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`
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`MARK SECTION (no change)
`ARGUMENT(S)
`
`
`
`2
`
`«
`§ Please see the actual argument text attached within the Evidence section.
`§
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`i1519057]2 . ViiiZ1i)£-tl1dO Declaration and Exhibit
`,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,._,w___..,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,.W...._M,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,mm W,,,,,,,,,,,,,,,, ,_
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`________________I.“,,,,,,,,,,, IIII* IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII* IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIInIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII-4}5
`
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`
`ADDITIONAL STATEMENTS SECTION
`
`SECTION 2(1) BASED ON The mark has become distinctive of the goods/services, as demonstrated by
`EVIDENCE
`the attached evidence.
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`As detailed in the Request for Reconsideration, the Section 2(1) claim is only
`being made in the alternative. Evidence submitted in support of this
`
`.,
`
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`
`

`
`STATEMENT
`
`1
`
`alternative claim is provided in the underlying Request for Reconsideration,
`and supporting Declaration of Edgar Villalpando (which is being reattached
`herewith for convenience).
`
`SIGNATURE SECTION
`RESPONSE SIGNATURE
`/Peter J. Karo]/
`sssssssssssssssssssssssssssssssssssssssssssssssssssssssssssssss_.__.I...........
`SIGNATORVS NAME
`[Peter J. Karol
`....................,....»..~... .. .'....“..........."....,................,,.....,...§.....______________________________________________________________________________________________________________________________________________________________________________ _ A
`V
`1S;I()GSIL}I1;)(:RY S
`‘ Attorney for Applicant, MA Bar Member
`
`W.~,M,,,.a.~..V.~..«..._..».._..........,,t._ALm__...m....w \/V !.........._.
`DATE SIGNED
`E 05/ii;/izoiiil
`AUTHORIZED
`;
`SIGNATORY
`§YES
`CONCURRENT APPEAL YES
`NOTICE FILED
`FILING INFORMATION SECTION
`SUBMIT DATE
`Th May 12 15:52:06 EDT 2011
`E
`............................._..W......m~.t....v_..E...L ..,.~,..w..,t.g,,»~
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`
`USPTO/RFR-209.120.179.205
`l -201lO5l2l55206881034-779
`% 67395-4801671ab3a78fc4996
`ble729blc407cef—N/A-N/A-2
`0110512l51905712030
`
`TEAS STAMP
`
`1*
`
`E
`q
`
`1
`
`1 R
`
`equest for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 77967395 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`
`Evidence in the nature of Request for Reconsideration with Exhibits A—C, and Declaration of Edgar
`Villalpando with Exhibit 1 has been attached.
`Original PDF file:
`evi 1-671 l0l40l80-l5l9057l2 . Request for Reconsiderationpdf
`
`Converted PDF file(s) (19 pages)
`
`
`
`

`
`Ex/idence—1
`
`Evidence-2
`l:7vidence—3
`
`Evidence—4
`
`l_Cvidence—5
`
`Evide/nce~6
`
`Evidence-7
`
`Evidence—8
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`Evidence—9
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`Evidence- 1 0
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`Ex/idence—1 1
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`Evidence 1 2
`
`Evidence-13
`
`Evidence-14
`
`Evidence-15
`
`Evidence—l6
`
`Evidence-17
`
`Evidence 1 8
`
`Evidence] 9
`
`Reconsideration Exhibit A. d1’
`
`
`
`
`Original PDF file:
`evi 671l0140]80—15l9057l2 .
`
`Converted PDF file(s) (4 pages)
`Evidence-1
`
`EVidence—2
`
`F.vidence—3
`
`Evidence-4
`
`Original PDF file:
`evi 671 101401 80-15 1905712 . Reconsideration Exhibit B. (If
`
`
`
`Converted PDF file(s) (3 pages)
`Evidence— 1
`
`1jvidence—2
`
`Evidence—3
`
`Original PDF file:
`evi 67110140180—151905712 . Reconsideration Exhibit C. df
`
`
`
`
`Converted PDF file(s) (20 pages)
`Evidence—1
`
`Evidence-2
`
`1-3videnCe—3
`
`l;‘vidence—4
`
`Ex/idence—5
`
`Evidence-6
`
`1£vidence—7
`
`EVidence—8
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`Evidence—9
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`Ex/idence—10
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`Evide11ce—1 1
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`Evidence-12
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`
`

