Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA515115
`ESTTA Tracking number:
`01/09/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77967395
`ActiveVideo Networks, Inc.
`CLOUDTV
`LISA M TITTEMORE
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`125 SUMMER STREET
`BOSTON, MA 02110-1618
`UNITED STATES
`trademarks@sunsteinlaw.com, ltittemore@sunsteinlaw.com,
`sabreu@sunsteinlaw.com
`Reply Brief
`APPLICANT'S REPLY BRIEF.pdf ( 22 pages )(169761 bytes )
`Lisa M. Tittemore
`ltittemore@sunsteinlaw.com, sabreu@sunsteinlaw.com, idiaz@sunsteinlaw.com
`/Lisa M. Tittemore/
`01/09/2013
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re:
`
`
`
`Serial No.
`
`Mark:
`
`Applicant:
`
`
`
`
`
`
`
`
`
`
`
`
`
`77967395
`
`CLOUDTV
`
`ActiveVideo Networks, Inc.
`
`Examining Attorney:
`
`Ingrid Eulin
`
`
`
`
`
`EX PARTE APPEAL
`
`APPLICANT’S REPLY BRIEF
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`A.J. Canfield Co. v. Honickman, 1 USPQ.2d 1364 (3d Cir. 1986) ............................................... 4
`
`Anheuser-Busch, Inc. v. Holt, 2009 WL 4086585 at *6 (TTAB Sept. 16,
`2009) ............................................................................................................................. 12
`
`H. Marvin Ginn Corp. v. Int’l Assoc. of Fire Chiefs, Inc ., 228 USPQ 528
`(Fed. Cir. 1986) ............................................................................................................... 4
`
`Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ.2d 1996
`(TTAB 1986)........................................................................................................... 17, 20
`
`In re Abcor Devl. Corp., 200 USPQ 215 (CCPA 1978) ............................................................... 2
`
`In re American Fertility Society, 51 USPQ.2d 1832 (Fed. Cir. 1999) ............................... 5, 10, 11
`
`In re Atelier Profumo Artistico Firenze S.r.L., Serial No. 77/212553, p. 7-9
`(TTAB August 26, 2009) ............................................................................................... 12
`
`In re Central Sprinkler Co., 49 USPQ.2d 1194 (TTAB 1998) ..................................................... 4
`
`In re Colonial Stores, Inc., 157 USPQ 382 (CCPA 1968) .......................................................... 14
`
`In re Dana Innovations, 2007 WL 466797 at *3 (TTAB Feb. 6, 2007) .................................... 6, 9
`
`In re Del E. Webb Corp., 16 USPQ.2d 1232 (TTAB 1990) ....................................................... 20
`
`In re Dial-A-Mattress Operating Corp., 57 USPQ.2d 1807 (Fed. Cir.
`2001) ........................................................................................................................... 2, 4
`
`In re Gould, 5 USPQ.2d 1110 (Fed. Cir. 1987)............................................................................ 5
`
`In re Heartstent Corp., 2000 WL 19035 (TTAB Jan. 5, 2000) ............................................... 9, 10
`
`In re K-2 Corporation, 2006 WL 2645220 at *4 (TTAB Sept. 7, 2006) ..................................... 13
`
`In re Mehy Holdings, Ser. No. 76522942, 2006 WL 314913 (TTAB Oct.
