This Opinion is a
`Precedent of the TTAB
`
`Mailed: July 9, 2014
`
`
`
`Hearing: October 29, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re ActiveVideo Networks, Inc.
`_____
`
`Serial No. 77967395
`_____
`
`Lisa M. Tittemore of Sunstein Kann Murphy & Timbers LLP,
`for ActiveVideo Networks, Inc.
`Dawn Feldman-Lehker,1 Trademark Examining Attorney, Law Office 111,
`Robert Lorenzo, Managing Attorney.
`_____
`
`
`Before Bucher, Gorowitz and Masiello,
`Administrative Trademark Judges.
`
`
`Opinion by Bucher, Administrative Trademark Judge:
`
`ActiveVideo Networks, Inc. (hereinafter “Applicant” or “ActiveVideo”) seeks
`
`registration on the Principal Register of the term CLOUDTV (in standard character
`
`format) for the following goods and services:
`
`software for developing and publishing applications for
`viewing, displaying,
`selecting, browsing,
`customizing,
`organizing, searching and navigating audiovisual and
`
`1 Although Ms. Feldman-Lehker represented the Office at the Oral Hearing on October 29,
`2013, Ms. Ingrid C. Eulin handled the earlier prosecution of this application on the United
`States Patent and Trademark Office’s behalf.
`
`

`
`Serial No. 77967395
`
`multimedia content on a television, gaming console, mobile
`device or other network-connected display; computer e-
`commerce software to allow users to perform electronic
`business transactions via a video-on-demand service in
`International Class 9;
`broadcasting
`of
`television programs and providing
`telecommunication connectivity services for transfer of
`images, messages, audio, visual, audiovisual, and multimedia
`works for viewing on a television, gaming console, mobile
`device or other network-connected display via a video-on-
`demand service via network-based media processing software
`in International Class 38;
`other
`television and
`provision
`of non-downloadable
`audiovisual and multimedia content via a video-on-demand
`service via network-based media processing software in
`International Class 41; and
`providing
`temporary use of online non-downloadable
`network-based media processing software
`for viewing,
`displaying, selecting, browsing, customizing, organizing,
`searching and navigating audiovisual and multimedia
`content on a television, gaming console, mobile device or
`other network-connected display; providing technical support
`consulting services regarding troubleshooting of network-
`based media processing software; product development
`consultation related to the design, development and
`implementation of network-based media processing services
`and software; providing temporary use of online non-
`downloadable network based media processing software for
`facilitation of purchases for viewing, displaying, selecting,
`browsing, customizing, organizing, searching and navigating
`audiovisual and multimedia content displayed on a
`television, gaming console, mobile device, or other network-
`connected display in International Class 42.2
`
`
`2 Application Serial No. 77967395 was filed on March 24, 2010. The service classes were
`initially based upon Applicant’s claim of first use anywhere and use in commerce since at
`least as early as April 28, 2009; the software in International Class 9 was initially based
`upon Applicant’s allegation of a bona fide intention to use the mark in commerce under
`Section 1(b) of the Act; on July 11, 2012, Applicant filed an Amendment to Allege Use
`(AAU) with respect to the goods in International Class 9 claiming first use anywhere and
`use in commerce since at least as early as December 20, 2011.
`
`- 2 -
`
`