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`Evidence—l3
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`Evidence 1 4
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`Evidcnce—l5
`
`Evidence-16
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`Ex/idence—17
`
`Evidence 1 8
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`l¥Ividence—1 9
`
`l;3vidence-20
`
`Original PDF file:
`evi 67] 101401804 5 I 9057 I 2 . Villal
`
`
`
`
`Converted PDF file(s) (5 pages)
`Evidence—l
`
`vando Declaration and Exhibit
`
`1
`
`2 _df
`
`
`F,vidence—2
`
`Evidence—3
`
`F,vidence—4
`
`Evidence-5
`
`ADDITIONAL STATEMENTS
`
`Section 2(1), based on Evidence
`The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.
`
`Original PDF file:
`e2l‘—209120l79205~l519057l2 . Villal
`
`
`
`
`
`Converted PDF file(s) (5 pages)
`2 1 evidence—l
`
`ando Declaration and Exhibit
`
`1
`
`2 . df
`
`
`21 i) evidence-2
`
`2m evidence—3
`
`2(1) evidence—4
`2 1 evidence—5
`
`As detailed in the Request for Reconsideration, the Section 2(i‘) claim is only being made in the
`alternative. Evidence submitted in support of this alternative claim is provided in the underlying Request
`for Reconsideration, and supporting Declaration of Edgar Villalpando (which is being reattached herewith
`for convenience).
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Peter J. Karo1/ Date: 05/12/2011
`Signatory's Name: Peter J. Karol
`Signatory's Position: Attorney for Applicant, MA Bar Member
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
`highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attorney/agent not currently associated with his/her company/firm previously represented the applicant in
`this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
`of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing hirn/her in this matter; or (4) the
`applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
`
`

`
`him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 77967395
`
`Internet Transmission Date: Thu May 12 15:52:06 EDT 2011
`TEAS Stamp: USPTO/RFR-209.120.179.205—20110512155206
`881034-77967395—4801671ab3a78fc4996b1e72
`
`9b1c407cef-N/A—N/A-20110512151905712030
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.2
`Filed:
`Mark:
`
`ActiveVideo Networks. Inc.
`77/967,395
`March 24, 2010
`CLOUDTV
`
`Exam. Atty:
`Law Office:
`
`Ingrid Eulin
`111
`
`Atty Docket:
`
`1436/222
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`RE UEST FOR RECONSIDERATION AND IN THE ALTERNATIVE
`
`ANIENDMENT UNDER SECTION 21E)
`
`Applicant requests reconsideration of the refusal based on Section 2(e_)(l) of the
`
`Trademark Act.
`
`The Examiner maintains that
`
`the mark CLOUDTV “merely describes a
`
`feature/characteristic/purpose/fimction of applicant's services.” As discussed below. Applicant
`
`respectfully traverses the refusal and submits that its mark. at most. is suggestive of Applicants
`
`identified goods and services.
`
`I.
`
`THE MARK CLOUDTV AND ITS MARKET
`
`Any determination with respect
`
`to descriptiveness or suggestiveness
`
`requires an
`
`understanding of mark and its elements, the associated goods and services and the market for
`
`those goods and services. CLOUDTV is a coined term not used in any way other than as a
`
`trademark for Applicant's goods and services.
`
`Indeed, the Examining Attorney provides eight
`
`exhibits illustrating the use of CLOUDTV and every one of them uses CLOUDTV to signify
`
`Applicants product, and Applicant as the source of that product. See Office Action Exhibits 1,
`
`2, 4-9.
`
`“Cloud" is a term primarily understood to mean a weather system.
`
`In particular, the
`
`generally accepted meaning of“cloud" is a visible mass of water droplets. Sec’. e.g.. definition of
`
`