`20, 2006) ......................................................................................................................... 5
`
`In re Merrill Lynch Pierce, Fenner, and Smith, Inc., 4 USPQ.2d 1141
`(Fed. Cir. 1987) ................................................................................................... 2, 10, 11
`
`In re Northland Aluminum Products, Inc., 227 USPQ 961 (Fed. Cir. 1985) ................................. 3
`
`
`
`1
`
`

`
`In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984) ................................................ 18
`
`In re Payclerk, Inc., 2007 WL 2972193 (TTAB Oct. 4, 2007) ............................................... 6, 11
`
`In re Petersen Mfg., Co., 2 USPQ.2d 2032 (TTAB 1987) .......................................................... 18
`
`In re Phoseon Technology, 103 USPQ.2d 1822 (TTAB 2012) ................................................... 15
`
`In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971) ............................................................. 18
`
`In re Seats, Inc., 225 USPQ 364 (Fed. Cir. 1985) .................................................................. 3, 16
`
`In re Shutts, 217 USPQ363, 364 (TTAB 1983) ......................................................................... 14
`
`In re Steelbuilding.com, Inc., 75 USPQ.2d 1420 (Fed. Cir. 2005) ............................................ 6, 7
`
`In re Steelbuilding.com, Inc., Ser. No. 78680792, 2008 WL 5256395 at
`*3-4 (TTAB Oct. 15, 2008) ............................................................................................. 6
`
`In re TCL GoVideo, 2006 WL 2558017 (TTAB Aug. 2, 2006) .................................................. 14
`
`In re Trek 2000 Int’l Ltd., 97 USPQ.2d 1106 (TTAB 2010) ........................................................ 8
`
`In re Volvo White Truck Corp., 16 USPQ.2d 1417 (TTAB 1990) ......................................... 4, 11
`
`Magic Wand, Inc. v. RDB , Inc., 19 USPQ.2d 1551 (Fed. Cir. 1991) ...................................... 3, 10
`
`STK LLC v. Backrack, Inc., 2012 WL 2024459 at *17-18 (TTAB May 21,
`2012) ............................................................................................................................... 8
`
`Other Authorities
`
`TMEP § 121.06(c) ..................................................................................................................... 17
`
`TMEP § 1212............................................................................................................................ 20
`
`
`
`
`
`2
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`

`
`APPELLANT’S REPLY
`
`I.
`
`CLOUDTV IS NOT GENERIC AS APPLIED TO ACTIVEVIDEO’S
`PRODUCTS
`
`A.
`
`CLOUDTV Is Not Generic In Connection with ActiveVideo’s Software and
`Related Services
`
`
`“Generic terms are common names that the relevant purchasing public understands
`
`primarily as describing the genus of goods or services being sold.” In re Dial-A-Mattress
`
`Operating Corp., 57 USPQ.2d 1807, 1808 (Fed. Cir. 2001). As Judge Rich explained, a generic
`
`term “that immediately and unequivocally describes the purpose and function of appellant’s
`
`goods is a name for those goods, for [t]hat is what names do. They tell you what the thing is.”
`
`In re Merrill Lynch Pierce, Fenner, and Smith, Inc., 4 USPQ.2d 1141, 1144 (Fed. Cir. 1987)
`
`(citing In re Abcor Devl. Corp., 200 USPQ 215, 219 (CCPA 1978)) (emphasis in original). The
`
`mark CLOUDTV does not tell what ActiveVideo’s software and software-based services are
`
`because it makes absolutely no mention of software or software as a service. Thus, CLOUDTV
`
`is not used to describe the genus of ActiveVideo’s products, which is software and software-
`
`based services. Moreover, the mark CLOUDTV is not understood by the relevant public as
`
`identifying the class of products provided by ActiveVideo.
`
`ActiveVideo refers to its products as “CLOUDTV Apps,1” CLOUDTV software,”
`
`“CLOUDTV platform,” or its “CLOUDTV software platform.” The Examining Attorney does
`
`not dispute that ActiveVideo’s Class 9 goods are software, its Class 38 services are providing
`
`broadcasting and telecommunication connectivity via a video-on-demand service through the use
`
`of media processing software, its Class 41 services are providing television and other content via
`
`a video-on-demand service through the use of media processing software, and that its Class 42
`
`
`1 “App” is shorthand for “software application.”