`
`
`
`Seerial No. 777967395
`
`I.
`
`
`
`Prosecuttion Histoory
`
`
`
`
`The
`
`
`
`Trademarkk Examiniing Attorneey refused
`
`
`
`
`
`
`
`registratioon of Appliicant’s appplied-
`
`
`
`
`
`
`
`for marrk, CLOUDDTV, on thhe ground
`
`
`
`
`
`that the
`
`
`
`term is mmerely des
`
`
`
`criptive off the
`
`
`
`
`
`
`
`
`
`
`
`Applicant’s goods and servvices underr Trademaark Act Seection 2(e))(1), 15 U
`
`
`
`
`
`.S.C.
`
`
`
`or in n used on ohich “wheny term, whtion of anys registrath prohibits§ 1052(ee)(1), which
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`connection with thhe goods [oor services] of the Appplicant is
`
`
`
`
`
`
`
`
`
`
`
`merely deescriptive
`
`… of
`
`
`
`them …… .” Thereaffter, registtration wass refused bbecause thee proposedd mark apppears
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`to be generic as appplied to thhe identifieed goods annd services
`
`
`
`
`
`
`
`, and Appl
`
`
`
`icant’s claiim of
`
`
`
`of the Traademark AAct was rejeected
`
`
`
`
`
`
`
`
`
`acquiredd distinctivveness purrsuant to SSection 2(f)
`
`
`
`
`
`
`
`
`
`accordinngly.
`
`
`
`Afterr the iniitial refusal and AApplicant’s first ressponse, thhe Trademmark
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Examinning Attornney issued
`
`
`
`
`
`
`
`
`
`a final reffusal on thhe groundss that the
`
`
`
`asserted mmark
`
`
`
`was meerely descrriptive. Thhereafter, AActiveVideeo filed thhis appeal,
`
`
`
`
`
`
`
`
`
`
`
`
`
`a requestt for
`
`
`
`reconsidderation, aand, in thhe alternaative, provvided eviddence thatt the asseerted
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CLOUDDTV mark hhad acquirred distincttiveness duue to its usaage in the
`
`
`
`
`
`
`
`
`
`
`
`
`
`marketplaace.
`
`
`
`With thhis submisssion, Appliicant also pprovided thhe
`
`
`
`
`
`
`
`
`
`
`
`declarattion of Eddgar Villalppando, Applicant’s SSr.
`
`
`
`
`
`
`
`
`
`
`
`Vice Prresident oof Marketiing, including as aan
`
`
`
`
`
`
`
`
`
`
`
`attachedd exhibit aa photograpph of Appliicant’s bootth
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`at the 2010 Nationnal Cable && Telecommmunicationns
`
`
`
`- 3 -
`
`

`
`Serial No. 77967395
`
`Association tradeshow, as shown above.3 The appeal was suspended, and after a
`
`further refusal and response thereto in which ActiveVideo provided more evidence
`
`of the alleged recognition of CLOUDTV as a mark, the Trademark Examining
`
`Attorney continued the descriptiveness refusal and rejection of acquired
`
`distinctiveness evidence and also refused registration on the grounds that the
`
`asserted mark is generic. In response, ActiveVideo provided more evidence of the
`
`distinctive character of its asserted mark along with an Amendment to Allege Use
`
`for the listed goods in International Class 9. The Trademark Examining Attorney
`
`then issued a final refusal on the ground that the mark is generic, and
`
`alternatively,
`
`that
`
`the mark
`
`is merely descriptive and
`
`lacks acquired
`
`distinctiveness, and this appeal was resumed. The issues on appeal have all been
`
`thoroughly briefed.
`
`Arguing vehemently against these refusals, Applicant contends that the
`
`Trademark Examining Attorney has not met the Office’s burden of proving that
`
`CLOUDTV is generic, that the CLOUDTV mark is not even merely descriptive as
`
`applied to ActiveVideo’s goods and services, and, in the alternative, that
`
`ActiveVideo has proven acquired distinctiveness for this term.
`
`II. Applicant’s business
`
`
`The record shows that in early 2006, ICTV with its HeadendWare system
`
`acquired Switched Media with its InStream platform. Initially ICTV focused on
`
`offering web-driven, interactive television (iTV) fare, first demonstrating a
`
`
`3 Second Villalpando Dec. at ¶ 13; Ex. E to Second Villalpando Dec.
`
`- 4 -
`
`

`
`Serial No. 77967395
`
`“personalized” video mosaic – a navigation application that creates “thumbnail”
`
`images of multiple video channels on one screen. The goal was to blend the
`
`quality of cable TV with the interactive nature and unlimited choices of “over-
`
`the-top” (OTT)4 broadband video. In 2008, ICTV was renamed “ActiveVideo
`
`Networks,” attempting to reflect its emphasis on becoming a service provider
`
`rather than a technology vendor. As listed above, ActiveVideo provides both
`
`software and software-based services. ActiveVideo’s CLOUDTV software is
`
`included in Philips television sets and/or Blu-ray video players sold across the
`
`United States. The services involved in this appeal are made possible through a
`
`software platform that can be used by cable and satellite television providers to
`
`provide, in turn, interactive television content to television customers through
`
`the viewer’s existing set-top-box (STB). In short, this is a form of “TV
`
`Everywhere” (TVE), a model that allows subscribers to watch what they want,
`
`when they want it and on any device – from TVs to PCs, tablets, smartphones
`
`and a growing number of other types of mobile devices.
`
`III. The Component Terms of CLOUDTV
`
`
`Applicant’s alleged CLOUDTV mark is a compound term formed by combining
`
`the words “Cloud” and “TV.” We first analyze the components as a step on the way
`
`to determining the distinctiveness (or lack thereof) of CLOUDTV as a whole. See,
`
`e.g., 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir.
`
`
`4 As seen throughout this record, “over-the-top” content refers to the delivery of video, audio
`and other media over the Internet from third parties such as Netflix, YouTube, Hulu, etc.
`For example, see Applicant’s response of December 11, 2011, 17 TSDR at 76 of 201.
`
`- 5 -
`
`

