Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA501292
`ESTTA Tracking number:
`10/22/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77967395
`ActiveVideo Networks, Inc.
`CLOUDTV
`PETER J KAROL
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`125 SUMMER STREET
`BOSTON, MA 02110-1618
`UNITED STATES
`trademarks@sunsteinlaw.com
`Appeal Brief
`Applicant's Brief.pdf ( 26 pages )(189270 bytes )
`Lisa M. Tittemore
`ltittemore@sunsteinlaw.com, sabreu@sunsteinlaw.com
`/Lisa M. Tittemore/
`10/22/2012
`
`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 BRIEF
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Concurrent Technologies, Inc. v. Concurrent Technologies Corp., 12
`USPQ2d 1054 (TTAB 1989) ......................................................................... 9, 14, 16, 20
`
`Firestone Tire & Rubber Co. v. The Goodyear Tire & Rubber Co., 186
`USPQ 557 (TTAB 1975) ......................................................................................... 18, 20
`
`George Basch Co., Inc. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir.1992) .................................. 24
`
`H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc. , 228 USPQ 528
`(Fed. Cir. 1986) ............................................................................................................... 7
`
`In re Amer. Fertility Soc’ty, 51 USPQ2d 1832 (Fed. Cir. 1999) ............................................... 7, 9
`
`In re Clearr Corporation, Serial No. 75/010,090, 1999 WL 1278653 * 2,
`(TTAB Dec. 28, 1999) ................................................................................................... 24
`
`In re Colonial Stores, Inc., 157 USPQ 382 (CCPA 1968) .................................................... 18, 19
`
`In re Dana Innovations, Serial No. 78/576,297, 2007 WL 466797 (TTAB
`Feb. 6, 2007) ................................................................................................................. 16
`
`In re Del E. Webb Corp., 16 USPQ2d 1232, 1234 (TTAB 1990) ............................................... 22
`
`In re Furniture Mart Land Holdings I, LLC, Serial Nos. 77/323,885 and
`77/323,944, 2012 WL 4361420 at *3 (TTAB Sept. 12, 2012) ........................................ 14
`
`In re Grand Forest Holdings, Inc., 78 USPQ2d 1152 (TTAB 2006) .......................................... 13
`
`In re Hartmetall-Werkzeugfabrik Paul Horn GmbH, Serial No.
`76/554,519, 2006 WL 236399 (TTAB Jan. 26, 2006) .................................................... 18
`
`In re JMH Productions, Serial No. 76/608,812, 2006 WL 2558361 (TTAB
`August 25, 2006) ........................................................................................................... 12
`
`In re K-2 Corporation, Serial No. 78/364,151, 2006 WL 2645220 *4
`(TTAB Sept. 7, 2006) .............................................................................................. 15, 19
`
`In re Keith Roberts, Serial No. 76/670,534, 2009 WL 1068748 *2 (TTAB
`April 3, 2009) ................................................................................................................ 12
`
`In re Mehy Holdings, Serial No. 76/522,942, 2006 WL 3147913 *7
`(TTAB Oct. 20, 2006) ............................................................................................... 9, 13
`
`
`
`1
`
`

`
`In re Morton-Norwich Prod., Inc., 209 USPQ 791 (TTAB 1981) ........................................ 16, 21
`
`In re Owens-Corning Fiberglass Corp., 227 USPQ 417 (Fed. Cir. 1985) ...................... 22, 24, 26
`
`In re Remacle, 66 USPQ2d 1222 (TTAB 2002) ............................................................ 12, 13, 21
`
`In re Seats, Inc., 225 USPQ 364 (Fed. Cir. 1985) .................................................................. 9, 20
`
`In re Shutts, 217 USPQ 363 (TTAB 1983) ................................................................................ 18
`
`In re Southern Nat’l Bank of No. Carolina, 219 USPQ 1231 (TTAB 1983) ............................... 14
`
`In re Stroh Brewery Co., 34 USPQ.2d 1796 (TTAB 1995) ............................................ 11, 16, 21
`
`In re TCL GoVideo, Serial No. 78/395,320, 2006 WL 2558017 *4 (TTAB
`Aug. 2, 2006) ................................................................................................................ 16
`
`Lush Ltd. v. Luscious, LLC, Opposition Nos. 91158982 and 91169017,
`2012 WL 3525761 *3 (TTAB Aug. 1, 2012) ................................................................. 25
`
`Magic Wand, Inc. v. RDB, Inc ., 19 USPQ2d 1551 (Fed. Cir. 1991) ............................................. 7
`
`Roux Labs., Inc. v. Clairol Inc. 166 USPQ 34, 39 n.10 (CCPA 1970) ........................................ 24
`
`Teaching Co. Ltd. Partnership v. Unapix Entertainment, Inc., 87
`F.Supp.2d 567 (E.D.Va., 2000) ...................................................................................... 24
`
`Other Authorities
`
`TMEP §1212.02(c) ................................................................................................................... 14
`
`
`
`2
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`

`
`APPEAL BRIEF
`
`
`
` ActiveVideo Networks, Inc. (hereafter “ActiveVideo” or “Applicant”), submits this
`
`Appeal Brief in support of its appeal of the Examining Attorney’s Final Office Action relative to
`
`Application Serial No. 77967395, filed March 24, 2010, for the mark CLOUDTV.