`
`2
`
`
`
`

`
`services are providing temporary use of software, software support and consulting and software
`
`and networking product development. ActiveVideo’s software may be run on servers owned by
`
`ActiveVideo for use by its customers in connection with its Class 38, 41, and 42 services, in
`
`which case ActiveVideo provides “software as a service.” Alternatively, ActiveVideo’s software
`
`may be installed by ActiveVideo’s customers on their own servers or equipment (e.g.,
`
`CableVision, Philips). In either case, access to ActiveVideo’s proprietary software platform is
`
`the product being provided. See Third Declaration of Edgar Villalpando ¶4-8, 12-13, submitted
`
`in support of July 11, 2012 Response to Office Action. The Examining Attorney seems to
`
`completely overlook the software aspect of ActiveVideo’s goods and services in her genericness
`
`analysis, however. See In re Seats, Inc., 225 USPQ 364, 367-68 (Fed. Cir. 1985) (“seats” may
`
`be generic in relation to chairs or couches or bleachers, but not in relation to reservation services
`
`even when the purchasers of the services will be “seated”); Magic Wand, Inc. v. RDB , Inc., 19
`
`USPQ.2d 1551, 1553-54 (Fed. Cir. 1991) (TOUCHLESS not generic for automobile washing
`
`services).
`
`As do all trademarks, CLOUDTV functions like an adjective when used in connection
`
`with ActiveVideo’s software and related services, not like a noun. While the use of some
`
`adjectives can be so ubiquitous that they come to function as a noun in a particular context, that
`
`is not the case with the term CLOUDTV. For example, “pickup” has been used so often in
`
`connection with the term “truck” that “pickup” is now used as a noun referring to that particular
`
`type of truck. See, e.g., In re Northland Aluminum Products, Inc. , 227 USPQ 961, 964 (Fed. Cir.
`
`1985) (totality of the evidence supported finding that BUNDT is commonly known as a name for
`
`a type of cake). Moreover, while in some instances, an adjective may be considered generic, in
`
`such cases, the term must be so clearly associated with the class of goods that consumers and
`
`
`
`3
`
`

`
`competitors would primarily use or understand the term to refer to the genus of goods and
`
`services. See In re Volvo White Truck Corp., 16 USPQ.2d 1417, 1420-22 (TTAB 1990)
`
`(reversing refusal to register INTEGRAL SLEEPER because evidence did not establish term
`
`would be primarily used or understood by relevant public to refer to trucks containing a sleeper
`
`and cab in an integral unit).
`
`The cases cited by the Examining Attorney on this point are inapposite. For example, in
`
`A.J. Canfield Co. v. Honickman, 1 USPQ.2d 1364 (3d Cir. 1986), a case relied on by the
`
`Examining Attorney, the Third Circuit found the term “chocolate fudge” for diet soda tasting like
`
`chocolate fudge to be generic because flavors have “unique characteristics” and the court could
`
`“imagine no other term” which could communicate the same factual information. Id. at 1378.
`
`Similarly, in In re Central Sprinkler Co., 49 USPQ.2d 1194 (TTAB 1998), the Board held that
`
`ATTIC would need to be used by competitors and purchasers seeking to by sprinklers for an
`
`attic, and thus ATTIC was refused registration for sprinklers for fire protection.
`
`There is simply no record evidence that the term CLOUDTV is commonly known as a
`
`name for software, nor is there any record evidence that the relevant public would primarily use
`
`or understand it to refer to a particular class or species of software. Instead, as discussed below,
`
`the evidence of record shows that CLOUDTV is identified as ActiveVideo’s trademark, and is
`
`not as a generic name used to describe a genus or class of software. See H. Marvin Ginn Corp. v.
`
`Int’l Assoc. of Fire Chiefs, Inc., 228 USPQ 528, 523 (Fed. Cir. 1986) (FIRE CHIEF not generic
`
`with respect to magazine regarding fire fighting; no record evidence “that the relevant portion of
`
`the public refers to a class of fire fighting as ‘FIRE CHIEF’”); In re Dial-A-Mattress Operating
`
`Corp., 57 USPQ.2d 1807, 1811 (Fed. Cir. 2001) (“no record evidence that the relevant public
`
`refers to the class of shop-at-home telephone mattress retailers as ‘1-888-M-A-T-R-E-S-S.’”); In
`
`
`
`4
`
`

`
`re Mehy Holdings, Ser. No. 76522942, 2006 WL 314913 (TTAB Oct. 20, 2006) (reversing
`
`refusal to register where evidence of record did not show evidence “beyond a de minimus use,
`
`that the term ROLLUP … is used by the relevant buying public to refer to the Applicant’s
`
`goods.”).