`
`"cloud”
`
`in Merriam-Webster Dictionary,
`
`attached as Exhibit A (http://www.merriam;
`
`webstencom/dictionary/cloud) and definition of “cloud" in Cambridge Dictionary, attached as
`
`Exhibit B (htt
`
`
`
`
`
`://dictionar .cambt'id e.or /dictionar '/british/cloud l). Even the dictionaries
`
`consulted by the Examining Attorney are consistent with this. For instance. the Free Online
`
`Dictionary entry cited by the Examining Attorney notes, “Clouds are formed when air containing
`
`water vapor is cooled below a critical temperature".
`
`TV is short for television. The Examining Attorney relies upon Merriam-Webster online
`
`which provides several acceptable definitions for the term television: (1) an electronic system of
`
`transmitting transient
`
`images of fixed or moving objects together with sound over a wire or
`
`through space by apparatus that converts light and sound into electrical waves and reconverts
`
`them into visible light rays and audible sound: (2) a television receiving set: (3)(a) the television
`
`broadcasting industry; and (b) television as a medium of communication. As such, the term TV
`
`may refer to a transinission system, a piece ofelectronic equipment. a broadcasting industry or a
`
`communication medium.
`
`The technology community has begun to use the term “cloud” metaphorically to describe
`
`the “unpredictable part ofa network that data travels through on its way to its final destination."
`
`See definition from netlingocom. attached as Exhibit 10 to the office action. Just as for particles
`
`moving through a cloud in the sky. there is no clear definite path for data moving through such a
`
`network. Those working with computers recently developed an approach that they came to call
`
`“cloud computing." This “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 id. Netlingocom classifies its definition as “online jargon.” See id. Thus, according to
`
`techie jargon or slang, “cloud” may refer to cloud computing as using “the cloud”, i.e.. dynamic
`
`IQ
`
`

`
`scalable and virtual resources on the Internet. See id. The original metaphorical use of “cloud"
`
`as a network of unpredictable paths is
`
`the predominant meaning established in the tech
`
`community as confirmed by Webopedia, WestNet and thefreedictionary.com. See Exhibits ll-
`
`I3 to the office action.
`
`Applicant uses the CLOUDTV mark in connection with its software and use of its
`
`software
`
`and seivices associated therewith,
`
`including broadcasting and providing non-
`
`downloadable content via its network-based media processing software. The market for the
`
`product and services is the television distribution industry including the cable. fiber and satellite
`
`companies who provide television services to their subscribers. Purchasers at these companies
`
`are sophisticated in the lields of telecommunications.
`
`In view of the many thousands of
`
`subscribers that each company serves, any given purchase to install new software in the
`
`distribution system is made only after careful review and deliberation. As the CLOUDTV
`
`software gets implemented in television distribution systems. millions of subscribers will be able
`
`to enjoy the benefits of its services. Such subscribers operating their television remote controls,
`
`mobile devices or game controllers need not understand the behind-the-scenes inner workings of
`
`how any particular content was delivered to their viewing equipment.
`
`II.
`
`PRIMARILY MERELY DESCRIPTIVE
`NOT
`IS
`“CLOUDTV”
`APPLICANT’S GOODS OR SERVICES
`
`OF
`
`A.
`
`Serious Doubt Exists as to Whether Applicant’s Mark Is Merely Descriptive
`of Its Goods and Services
`
`A mark is merely descriptive if used in a way that "conveys an immediate idea of the
`
`ingredients, qualities or characteristics” ofthe relevant goods and services. Educational Tesring
`
`Service v. Touc/Isrone Applied Science A.s'.s'ociares, Inc.. 739 F. Supp. 847, 850 (S.D.N.Y. 1990)
`
`(finding BOOKWHIZ for a computerized reading tool not descriptive) (emphasis added): In re
`
`
`
`

`
`The Srroh Brewery C0,, 34 U.S.P.Q. 2d 1796, 1797 (T.T.A.B. 1995) (finding VIRGIN for non-
`
`alcoholic beer not descriptive). Three tests are commonly used to determine whether a mark is
`
`merely descriptive, or whether it rather is suggestive: (1) the “degree ofimagination" test; (2) the
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`‘competitors’ use” test. and (3) the “co1npetitor’s need” test. See, e.g., No Nonsense Fashions,
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`Inc. v. Consolidated Foods Corp, 226 U.S.P.Q. 502, 507 (T.T.A.B. 1985) (citing McCarthy,
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`Trademarks and Unfair Competition, §§ 1l.21A - 11.2lC). Any doubts under Section 2(e)(1) of
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`the Lanham Act about whether a mark is merely descriptive or suggestive are to be resolved i_n
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`favor of Applicant. See In re The Sfroh Brewery C0.. 34 U.S.P.Q.2d 1796, 1797 (T.T.A.B.
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`1995); In re Bel Paese Sales Co.,
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`1 U.S.P.Q_.2d 1233, 1236 (T.T.A.B. 1986); In re Conductive
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`Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983).
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`CLOUDTV is a unique juxtaposition of two incongruous terms to form a mark which is
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`not merely descriptive.
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`In addition. each of the three tests confirm that CLOUDTV is a
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`suggestive and not descriptive mark. At the very least, doubts are raised as to the Examining
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`Attorney’s previous conclusion that the mark is descriptive. Such doubts must be resolved in
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`favor of Applicant by allowing the present application to publish.
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`B.
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`Unique juxtaposition of Cloud and TV does not give an immediate idea of the
`ingredients, qualities or characteristics of the goods and services
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`The Examining Attorney’s immediate reaction to CLOUDTV was consistent with the
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`generally understood dictionary definitions for “cloud” and “TV In her first action. she
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`remarks, “Here the evidence shows that ‘CLOUDTV’ refers to television services and content
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`that features clouds.” June 24, 2010 Office Action. Other people may react differently and may
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`envision floating on a cloud or a general state of happiness while in front of their television. Still
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`others may be more in tune with television broadcasting which sends transmission signals
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`through the clouds to TV antennas around the country. Others might even think the term refers
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`