`
`STATEMENT OF ISSUES
`
`I.
`
`II.
`
`III.
`
`Is the trademark CLOUDTV understood by the relevant public to be generic with respect
`
`to the goods and services claimed when the Examining Attorney failed to properly
`
`evaluate those goods and services and the relevant genus at issue?
`
`Is the trademark CLOUDTV understood by the relevant public to be primarily merely
`
`descriptive with respect to the goods and services claimed given that it is a unique, coined
`
`term that does not immediately describe the goods and services provided by Applicant?
`
`Is the CLOUDTV trademark distinctive in light of its extensive use and renown with
`
`relevant consumers?
`
`RECITATION OF FACTS
`
`ActiveVideo
`
`is a provider of software products and software-based services.
`
`ActiveVideo’s CLOUDTV product is a software platform that can be used by its customers,
`
`primarily cable and television providers such as Cablevision, Time Warner Cable, Comcast,
`
`CNN and HBO, to provide interactive television content to their subscribers and customers.
`
`ActiveVideo created the unique, coined term CLOUDTV as its brand in 2009. Since that time,
`
`ActiveVideo has spent over $3 million to promote and advertise its patented CLOUDTV
`
`software, and spent over $3.5 million to implement use of the trademark by its business partners.
`
`The CLOUDTV trademark is distinctive, including due to its continuous and exclusive use by
`
`ActiveVideo as a trademark in commerce. See First, Second and Third Villalpando Declarations
`
`(filed 5/12/11, 12/6/11, and 7/11/12).
`
`
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`3
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`CLOUDTV is an extremely well-known brand in the entertainment and television
`
`industry, and content provided via CLOUDTV software and services is viewed on over 10
`
`million screens across the United States and around the world. Third Villalpando Decl. at ¶ 3-6.
`
`For example, Comcast licensed the CLOUDTV software to provide a user interface for its
`
`“Xfinity On Demand” customers to search video-on-demand content, and ActiveVideo’s
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`partnership with Comcast has been prominently featured in media coverage. Third Villalpando
`
`Decl. at ¶ 7-8. ActiveVideo’s partnership with Funai Electric Co., the distributor of Philips
`
`televisions, has resulted in widespread advertising and promotion of the CLOUDTV trademarks,
`
`and as of June 1, 2012, over 175,000 consumers viewed the CLOUDTV mark through their
`
`television sets and/or Blu-ray players across the United States. Second Villalpando Decl. at ¶
`
`10-11; Third Villalpando Decl. at ¶ 12-13.
`
`ActiveVideo aggressively promotes its CLOUDTV mark. The CLOUDTV trademark
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`has been featured prominently at key industry tradeshows, including the high profile Consumer
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`Electronics Association tradeshow (which had over 120,000 attendees in 2011), as well as
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`tradeshows focused on the cable industry, such as the National Cable & Telecommunications
`
`Association (“NCTA”) tradeshow. First Villalpando Decl. at ¶ 7-8, Ex. 1; Second Villalpando
`
`Decl. at ¶ 12-13, Ex E, F; Third Villalpando Decl. at ¶ 14.
`
` ActiveVideo publicizes its CLOUDTV mark on its website and blog at itvt.com (which in
`
`2011 was receiving 150,000 views per month) and through established social media outlets, such
`
`as Twitter, YouTube, Facebook, and LinkedIn. First Villalpando Decl., at ¶ 9-10; Second
`
`Villalpando Decl. at ¶ 14-19. ActiveVideo and its CLOUDTV products are the subject of
`
`extensive media coverage. Office Action 11/15/10, Ex. 1-9; Second Villalpando Decl. at ¶ 20-
`
`
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`4
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`

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`21, Ex O, P. The CLOUDTV mark has been advertised on multiple third party websites.