`
`B.
`
`The Examining Attorney Incorrectly Applied the Legal Standard for
`Genericness
`
`
`The correct legal test for genericness “requires evidence of ‘the genus of goods or
`
`services at issue’ and the understanding by the general public that the mark refers primarily to
`
`‘that genus of goods or services.’” In re American Fertility Society, 51 USPQ.2d 1832, 1836
`
`(Fed. Cir. 1999). In all cases, the USPTO “must be able to satisfy both elements of the test as set
`
`forth in the controlling precedent ….” Id. “The correct legal test … is to be applied to a mark,
`
`or disputed phrase thereof, as a whole, for the whole may be greater than the sum of its parts.”
`
`Id.
`
`The Examining Attorney improperly relied on In re Gould, 5 USPQ.2d 1110 (Fed. Cir.
`
`1987), in suggesting that simply by providing definitions showing that “cloud” and “tv” are
`
`generic terms, therefore CLOUDTV as a whole is generic. As the Federal Circuit explained in
`
`American Fertility:
`
`Properly interpreted, Gould does not justify a short cut around this test, but rather
`found that the evidence presented met this burden.
`* * *
`Gould provides additional assistance in determining the genericness of compound
`words only, and holds that if the PTO can prove (1) the public understands the
`individual terms to be generic for a genus of goods and species; and (2) the public
`understands the joining of the individual terms into one compound word to lend
`no additional meaning to the term, then the PTO has proven that the general
`public would understand the compound term to refer primarily to the genus of
`goods or services described by the individual terms.
`
`Id. at 1837 (emphasis added).
`
`
`
`5
`
`

`
`More recently, the Federal Circuit confirmed that “[e]ven if each of the constituent words in a
`
`combination mark is generic, the combination is not generic unless the formulation does not add
`
`any meaning to the otherwise generic mark.” In re Steelbuilding.com, Inc., 75 USPQ.2d 1420,
`
`1421 (Fed. Cir. 2005) (vacating determination that STEELBUILDING.COM is generic for a
`
`website for design and sale of steel buildings).
`
`
`
`In the Steelbuilding.com case, the Federal Circuit specifically distinguished between use
`
`of the composite term STEELBUILDING and use of the term “steel building” where the words
`
`are separated. 75 USPQ.2d at 1421. In a later case involving the same trademark, the Board
`
`specifically noted the Federal Circuit’s differentiation between use of “steel building” (two
`
`words) and “steelbuilding” (one word) and “the Federal Circuit’s major concern that there is no
`
`evidence showing use of the compound ‘steelbuilding’ (one word).” In re Steelbuilding.com,
`
`Inc., Ser. No. 78680792, 2008 WL 5256395 at *3-4 (TTAB Oct. 15, 2008). Because the
`
`evidence of record accordingly did not demonstrate a need for competitors to use the compound
`
`term, the Board concluded that the mark was not generic. Id. at *6.
`
`Here, the individual terms are not generic for software for interactive television, and the
`
`Examining Attorney has completely failed to demonstrate that the joining of the terms lends no
`
`additional meaning. Indeed, as discussed further below, the evidence of record does not show
`
`the compound term used in connection with products like ActiveVideo’s. See In re Payclerk,
`
`Inc., 2007 WL 2972193 (TTAB Oct. 4, 2007) (reversing refusal to register because although
`
`“pay” and “clerk” are generic terms, the evidence failed to show that PAYCLERK was used as a
`
`generic name for payroll services); In re Dana Innovations, 2007 WL 466797 at *3 (TTAB Feb.
`
`6, 2007) (reversing refusal to register and concluding “the use of the words ‘share music’ in
`
`
`
`6
`
`

`
`these materials does not persuade us that the term SHAREMUSIC is a recognized term used to
`
`describe the identified goods.”).