`
`Serial No. 77967395
`
`2009) (explaining that the Board appropriately considered the separate meanings of
`
`“mattress” and “.com” when determining that the combination “mattress.com” was
`
`generic); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372
`
`(Fed. Cir. 2004) (“In considering a mark as a whole, the Board weighs the individual
`
`components of the mark to determine the overall impression or the descriptiveness
`
`of the mark and its various components.”).
`
`
`
`A. The Term TV
`
`Applicant, in its appeal brief, did not contest the generic nature of the term TV
`
`for the goods and services involved herein. In addition, the Trademark Examining
`
`Attorney submitted for the record multiple definitions of “television,” showing that
`
`“TV” is frequently used as a shorthanded designation for “television,” including:
`
`tel·e·vi·sion NOUN:
`The transmission of visual images of moving and stationary objects, generally with
`1.
`accompanying sound, as electromagnetic waves and the reconversion of received waves into
`visual images.
`a. An electronic apparatus that receives electromagnetic waves and displays the
`2.
`reconverted images on a screen.
`b. The integrated audible and visible content of the electromagnetic waves received
`and converted by such an apparatus.
`The industry of producing and broadcasting television programs. 5
`- o O o -
`
`3.
`
`television noun
`1.
`the system or process of producing on a distant screen a series of transient visible images,
`usually with an accompanying sound signal. Electrical signals, converted from optical images by a
`camera tube, are transmitted by UHF or VHF radio waves or by cable and reconverted into optical
`images by means of a television tube inside a television set
`2.
`Also called: television set. a device designed to receive and convert incoming electrical signals
`into a series of visible images on a screen together with accompanying sound
`3.
`the content, etc., of television programmes
`4.
`the occupation or profession concerned with any aspect of the broadcasting of television
`
`programmes ⇒ he's in television
`VHF radio signals ⇒ a television transmitter
`
`5.
`(modifier) of, relating to, or used in the transmission or reception of video and audio UHF or
`TV 6
`- o O o -
`
`
`5 education.yahoo.com/, Office Action of August 6, 2012, 9 TSDR at 41-42 of 54.
`6 collinsdictionary.com/, Office Action of August 6, 2012, 9 TSDR at 43-46 of 54.
`
`- 6 -
`
`

`
`Serial No. 77967395
`
`television n
`an electronic device that receives television signals and displays them on a screen
`
`Synonyms: … tv, tv set
`Type of: receiver, receiving system, set that receives radio or tv signals
`a telecommunication system that transmits images of objects (stationary or moving)
`between distant points
`Synonyms: television system
`Types: …
`Type of: telecom equipment, telecom system, telecommunication equipment,
`telecommunication system: a communication system for communicating at a distance
`broadcasting visual images of stationary or moving objects
`Synonyms: TV, telecasting, video 7
`
`
`
`
`
`
`The term TV in the mark, when considered in relation to the goods and services,
`
`conveys the dictionary meanings. All of Applicant’s goods and services ultimately
`
`involve streaming images to some form of electronic device having a screen. Given
`
`contemporary changes in visual media involving “convergence” and interactive
`
`technologies, “TV” is understood variously as an object, a medium, content, a
`
`format, and/or an industry. We sometimes view television programming on a
`
`traditional receiving set, online, on “catch up,”8 or even on a device that is not a TV
`
`at all. In any case, the content of the many articles that are included in this record
`
`in the field of streaming video to a multiplicity of screens, supports that “television”
`
`and its universally recognized short-hand designation – TV – names Applicant’s
`
`products and services. Therefore, we find that “TV,” standing alone, is generic for
`
`these goods and services.
`
`
`7 vocabulary.com/dictionary/, Office Action of August 6, 2012, 9 TSDR at 47-48 of 54. The
`Trademark Examining Attorney also provided dictionary entries from sources such as
`macmillandictionary.com/dictionary/, merriam-webster.com/dictionary/ and foldoc.org/.
`8 As used throughout this record, “Catch up TV” is simply a broad reference to video on
`demand which allows users to select and watch video when they choose to rather than
`having to watch at the time of broadcast.
`
`- 7 -
`
`