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`Second Villapando Decl. at ¶ 8, Ex B; Third Villalpando Decl. at 10-11.
`
`After significant investment in and use of the CLOUDTV mark, on March 24, 2010,
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`ActiveVideo filed its application to register the CLOUDTV mark with the United States Patent
`
`and Trademark Office (USPTO). ActiveVideo seeks registration for use in connection with:
`
`[Class 9] Software for developing and publishing applications 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; Computer e-commerce software to allow users to
`perform electronic business transactions via a video-on-demand service. FIRST USE:
`20111220. FIRST USE IN COMMERCE: 20111220
`
`
`[Class 38] 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. FIRST USE: 20090428. FIRST USE IN COMMERCE: 20090428
`
`
`[Class 41] Provision of non-downloadable television and other audiovisual and
`multimedia content via a video-on-demand service via network-based media processing
`software. FIRST USE: 20090428. FIRST USE IN COMMERCE: 20090428
`
`
`[Class 42] 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. FIRST
`USE: 20090428. FIRST USE IN COMMERCE: 20090428
`
`
`
` After an initial refusal and response, on November 15, 2010, the USPTO Examining
`
`Attorney issued a final refusal on the grounds that the mark was allegedly merely descriptive.
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`On May 12, 2011, ActiveVideo filed this appeal, a request for reconsideration, and, in the
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`5
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`alternative, provided substantial evidence that the CLOUDTV mark is distinctive due to its
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`widespread use in the marketplace. The appeal was suspended, and after a further refusal and
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`response in which ActiveVideo provided even more evidence of widespread use and recognition
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`of the CLOUDTV mark, on January 11, 2012, the Examining Attorney continued the alleged
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`descriptiveness refusal and rejection of acquired distinctiveness and -- for the first time -- refused
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`registration on the grounds that the mark was allegedly generic. After ActiveVideo responded
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`on July 11, 2012, and provided yet more evidence of the highly distinctive character of its mark,
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`on August 6, 2012, the Examining Attorney issued a final refusal on the grounds of alleged
`
`genericness, descriptiveness and lack of acquired distinctiveness, and on August 22, 2012, the
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`appeal was resumed.
`
`ARGUMENT
`
`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 and failure to
`
`treat ActiveVideo’s mark as a unique, coined term. ActiveVideo’s CLOUDTV platform is a
`
`proprietary software platform that can be used by CLOUDTV customers, primarily cable and
`
`other television providers such as Cablevision, Time Warner Cable, Comcast, CNN and HBO, to
`
`provide interactive television content. Third Villalpando Decl. at ¶ 4-7.
`
`
`
`The combination of the terms “cloud” and “tv” in the CLOUDTV trademark is unique
`
`and highly incongruous in the context of ActiveVideo’s software, not the least because “cloud
`
`computing” is not typically associated with television services like those provided by
`
`ActiveVideo. Despite the inventive, coined nature of the CLOUDTV trademark, the Examining
`
`Attorney has persisted in incorrectly insisting that, because the terms “cloud” and “tv” have
`
`independent meanings, the relevant public would view CLOUDTV to be descriptive, and
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`ultimately generic, with respect to ActiveVideo’s highly specialized goods and services. The
`
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`6
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`

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`Examining Attorney has thus erroneously refused registration of ActiveVideo’s distinctive
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`CLOUDTV trademark and her decision must be reversed.
`
`I.
`
`
`
`THE CLOUDTV TRADEMARK IS NOT GENERIC AND SHOULD BE
`REGISTERED
`
`A. The Examining Attorney Incorrectly Identified the Relevant Genus of Goods
`and Services
`
`A term is generic only when it is primarily used or understood by the relevant public to
`
`refer to the genus of goods or services in question. In re Amer. Fertility Soc’ty, 51 USPQ2d
`
`1832, 1834-35 (Fed. Cir. 1999) (describing “two-step inquiry: First, what is the genus of the
`
`goods or services at issue? Second, is the term sought to be registered … understood by the
`
`relevant public primarily to refer to that genus of goods or services?”) (citing H. Marvin Ginn
`
`Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986)). Here, the USPTO
`
`has failed to show that CLOUDTV is generic, and has certainly not met its burden of showing
`
`that the term is generic by clear and convincing evidence. In re Amer. Fertility Soc’ty, 51
`
`USPQ2d at 1834 (“It is beyond dispute that ‘the burden of showing that a proposed trademark …
`
`is generic remains with the Patent and Trademark Office.”).