`
`The Examining Attorney has failed to submit any evidence – never mind substantial
`
`evidence -- that CLOUDTV is in regular usage as a common word to mean software for
`
`providing interactive television. Instead the Examining Attorney improperly relies on the
`
`argument that because “cloud” is a generic term and “television” is a generic term, that when
`
`they are combined they become a generic term. This mechanical application of an A + B = C
`
`analysis results in an illogical result with respect to ActiveVideo’s products, as it ignores the fact
`
`that ActiveVideo’s products are software and software-based services. There is simply no
`
`evidence of record that demonstrates that the public understands the joining of the terms “Cloud”
`
`and “TV” to refer to software for providing interactive television, such as that provided by
`
`ActiveVideo.
`
`C.
`
`The Record Evidence Does Not Show That the Relevant Public Refers to
`Interactive Television Software as CLOUDTV
`
`The Examining Attorney has not cited in her brief any references that show use of
`
`CLOUDTV other than use as a trademark in connection with ActiveVideo’s own products. In
`
`her brief, the Examining Attorney has cited a number of references from the Internet that relate
`
`to the terms “Cloud,” “Cloud Computing,” “television” and “TV,” (e.g., June 24, 2010 Office
`
`Action, p. 49, 54, 63, 67, June 6, 2011 Office Action, p. 4, 6-8, 20-23), and cites a handful of
`
`references showing use of the term “Cloud TV,” but none of the cited references refer to
`
`CLOUDTV, apart from references to ActiveVideo’s trademark. References to use of the terms
`
`“cloud,” “TV” and the use of “Cloud TV” do not show that CLOUDTV as a compound term is
`
`generic. See In re STEELBUILDING.COM, 75 USPQ.2d 1420, 1423 (Fed. Cir. 2005) (evidence
`
`
`
`7
`
`

`
`that shows phrase “steel building” is generic does not directly address the composite term
`
`STEELBUILDING). 2
`
`A number of the references cited by the Examining Attorney in her brief are references to
`
`ActiveVideo’s own use of the CLOUDTV trademark. E.g., Nov. 15 Office Action, p. 28, 31,
`
`June 6, 2011 Office Action, p. 76. As the Examining Attorney notes, in these references,
`
`ActiveVideo uses the phrase “cloud-based interactive television platform” or “cloud-based
`
`interactive television technology” to describe its products, and uses CLOUDTV (with a TM
`
`symbol) to refer to its unique, proprietary brand. These references show that CLOUDTV is
`
`clearly promoted by ActiveVideo as its trademark, not a generic term.
`
`References to infringing uses by third parties, which ActiveVideo is policing, also do not
`
`support a finding that CLOUDTV is generic. E.g., June 6, 2011 Office Action, p. 71-73; Jan. 11,
`
`2012 Office Action, Lexis article #6 and 100. For example, after ActiveVideo sent a demand
`
`letter, Aviion ceased use of
`
`the
`
`tag
`
`line THE CLOUD TV SOLUTION.
`
` See
`
`http://www.aviion.tv. ActiveVideo’s successful policing efforts undermine the conclusion that
`
`the term is generic. See STK LLC v. Backrack, Inc., 2012 WL 2024459 at *17-18 (TTAB May
`
`21, 2012) (policing of trademark rights reflects acknowledgement of use of term as trademark
`
`rather than as a generic term); In re Trek 2000 Int’l Ltd., 97 USPQ.2d 1106, 1112-13 (TTAB
`
`2010) (policing misuse of term THUMBDRIVE supports conclusion that term not generic).
`
`Only a small number of citations referenced by the Examining Attorney in her brief refer
`
`to use of the term “Cloud TV,” but do so in unrelated contexts ( e.g., June 6, 2011 Office Action,
`
`p. 82-83 regarding IPTV services offered by ISPs; p. 97-101 regarding Netflix, mobile video
`
`
`2 As discussed further below, the Examining Attorney incorrectly states that an article titled
`“Cloud TV may replace Local TV altogether …,” uses the term CLOUDTV (one word), and
`misquotes the article in this regard. Examining Attorney’s Brief, p. 14.