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`to a new TV network (analogous to the tiuTV, HGTV, or NASA TV stations). Any relationship
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`between CLOUDTV and Applicant’s software and related services is not immediately apparent.
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`The Examining Attorney now relies on one source's view of online jargon to assert that
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`one would associate “cloud” with “cloud computing.” But even if attention is focused on the tech
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`community,
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`the accepted definition for cloud is a network through which data travels on
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`unpredictable paths. Netlingo is the only reference relied upon by the Examining Attorney to
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`make a cognitive leap from “cloud” to “cloud computing” and it only purports to explain jargon
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`or slang usages. Even if it could be shown that a techie relates the term “cloud" to “cloud
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`computing,” (and the evidence does not support that assumption),
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`in the context of the term
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`CLOUDTV such a departure from the ordinary meaning of “cloud" is not justified. No
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`explanation is supplied for why a techie. let alone a purchaser or consumer, would comprehend a
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`relationship between the computer notion of running applications on the Internet with a
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`television equipped with a simple remote control. To the extent a consumer is receiving
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`television programming or video-on-demand. the notion of running a computer application on
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`the Internet may be far fiom one’s mind even if one is using Applicanfs interactive television
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`services.
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`Because CLOUDTV is a unique term formed with an element, CLOUD, that provokes
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`images of white fluffy masses. or a feeling ofcalm or happiness, or an indication of cutting edge
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`technology, CLOUDTV is not merely descriptive and is suitable for signifying the source of the
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`service or software. The Examining Attorney has cited the case In re Colonial Stores, Inc., 394
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`'4.)
`F.2d 549, 551, 157 USPQ 82, 384 (C.C.P.A.), which held that even two words that are
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`othenvise descriptive of ingredients may be combined in a mark in an unusual association or
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`arrangement to function as more than a mere description of the ingredients of the goods. Thus, it
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`5
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`

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`was improper to refuse registration for SUGAR & SPICE for bakery products, namely, cakes.
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`cookies, breads, rolls, donuts, pastries. crackers. The case for registering CLOUDTV is even
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`stronger where “cloud” and “TV” each have numerous meanings and are not as easily seen as
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`being descriptive as is the case for sugar and spice in baked goods. The terms “cloud” and “TV”
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`are uniquely combined in a single mark for use as a trademark and provide no immediate mere
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`description of the actual goods or services. The coined tenn most definitely has other
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`connotations and should be approved for publication.
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`C.
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`CLOUDTV Is Suggestive Under the “Degree of Imagination” Test.
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`A mark is suggestive, rather than descriptive, under Section 2(e) of the Trademark Act if
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`it “requires imagination, thought and perception to reach a conclusion as to the nature of the
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`goods.” Bloclrlmsrer Entertainment Group v. I.aylc0 Inc, 33 U.S.P.Q.2d 1581, 1584, 869 F.
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`Supp. 505 (ED. Mich. 1994)
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`1.
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`Mental Steps Required
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`A first step toward reaching the nature ofapplicant’s goods is to dismiss the common
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`understanding of the term CLOUD. Applicant’s goods do not include anything that has to do
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`with a weather system. This imaginative step alone should be enough to establish CLOUDTV as
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`a suggestive mark. But there is more.
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`In the next step, one may consider the tech meaning of CLOUD, a network through
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`which data travels in unpredictable paths. Thus, one might imagine CLOUDTV as a cloud of
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`televisions or a cloud of computers providing TV content. Neither describes the Applicant’s
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`software and services.
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`This case is thus on point with the decision in In re TCL Govideo. 2006 WL 2558017, *4
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`(T.T.A.B. August 2, 2006) (nonprecedential decision).
`
`In Govicleo,
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`the Board reversed a11
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`6
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`