`
`Serial No. 77967395
`
`B. The Term Cloud
`
`
`Turning then to the word “cloud,” the Trademark Examining Attorney included
`
`dictionary definitions of “cloud,” “the cloud,” and “cloud computing,” as well as
`
`articles from the Internet showing usage of the term “Cloud TV” in a non-source-
`
`indicating manner:
`
`cloud computing – definition /ˈklaʊdˌkəmpjutɪŋ/
` the use of computer programs that are on the Internet rather than on your own
`computer 9
`
`
`
`cloud
`a.k.a. the cloud
`Originally this was a term for the unpredictable part of a network that data travels
`through on its way to its final destination. In a packet-switched network, the physical path
`on which the data packet travels can vary from one packet to the next. In a circuit-
`switched network, the specific circuit can vary from one connection to the next.
`It later morphed into "the cloud" - which refers to a style of computing in which
`dynamic, scalable and virtual resources are provided over the Internet. Known as cloud
`computing, it refers to services that provide common business applications online, which
`are accessed from a Web browser, while the software and data are stored on the servers.
`See also: in the cloud, cloud computing 10
`
`cloud
`(1) Also referred to as a network cloud. In telecommunications, a cloud refers to a
`public or semi-public space on transmission lines (such as T1 or T3) that exists between
`the end points of a transmission. Data that is transmitted across a WAN enters the
`network from one end point using a standard protocol suite such as Frame Relay and then
`enters the network cloud where it shares space with other data transmissions. The data
`emerges from the cloud -- where it may be encapsulated, translated and transported in
`myriad ways -- in the same format as when it entered the cloud. A network cloud exists
`because when data is transmitted across a packet-switched network in a packet, no two
`packets will necessarily follow the same physical path. The unpredictable area that the
`data enters before it is received is the cloud.
`
`(2) See also cloud computing. 11
`
`
`9 macmillandictionary.com/, Office Action of November 15, 2010, 21 TSDR at 50 of 71.
`10 www.netlingo.com/, Office Action of November 15, 2010, 21 TSDR at 36 of 71.
`11 webopedia.com/, Office Action of November 15, 2010, 21 TSDR at 38 of 71.
`
`- 8 -
`
`

`
`Serial No. 77967395
`
`cloud computing Noun
`(informal, computing) Computing services provided over the Internet (or “cloud”),
`whereby shared resources, software, and information are provided to computers and other
`devices on demand. 12
`
`
`
` Cloud
`A cloud is any switched network that provides service while hiding its functional details
`from its users. A user simply connects to the edge of the cloud, and trusts the network to
`handle the details of moving a signal or data across to its destination. The PSTN and the
`Internet are two well-known examples of cloud networks. 13
`
`
`
`
`
`cloud ==>
`cloud computing
`<architecture> A loosely defined term for any system providing access via the Internet to
`processing power, storage, software or other computing services, often via a web browser.
`Typically these services will be rented from an external company that hosts and manages
`them. 14
`The Trademark Examining Attorney also placed into the record a helpful primer
`
`on “cloud computing” taken from Wikipedia, on June 24, 2010, and again on
`
`November 15, 2010.15
`
`Nonetheless, as to the connotation of the word “cloud,” Applicant steers us
`
`toward several dictionary entries offering a different meaning, as follows:
`
`cloud \ˈklau̇d\
`1 : a visible mass of particles of condensed vapor (as water or ice) suspended in the
`atmosphere of a planet (as the earth) or moon
`2 : something resembling or suggesting a cloud: as
` a: a light filmy, puffy, or billowy mass seeming to float in the air <a cloud of blond hair>
`<a ship under a cloud of sail>
`
`12 en.wiktionary.org/, Office Action of November 15, 2010, 21 TSDR at 52 of 71.
`13 glossary.westnetinc.com/, Office Action of November 15, 2010, 21 TSDR at 41 of 71.
`14 foldoc.org/, see Office Action of June 24, 2010, 24 TSDR at 22 of 69.
`15 en.wikipedia.org/. In the context of the increasing significance of “the cloud” in recent
`years, we note in comparing the Wikipedia “references” listed in several discrete entries for
`“cloud computing” over the past several years how quickly this field is growing and
`changing. See 24 TSDR at 32-42 of 69 and 21 TSDR at 54-66 of 71.
`
`- 9 -
`
`