`
`
`
`8
`
`

`
`services, and streaming video to computers) and others are simply completely off base ( e.g., in
`
`Jan. 11, 2012 Office Action, Lexis article # 13, it is unclear what the reference is about; article #
`
`75 refers to solar flare ups which may “cloud TV and radio reception” and thus is entirely
`
`irrelevant). See In re Dana Innovations, 2007 WL 466797 at *3 (TTAB Feb. 6, 2007) (finding
`
`mark not merely descriptive where record evidence relates to audio equipment which is different
`
`from that of applicant).
`
`In her brief, the Examining Attorney discusses an article titled “Cloud TV may replace
`
`Local TV altogether …,” but she incorrectly states that the article uses the compound term
`
`CLOUDTV (one word) and misquotes the article in this regard. Examining Attorney’s Brief, p.
`
`14. Moreover, the Examining Attorney continues to fail to appreciate that the term “Cloud TV”
`
`is used in connection with services that are different from ActiveVideo’s products. The article
`
`discusses using the Internet for viewing TV programs, which is explicitly distinguished in the
`
`article from more traditional television services:
`
`The concept of cloud TV is different from web television. In web television, TV
`service is provided. This is also known as catch up TV. Cloud TV allows a user
`to choose the programs he wants to watch from an archive of different programs
`or he can opt to stream live Television. The TV programs can be streamed to any
`device with an internet connection and an internet browser. … No subscription
`fees need to be paid to cable operators and channel owners. There are no
`hardware requirements; the dish antenna on the roof and the satellite receiver
`sitting next to the TV are things of the past.”
`
`Office Action, 6/6/11, Ex 43-44.
`
`As the Board has previously held, “merchants and manufacturers may combine common,
`
`ordinary words in a novel or unique way, thereby obtaining for the term a degree of protection
`
`denied to words when used separately, or when used in a somewhat different context.” In re
`
`Heartstent Corp., 2000 WL 19035 (TTAB Jan. 5, 2000) (reversing refusal to register
`
`HEARTSTENT for use in connection with shunts). As in the Heartstent case, use of the term
`
`
`
`9
`
`

`
`“Cloud TV” in other contexts does not make it generic with respect to ActiveVideo’s products.
`
`Accordingly, ActiveVideo is entitled to obtain protection for its CLOUDTV mark in connection
`
`with its specific products, notwithstanding the use of the term “Cloud TV” in connection with a
`
`de minimus number of references relating to other types of goods or services.
`
`To the best of ActiveVideo’s knowledge, the term CLOUDTV was not used for similar
`
`products prior to its use as a trademark by ActiveVideo. There appears to be one reference of
`
`record that refers to the term “Cloud TV” with a date relatively shortly prior to ActiveVideo’s
`
`date of first use, but that reference relates to an entirely different type of product, specifically, an
`
`Amazon.com Video on Demand store. See June 6, 2011, Office Action, p. 118. While there is
`
`also a reference to “A Cablevision Win for Network DVR, AKA Cloud TV” dated August 5,
`
`2008, Cablevision is in fact a customer of ActiveVideo and thus the import of this reference is
`
`unclear on its face. See June 6, 2011, Office Action, p. 111-115. See Magic Wand, Inc. v. RDB ,
`
`Inc., 19 USPQ.2d 1551, 1553-54 (Fed. Cir. 1991) (TOUCHLESS not generic where evidence
`
`demonstrated “limited generic use of the term ‘touchless’”).
`
`Moreover, the Examining Attorney has not submitted any dictionary definitions or any
`
`other evidence that relate to the term “CloudTV.” Under the circumstances, CLOUDTV cannot
`
`be held to “immediately and unequivocally” describe the purpose or function of ActiveVideo’s
`
`goods or services to members of the relevant public. The record evidence simply does not
`
`clearly place the CLOUDTV mark in the category of generic or common descriptive terms. In re
`
`American Fertility Society, 51 USPQ.2d 1832, 1835 (Fed. Cir. 1999) (quoting In re Merrill
`
`Lynch Pierce, Fenner, and Smith, Inc., 4 USPQ.2d 1144 (Fed. Cir. 1987)). Instead, the record
`
`evidence shows that the source of the CLOUDTV brand software and services is ActiveVideo.
`
`
`
`10
`
`

`
`Accordingly, CLOUDTV cannot be deemed generic as applied to ActiveVideo’s goods and
`
`services.
