing a global computer network, purchasers of such devices would not think of a pressure actuated device, nor would they think of the other definitions of the word "pad" suggested by applicant such as "sheets of blank paper fastened together at one edge" or a "guard for the leg and ankle in sports." When the term PAD is used in connection with wireless handheld computers for accessing a global computer network, the term PAD would immediately be viewed as an acronym meaning "personal access device." Likewise, when used in conjunction with wireless handheld computers for accessing a global computer network, the term WEB would immediately bring to mind this global computer network. Indeed, as previously noted, applicant has conceded "that the prefix of its mark refers to the World Wide Web."
Second, applicant cites the case of In re Colonial Stores, Inc., where the Court held that the mark SUGAR & SPICE was not merely descriptive of bakery goods because it also had a second meaning, namely, a portion of a well known children's nursery rhyme. However, when applied to wireless handheld computers for accessing a global computer network the term WEBPAD has no double meaning. It readily informs consumers that applicant's goods are personal access devices to access the web (i.e. the World Wide Web).
Third, applicant argues that it was the first company to use the term WEBPAD, and that the vast majority of stories made of record by both applicant and the Examining Attorney use WEBPAD in a trademark manner to refer to applicant's product. However, there are a number of stories where the term WEBPAD is used in a descriptive manner to refer to the products of other companies. The mere fact that applicant was the first user of the term WEBPAD and that most uses of this term refer to applicant's product does not mean that the term is not merely descriptive in that it forthwith conveys an immediate idea of the qualities or characteristics of applicant's goods. If applicant is of the belief that most users of the term WEBPAD have now come to view this term as a trademark referring to applicant's particular wireless handheld computers for accessing a global computer network, applicant is entirely free to seek to register this term pursuant to the provisions of Section 2(f) of the Trademark Act by proving that the term WEBPAD had achieved a secondary meaning referring primarily to applicant's particular products.
Fourth, applicant argues that competitors do not need to use WEBPAD to describe their products because, according to applicant, there are other descriptive terms such as "set-top boxes"; "internet access devices"; "mobile computers"; or "wireless web access devices." The fact that there are other terms which may be descriptive of applicant's goods does not mean that WEBPAD is not likewise merely descriptive of applicant's goods.
Finally, applicant argues that there are "numerous recent third-party registrations in Class 9 that comprise the prefix WEB with a descriptive term. These registrations are no less descriptive of their associated goods than is applicant's mark." Three comments are in order. First, while we will not discuss individual third-party registrations, it appears clear that numerous of these third-party registrations involve marks which are at most suggestive and not merely descriptive of their respective goods. Second, even if some of these third-party registrations involve marks which were merely descriptive and which were registered without resort to the provisions of Section 2(f), this does not mean that applicant is likewise entitled to register a mark which is merely descriptive of its goods. While the PTO strives for uniform treatment, it does not always achieve this goal. Moreover, it need hardly be said that this Board is not bound by the actions of Examining Attorneys if they allowed third-party registrations which were merely descriptive to be registered without resort to Section 2(f). Finally, while applicant does not articulate this argument, if applicant at a later time were to argue that the existence of these third-party registrations consisting of various WEB marks somehow has caused consumers to view WEB marks, including WEBPAD, as trademarks, this argument would be without merit. Consumers are totally unaware of what is registered with the PTO. See Smith Brothers v. Stone Manufacturing ("But in the absence of any evidence showing the extent of use of any of such marks or whether any of them are now in use, they [the third-party registrations] provide no basis for saying that the marks so registered have had, or may have, any effect at all on the public mind ...").
One concluding comment is in order. Applicant correctly argues that any doubt on the issue of mere descriptiveness should be resolved in its favor. Suffice it to say that based upon this record, we have no doubt that consumers seeing the term WEBPAD on wireless handheld computers for accessing a global computer network would immediately understand that the term WEB refers to this global computer network (which applicant admits) and that the term PAD would be understood as an acronym meaning personal access device (again, a point which applicant admits).
Decision: The refusal to register is affirmed.
Prepared by Jefferson Scher for Law 227: Trademarks & Unfair Competition, Summer 2006. Most citations have been, and other portions of the original opinion may have been, omitted.