`
`Serial No. 77967395
`
` b: (1): a usually visible mass of minute particles suspended in the air or a gas (2): an
`aggregation of usually obscuring matter especially in interstellar space (3): an aggregate of
`charged particles (as electrons)
` c: a great crowd or multitude: swarm <clouds of mosquitoes>
`3 : something that has a dark, lowering, or threatening aspect <clouds of war> <a cloud of
`suspicion>
`4 : something that obscures or blemishes <a cloud of ambiguity>
`5 : a dark or opaque vein or spot (as in marble or a precious stone)
`6 : the computers and connections that support cloud computing <storing files in the cloud>16
`
`cloud /klɑʊd/ n
`› a usually grey or white mass in the sky, made of very small drops of water:
`› a mass of something such as dust or smoke that looks like a cloud: 17
`Applicant also included the definition of “cloud” from Wikipedia. Substantially
`
`all of this nineteen-page screen-print is a detailed discussion of the meteorological
`
`meaning of the word “cloud,” containing only a single line as follows: “In computer
`
`science the term Cloud is often associated with Cloud Computing.”18
`
`As to the word “cloud” alone, Applicant is correct in pointing out that general
`
`dictionaries show that the standard definitions of the term “cloud” occur in a
`
`meteorological context (e.g., particles of condensed vapor suspended in the
`
`atmosphere) or often literary forms analogized thereto (e.g., “gathering clouds of
`
`war”). However, these connotations of the word “cloud” are irrelevant in this case
`
`inasmuch as the determination of whether a proposed mark is capable of achieving
`
`significance as a source identifier must be made in relation to the goods and
`
`services for which registration is sought, not in the abstract. In re Chamber of
`
`Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); and
`
`In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir.
`
`
`16 merriam-webster.com/, Applicant’s response of May 12, 2011, 20 TSDR at 22-23 of 57.
`17 dictionary.cambridge.org/us/, Applicant’s response of May 12, 2011, 20 TSDR at 26 of 57.
`18 en.wikipedia.org/ as accessed by Applicant on May 12, 2011, 20 TSDR at 29-47 of 57.
`
`- 10 -
`
`

`
`Serial No. 77967395
`
`2007). The fact that a term may have a different meaning in another context is not
`
`controlling. For this reason, we find the “cloud” entries from the specialty
`
`dictionaries as cited by the Trademark Examining Attorney to be the definitions
`
`that are most apropos to the manner in which “cloud” is used at the intersection of
`
`streaming video and interactive television.
`
`In this context, Applicant charges that “[a] primary issue central to this case is
`
`the Examining Attorney’s apparent misunderstanding of the nature of ActiveVideo’s
`
`cutting edge goods and services … .” While we disagree with this allegation
`
`generally, we acknowledge that most of the excerpts the previous Trademark
`
`Examining Attorney included from Lexis/Nexis just
`
`… happen to have the words “cloud” and “tv” in proximity
`to each other, but otherwise are completely random and
`have absolutely no connection to the phrase CLOUDTV or
`the goods and services at issue here.
`Applicant’s brief at 9-10. For example, of the one-hundred quick excerpts from the
`
`Lexis/Nexis search results appended to the Office action of January 11, 2012
`
`(15 TSDR), only three discrete news releases were relevant to the facts of this case:
`
`(1) Story number 52 is a story about Applicant;
`(2) Stories ##6, 11, 31, 32 and 100 are duplicative, but they do make a generic
`reference to “Cloud TV,” which is relevant to our determination herein:
`Liberty Global 2nd Screen iPad TV Application Developed by Intellicore
`September 09, 2011
`AMSTERDAM--Intellicore, a developer of innovative IPTV & Cloud TV applications for iPad, is the company
`that developed the 2nd Screen application for Liberty Global’s Horizon Project. The iPad application was
`shown during the IBC keynote session of Mike Fries, President & CEO of Liberty Global.
`(3) Stories ##37, 86, 98 and 99 are duplicative, but again, they make a generic
`reference to “cloud TV,” which is also relevant to the case at hand:
`Referencing Strategy Analytics 2011 Predictions
`Boston, MA - December 21 2010 – Will 2011 be the year of Facebook TV, CloudTunes and Wii2?
`Strategy Analytics’ analysts have dug themselves out of snow drifts, put another log on the fire, and pooled
`their thoughts on the year ahead. Connected TV will not be going away, in spite of early glitches: Google,
`Apple and Microsoft may be joined by Facebook in the race to develop a world-beating cloud TV service…
`
`- 11 -
`
`