`
`D.
`
`The Examining Attorney Has Not Met the Heavy Burden of Proving
`CLOUDTV Is Generic
`
`The Examining Attorney has failed to meet the heavy burden for showing that the
`
`CLOUDTV mark is generic. The law requires that the Examining Attorney make a “substantial
`
`showing” that the mark “is in fact generic … based on clear evidence of use.” In re American
`
`Fertility Society, 51 USPQ.2d 1832, 1835 (Fed. Cir. 1999) (quoting In re Merrill Lynch Pierce,
`
`Fenner, and Smith, Inc., 4 USPQ.2d 1141, 1143 (Fed. Cir. 1987). As the Federal Circuit held in
`
`Merrill Lynch, “[t]he mixture of usages unearthed by the NEXIS computerized retrieval service
`
`does not show, by clear evidence,” that the relevant public views and uses the term CLOUDTV
`
`“as a generic, common descriptive term” for the software and software-based services provided
`
`by ActiveVideo. Moreover, any doubts raised by the lack of evidence must be resolved in
`
`ActiveVideo’s favor. In re Payclerk, Inc., 2007 WL 2972193 (TTAB Oct. 4, 2007); In re Volvo
`
`White Truck Corp., 16 USPQ.2d 1417, 1421 (TTAB 1990) (“we resolve our considerable doubts
`
`in favor of the applicant”).
`
`II.
`
`
`
`
`
`THE CLOUDTV MARK IS NOT MERELY DESCRIPTIVE AS APPLIED TO
`ACTIVEVIDEO’S PRODUCTS
`
`CLOUDTV is a term coined by ActiveVideo as a brand to identify its unique software
`
`and software-based services, and is not merely descriptive of ActiveVideo’s products. The mark
`
`CLOUDTV requires “imagination, thought or perception” in order for a consumer understand
`
`the nature of ActiveVideo’s products, even when the consumer sees the mark applied to the
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`products. Moreover, competitors do not use and do not need to use CLOUDTV in order to
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`describe their own products.
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`A. CLOUDTV Is Not Merely Descriptive in Light of its Double Meaning and
`Incongruous Nature As Applied to ActiveVideo’s Products
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`The Examining Attorney completely discounts the fact that ActiveVideo’s mark
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`CLOUDTV would be understood by consumers as conveying other meanings besides the
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`meanings ascribed by the Examining Attorney. The multiple meanings of the word “cloud”
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`preclude the conclusion that it would be immediately understood to be understood by consumers
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`as signifying “cloud computing” or a “cloud computing” aspect of ActiveVideo’s products. See
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`Anheuser-Busch, Inc. v. Holt, 2009 WL 4086585 at *6 (TTAB Sept. 16, 2009) (because multiple
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`meanings can be ascribed to term “one” mark ONE BEER, BEER 1, record evidence fails to
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`establish term is merely descriptive). In fact, the multiple meanings of the term “cloud” causes
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`CLOUDTV to suggest to the consumer far more.
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`In addition to the “cloud computing” meaning of “cloud,” the word cloud is more
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`commonly used as referring to an “aggregation of minute particles of water or ice suspended in
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`the air.” June 24, 2010, Office Action, p. 25. This more common meaning of the term cloud
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`conveys connotations of freedom, lightness, and release from restrictions, as when white, fluffy
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`clouds in a blue sky are imagined. In light of these multiple meanings, the trademark
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`CLOUDTV takes on a double-meaning as applied to ActiveVideo’s goods: that of freedom from
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`the confines and limitations of traditional television. 3 It is impermissible to discount this
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`suggestive meaning of the CLOUDTV mark. See In re Atelier Profumo Artistico Firenze S.r.L.,
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`Serial No. 77/212553, p. 7-9 (TTAB August 26, 2009) (because sensory connotation, “the Scent
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`of Florence,” was nebulous -- it could either suggest way city actually smelled or connote
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`“flavor” or “aura” of Florence -- it was suggestive rather than descriptive); In re K-2
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`3 This imagery is reinforced by ActiveVideo’s marketing which depicts such fluffy, white clouds.