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`examiner’s refusal to register the mark YOURDVD for. among other things, DVD players, and
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`noted that:
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`“when DVD is used as part of the mark YourDVD the immediate reaction is that of the
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`disk itself. and consumers must go through the mental step of recognizing that, as
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`applied, for example, to television sets, YourDVD does not refer to the video disk but the
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`fact that the Video disk can be played on the television. This mental ‘hiccup’ is sufficient
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`to put YourDVD into the category ofa suggestive mark”. See In re TCL Govideo, 2006
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`WL 2558017. *4.
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`Likewise. with C LOUDTV the immediate reaction might be that of the cloud itself, i.e., a cloud
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`of computers. Consumers must go through the mental steps to recognize that CLOUDTV does
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`not refer to the computers themselves but the fact that a cloud ofconiputers is where the software
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`runs and from where the non-downloadable content is provided.
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`The imagination must take another step beyond the fact that Applica11t"s software and
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`services are not a network of computers. Mental steps are required to go fro111 the term CLOUD
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`to the terminology CLOUD COMPUTING. Whereas the tech community may see CLOUD as
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`the unpredictable part ofa network rather than a mass of water droplets, they would still need to
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`make a jump to the style of computing in which applications are accessed on the Internet. But
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`the accessibility of downloadable content on the Internet would weigh against a mental step
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`toward the Internet when considered from the perspective of Applicants goods and services
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`which are related to non-downloadable content and to television. Surely an explanation of
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`Applicants system architecture would be required for one to comprehend the relationship
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`between network-based software and the provision of non-downloadable content to subscriber
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`televisions.
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`

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`Applicant’s services typically involve a network at the television distribution headend of
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`a cable provider where the software is run. The programming is sent to user televisions or game
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`consoles. Given that the user is in front of a television and not a computer, CLOUDTV is not
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`likely to elicit thoughts of cloud computing. The provision of television programming from a
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`headend location is conventional practice. Referring to a network of computers at the headend as
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`a cloud is a unique and imaginative thought.
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`The case of In re Dana Innovations, 2007 WL 466797, *3 (T.T.A.B. February 6, 2007)
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`(nonprecedential decision) is instructive. The common descriptive terms “share” and “music”
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`were found registrable when juxtaposed into the unique combination SHAREMUSIC even when
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`used in connection with audio equipment that allows multiple persons to listen to music. The
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`TTAB held that purchasers and prospective customers would have to use some degree ofthought
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`or iinagiuation to understand that applicant's audio equipment allows persons to ‘share music’ in
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`the sense that the equipment allows multiple persons to listen to music from a Mp3 player such
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`as an Apple iPod'®". Sharing of music is likely a simple common concept for customers. The
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`notion that a term such as cloud. commonly used with relation to weather, would be understood
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`by customers without imaginative thought to refer to a remote network of computers, from which
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`television programming is being provided, is far—fetched. Especially when one considers that the
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`term SHAREMUSIC would require imaginative thought.
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`The recency of the tech community usage of the term “cloud” with respect to computing
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`further counsels against a conclusion that CLOUDTV is merely descriptive. For example, in In
`
`re Grand Forest Holdings Inc.. 78 U.S.P.Q.2d 1152. 2006 WL 337549, *5 (T.T.A.B. January 31.
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`2006), the Board found that despite the movement in US. around time of Iraq war to rename
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`French fries as “Freedom Fries." Applicants FREEDOM FRIES mark was not merely
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`