`
`Serial No. 77967395
`
`Additionally, we agree with Applicant that some of the screen-prints drawn from
`
`third-party websites were totally unrelated to the case at hand.19
`
`In any case, the entire record herein shows that in the field of computers and
`
`telecommunications, the “cloud symbol” (as shown in the images below, for example)
`
`has for decades represented a general computer network. It is interesting to note
`
`that in one source accessed by the Trademark Examining Attorney in June 2010
`
`and again in November 2010, the cloud imagery still represented a general network
`
`as it has for decades. Yet that same entry currently labels the cloud as the Internet:
`
`Network Cloud (1998)
`
`Contemporary Cloud (2013)
`
`20
`
`Hence, while the Internet is not coterminous with “the cloud,” the definitions of
`
`“cloud” reviewed above demonstrate that whether one focuses on multiple-system
`
`
`19 In addition to the weakness of the Lexis/Nexis evidence, not every website put forward by
`the Office during the prosecution of this application, wherein the word “cloud” preceded the
`term “tv,” is relevant to the issues at hand. For example, the site tvcloud is “dedicated to
`beautiful clouds in the blue sky, Cloud-TV is a grandiose time-lapse project …” designed by
`one Jay Versluis, “a restless Creative Junkie, Plastic Shooter, Broadcast Professional and
`WordPress Guru”; “Cloud” is the name of a manga character in “Fung Wun,” spcnet.tv; from
`learndevnow, one learns through videos the power of the Cloud; a file storage provider,
`cloudcovertv.com; and finally, unisys.com, Unisys Corp. produced a TV series on “the
`cloud,” discussing where it believes things are now, and where developments in “the cloud”
`should be headed in the future.
`20 For example, see Office Action of November 15, 2010, 21 TSDR at 44 of 71; compare with
`COMPUTER DESKTOP ENCYCLOPEDIA (2013) as captured in the “cloud” entry of the online
`encyclopedia of thefreedictionary.com.
`
`- 12 -
`
`

`
`Serial No. 77967395
`
`operators (MSOs), consumer electronics (CE) manufacturers, or web denizens, the
`
`term “cloud” will immediately be seen as generic for packet-switched computer
`
`networks that link distant servers to one’s TV, computer or other smart devices
`
`having screens.
`
`Citing to dictionary entries found in sources such as NetLingo and Webopedia,
`
`Applicant seeks to create ambiguity from the technical definitions of the word
`
`“cloud” by emphasizing language referring to the cloud, such as “the unpredictable
`
`part of a network.” We disagree with these attempts by Applicant to demonstrate
`
`that “cloud” is an ambiguous term when considered in conjunction with its goods
`
`and services, and therefore not immediately descriptive or generic. In reality, this
`
`“unpredictable” language dates all the way back to the earliest days of the first
`
`packet-switched network,
`
`the ARPANet, having
`
`the earliest conception,
`
`architecture and design of the Internet as we know it, and is nothing more than an
`
`explanation of the way in which two or more related and inexorably linked data
`
`packets may follow quite different paths in the hidden parts of this packet-switched
`
`network as they both/all make their way to the same final destination.
`
`Actually, Applicant concedes that “[t]erms such as Cloud, Internet, Web, and
`
`computer network are fully available for use. In re Seats, [Inc., 757 F.2d 274, 225
`
`USPQ 364, 368 (Fed. Cir. 1985)].” Applicant’s brief at 19 (emphasis supplied). We
`
`agree with Applicant on the narrow point that no one in Applicant’s field can claim
`
`exclusive rights in the term “cloud.”21 This conclusion is entirely consistent with all
`
`
`21 However, we note that Applicant later states, in what appears to be a contradictory
`position, that “Here, the individual terms [“cloud” & “tv”] are not generic for software for
`
`- 13 -
`
`