`E.g., Second Declaration of Edgar Villalpando, Ex. B, F, K, L, M; Third Declaration of Edgar
`Villalpando ¶ 10.
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`Corporation, 2006 WL 2645220 at *4 (TTAB Sept. 7, 2006) (because consumers might attribute
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`meaning of both tightening of binding and overall ease of use to mark CINCH, mark was entitled
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`to registration). The Examining Attorney has improperly summarily dismissed this aspect of
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`ActiveVideo’s distinctive CLOUDTV trademark.
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`The distinctiveness of the CLOUDTV mark is further heightened by its incongruous
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`nature in the context of ActiveVideo’s products. “Cloud” and “cloud computing” are terms used
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`in the computer industry in reference to the Internet, and are not commonly used in connection
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`with traditional television services. The record evidence referenced by the Examining Attorney
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`does not show the term “cloud” used by companies in the television or entertainment industries.
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`The Examining Attorney argues that “consumers are accustomed to the expanding availability of
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`Internet access through various devices well beyond computers” (Examining Attorney’s Brief, p.
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`22), but does not cite any evidence that the term is used in connection with traditional television
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`services, or that consumers understand that the term “cloud” has a meaning with respect to
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`computer networks outside of the computer industry/Internet.
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`In light of this incongruity, CLOUDTV is a unique, catchy mark as applied to
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`ActiveVideo’s products. “Imagination, thought or perception” is required in order to reach a
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`conclusion regarding the nature of ActiveVideo’s products, as consumers must first consider
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`whether the mark relates to clouds (white, fluffy) or “the cloud” (cloud computing). Indeed,
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`many consumers, such as the average purchaser of a Philips TV at a Target store, would not even
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`consider the “cloud computing” meaning.4 Even those consumers who would consider the cloud
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`4 See Third Declaration of Edgar Villalpando ¶ 12-13, submitted 7/11/12 (describing
`ActiveVideo’s arrangement to provide the CLOUDTV platform on Philips televisions and blu-
`ray players and showing example of use of mark on splash-screens of televisions); Second
`Declaration of Edgar Villalpando ¶ 10-11, submitted 12/6/11 (showing similar information and
`excerpt from recent Target catalog depicting CLOUDTV mark on a Philips television screen).
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`computing connotation, however, must go through the mental step of recognizing that, as applied
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`to software for interactive television, CLOUDTV does not refer to watching videos or
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`programming over the Internet, but instead refers to software that can be used in connection with
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`traditional television broadcasting.
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`This incongruity creates a “mental hiccup” that is sufficient to put CLOUDTV into the
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`category of suggestive mark. The case of In re TCL GoVideo is instructive here. In that case,
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`the Examining Attorney refused registration of the mark YOURDVD for consumer electronic
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`equipment. The Board reversed the refusal to register, explaining that:
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`… DVD is a recognized word for digital video disk. While the term also
`describes a characteristic of a DVD player, when DVD is used as part of the mark
`YourDVD the immediate reaction is that of the disk itself, and consumers must go
`through the mental step of recognizing that, as applied, for example to television
`sets, YourDVD does not refer to the video disk but the fact that the video disk can
`be played on the television. This mental ‘hiccup’ is sufficient to put YourDVD
`into the category of suggestive mark.
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`In re TCL GoVideo, 2006 WL 2558017 (TTAB Aug. 2, 2006) at *4. See also, In re
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`Shutts, 217 USPQ363, 364 (TTAB 1983) (SNO-RAKE incongruous, coined term); Firestone
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`Tire & Rubber Co. v. The Goodyear Tire & Rubber Co., 186 USPQ 557, 559 (TTAB 1975)
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`(BIASTEEL not merely descriptive as “to use a term such as bias steel or based steel to describe
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`a characteristic of a tire is neither natural nor obvious” even when terms “bias” and “steel” are
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`“descriptive designations used to denote characteristics of tire construction”); In re Colonial
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`Stores, Inc., 157 USPQ 382, 384 (CCPA 1968) (combination of terms in unusual association
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`functions a