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`descriptive of "frozen French fried potatoes” because “freedom" in no way describes the goods
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`and “few press releases, news stories, and a handful of examples of restaurant menu changes are
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`simply not sufficient evidence to support a refusal to register the term as merely descriptive".
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`The court went on to reason “we cannot refuse registration on the ground that a term might
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`become generic or merely descriptive in the future. See, e. g., l5 U.S.C. § l052(e) (“Consists ofa
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`mark which, (1) when used on or in connection with the goods of the applicant is merely
`
`descriptive")
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`.
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`.
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`.
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`Furthermore.
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`in these cases,
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`‘any doubt with respect
`
`to the issue of
`
`descriptiveness should be resolved in applicant's behalf". Established dictionaries have not
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`shown general acceptance of cloud as a computer term. Even Wikipedia defines cloud as a
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`weather system See definition for “cloud” at Wikipediacom, attached as Exhibit C
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`://en.wiki edia.or /w
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`(htt
`
`
`
`
`
`iki/Cloud . At present. it would take a great deal of imagination and
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`several steps to go from CLOUDTV to a description of Applicant’s goods and services.
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`2.
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`Multiple Meanings Make Mark Suggestive
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`The multiple meanings ofcloud and TV contribute to making the unique combined mark
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`CLOUDTV suggestive. A purchaser or consumer must consider the various meanings of the
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`combination of the words “cloud” and “tv," before imaginative thought might arrive at an
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`understanding ofApplicant‘s goods and services. For example, CLOUDTV suggests a variety of
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`potential meanings distinct from Applicant’s goods and services:
`
`0
`
`0
`
`television content about the weather system ofclouds
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`a cloud, or cluster, oftelevisions (such as the numerous subscriber televisions or
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`the cluster oftelevisions displayed at a bar or pub)
`
`0
`
`television content that provokes a feeling of being ‘on a cloud‘, i.e., exceedingly
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`happy; in high spirits
`
`

`
`0
`
`a computer network at the headend ofa television broadcaster
`
`For those whose immediate thoughts are of a mass of water droplets,
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`the mark is blatantly
`
`incongruous with the actual goods and services. Even those who immediately consider the tech
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`meaning for “cloud” as the unpredictable part of a network, Applicant’s goods and services are
`
`not described. for example. a network ofcomputers at the headend is not Applicant’s product.
`
`Applicant offers software which may be run on a network, such as may be found at a headend.
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`The mark is used in connection with the software and the provision of non-downloadable content
`
`via its software. As such. the mark has not described Applicant’s goods and services. Given that
`
`“cloud” is capable of many different meanings, the term CLOUDTV can not be immediately
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`descriptive of Applicant’s goods or services. See In re K-2 Coiporation. 2006 WL 2645220,
`
`(T.T.A.B. September 07. 2006) (in holding that the mark CINCH is not descriptive for use in
`
`connection with snowboard bindings, the Board noted that multiple definitions exist for the word
`
`“cinch,” and that “easy to use” and “tightening" are only two of these definitions so the mark is
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`not immediately descriptive ofa feature of the goods).
`
`The words CLOUD and TV juxtaposed next to each other do not make up a descriptive
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`mark. Rather, the mark is incongmous with software that provides non-downloadable content.
`
`Televisions are not generally understood to act as computers downloading documents and files
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`from the Intemet. Televisions do not typically come with a keyboard, mouse and a disk drive.
`
`Cloud computing is
`
`incongruous with television. Even watching a CLOUDTV program
`
`controlled by the television remote does not suggest cloud computing. Even if “cloud” were
`
`understood to mean a computer network, programming delivered from a computer network
`
`through a television requires a greater degree of imagination. As noted by the Board.
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`“incongruity is a strong indication that a mark is suggestive rather than merely descriptive.“ In
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`l()
`
`

`
`re Tennis In The Round, Inc., 199 U.S.P.Q. 496 (TTAB March 28, 1978) (citing Union Carbide
`
`Coiparaiion v. Ever-Ready Incorporated, er 0]., 188 U.S.P.Q. 623 (7”‘ Cir. 1976)).
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`D.
`
`CLOUDTV is Not Merely Descriptive Under the “Con1petitor’s Need” Test
`
`Under
`
`the competitors’ need test,
`
`the fact
`
`finder determines whether Applicants
`
`competitors need to use the mark in order to fairly and accurately describe their goods.
`
`Minnesota Mining & Mfg. Co. v. Johnson & Johnson, 454 F.2d H79, 172 U.S.P.Q. 491
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`(C .C .P.A. 1972) (finding SKINVISIBLE for transparent medical adhesive tape not descriptive).
`
`Applicant’s competitors do not need to use the word CLOUDTV to describe their goods and
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`services.
`
`There are many other ways to describe the provision of nondownloadable television
`
`content. Competitors may refer to a “remote network based platform” or “network based
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`software" or “web-based software" or “Internet-based software” or “headend—based interactive
`
`software”. They may describe “media processing software" or “e—commerce software.” The
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`services of competitors might
`
`include video-011-demand or interactive television or a home
`
`buying network. An electronic program guide can be the content of