`
`Serial No. 77967395
`
`of the dictionary definitions made of record. From Applicant’s own website, we see
`
`the importance of the “cloud” to its goods and services. Applicant’s many press
`
`releases and subsequent articles about its products repeatedly use terms like “the
`
`Internet cloud” “Television in the cloud,” industry-leading “cloud-based platform,”
`
`“an application platform in the cloud,” “moving the TV-viewing experience to the
`
`cloud,” “distribute content from the cloud,” “the network cloud,” benefits of “cloud-
`
`based processing,” “cloud-based UIs,” “total cloud,” “doing the heavy processing in
`
`the cloud,” and “advanced TV software platform based entirely in the cloud.”22
`
`In support of registration, Applicant argues that the United States Patent and
`
`Trademark Office has permitted numerous similar marks for computer software
`
`and related services to be registered by third-parties, such as the following:
`
`THE CLOUD
`
`GLOBAL CLOUD
`
`for “computer services, namely, global computer network
`development, web site design, web site consulting, database design
`development, and computer middleware development” in
`International Class 9;23
`for “marketing and promoting the goods and services of others via a
`wireless network” in International Class 35;
`“text and numeric wireless digital messaging services” in
`
`interactive television … .” Applicant’s reply brief at 6. This would also seem to be a different
`approach than seen above when discussing the degree of descriptiveness (or distinctiveness)
`of the term “tv,” where we noted that Applicant, in its initial appeal brief, did not contest
`the generic nature of the term “tv” for the goods and services involved herein.
`22 Our primary reviewing court has made clear that the way an applicant uses an alleged
`mark (or a component term in a mark), or the goods and services in connection with which
`it uses the alleged mark, in promotional materials or packaging, is relevant to whether
`consumers will perceive the mark as an indicator of source or instead as descriptive or
`generic. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
`1220 (Fed. Cir. 2012); In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378,
`1380-81 (Fed. Cir. 2007); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
`(Fed. Cir. 2001); In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 92 (CCPA 1980); In
`re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
`23 Registration No. 2566720 issued on May 7, 2002, renewed.
`
`- 14 -
`
`

`
`Serial No. 77967395
`
`CLOUDCORE
`
`
`
`CLOUD ATTACHED
`STORAGE
`
`Cloud Computing
`
`International Class 38;
`“hosting of digital content on the Internet” in International Class
`42;24
`for “providing temporary use of on-line non-downloadable software
`for development and customization of software for use in integrated
`open source computer software platforms and related computer
`systems” in International Class 42;25
`for “technical consulting services in the field of cloud computing” in
`International Class 42;26
`
`for “embedded computer servers; data storage management
`software; computer network storage devices, namely, storage
`subsystems for storage and backup of electronic data either locally
`or via a telecommunications network; networking software, namely,
`software for setting up and configuring managed storage and online
`backup services over wide area networks; computer software and
`hardware for synchronizing and connecting local network storage
`and global computer networks; computer storage appliances,
`namely, network attached storage devices for file sharing and cloud
`backup; computer hardware and software for storing and managing
`data on local and internet-based file servers” in International Class
`9;
`“providing online, non-downloadable computer software for use in
`storing and managing the computer data of others; data encryption
`services for others; back-up services for computer hard drive data;
`computer services, namely, data recovery services; data
`synchronization services in the nature of data recover services;
`providing a web site either locally or via a telecommunications
`network featuring technology that enables internet users to publicly
`share data; hosting an on-line web site featuring storage solutions”
`in International Class 42;27
`for “computer software for management and security for cloud
`
`
`24 Registration No. 3028364 issued on December 13, 2005; Section 8 affidavit accepted.
`Presumably in the ten years since this application was examined, “the Cloud” has taken on
`a whole new meaning!
`25 Registration No. 3047206 issued on January24, 2006.
`26 Registration No. 3739774 issued on January 19, 2010. No claim is made to the exclusive
`right to use the w