`
`The Examining Attorney has failed to correctly define the genus of goods and services.
`
`In this case, summarizing the descriptions contained in ActiveVideo’s application and the
`
`evidence of record, the relevant genus of goods and services is software used by cable providers
`
`and other television content providers to deliver interactive television content, providing that
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`software as a service, including using the software for broadcasting and providing connectivity
`
`for viewing content via a television video-on-demand service. Third Villalpando Decl. at ¶ 4-7;
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`Magic Wand, Inc. v. RDB, Inc ., 19 USPQ2d 1551, 1551 (Fed. Cir. 1991) (“a proper genericness
`
`inquiry focuses on the description” of goods and services in the application).
`
`
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`7
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`

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`The Examining Attorney incorrectly identified the genus of goods and services to be
`
`“television cloud computing … which is in essence providing cloud computing and computer
`
`software for providing cloud computing capability on a television platform.” There are several
`
`things wrong with this analysis. First, none of the evidence submitted by the Examining
`
`Attorney defines “television cloud computing.” Second, “television cloud computing” is not a
`
`known term in the relevant industry. It is entirely unclear what is meant by “providing cloud
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`computing and computer software for providing cloud computing capability on a television
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`platform.”
`
`While the definitions cited by the Examining Attorney for “cloud” and “cloud
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`computing” vary, they generally define “cloud” as “the unpredictable part of a network that data
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`travels through on its way to its final destination” and “cloud computing” as “services that
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`provide common business applications online, which are accessed from a Web browser, while
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`the software and data are stored on the servers,” or the like. Office Action 6/24/10, Ex 21-23,
`
`26; Office Action 11/15/10, Ex 35-40, 43, 49-68; Office Action 6/6/11, Ex 1-2; Office Action
`
`8/6/12, Ex 21-23. These definitions relate to computing and computer networks. Even accepting
`
`these definitions, ActiveVideo’s CLOUDTV products are not “television cloud computing” as
`
`defined by the Examining Attorney.
`
`B. CLOUDTV is Not Used by the Relevant Public to Refer to the Genus of Goods in
`Question and Thus is Not Generic as Applied to ActiveVideo’s Products
`
`The term CLOUDTV has no established meaning in the context of ActiveVideo’s goods
`
`and services. Indeed, no dictionary listings for “cloudtv” or “cloud tv” have been submitted by
`
`the Examining Attorney. Nor did ActiveVideo locate any such dictionary listings in Webster’s,
`
`The American Heritage Dictionary, or other relevant dictionaries. Response to Office Action
`
`7/11/12, at p. 8-11. There is no evidence that the term “CloudTV” or “Cloud TV” is commonly
`
`
`
`
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`8
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`

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`used in the industry as the generic name for the goods and services provided by ActiveVideo.
`
`Concurrent Technologies, Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057
`
`(TTAB 1989) (“‘concurrent technologies’ has no established meaning” in the context of
`
`applicant’s goods); In re Seats, Inc., 225 USPQ 364, 365-68 (Fed. Cir. 1985) (“Seats is not
`
`selling seats, as would for example a furniture merchant, but it is selling a reservation service”
`
`and therefore term not generic and decision of Board must be reversed).
`
`Nor is there any evidence that the phrase “Cloud TV Software” is used a generic term for
`
`a software platform that can be used by cable and other television providers to deliver interactive
`
`television content to subscribers or for broadcasting of television programs and providing
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`telecommunication services for transferring images, etc., via a video-on-demand service via
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`network-based media processing software. The terms “cloud” and “cloud computing” have
`
`meaning in relation to computing, but these terms are incongruous in connection with the
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`television services provided by cable companies and the like. In re Amer. Fertility Soc’ty, 51
`
`USPQ2d at 1835-36 (reversing Board because “the Board erred in finding that the proven
`
`genericness of the words “society” and “reproductive medicine,” without more, rendered generic
`
`the phrase SOCIETY FOR REPRODUCTIVE MEDICINE”); In re Mehy Holdings, Serial No.
`
`76/522,942, 2006 WL 3147913 *7 (TTAB Oct. 20, 2006) (evidence does not support conclusion
`
`that mark is “a generic adjective”). Instead, the evidence shows that CLOUDTV is a unique
`
`term coined by ActiveVideo and used as a trademark for its products. Third Villalpando Decl. at
`
`¶ 4-7; Office Action 11/15/10, Ex 1-33; Office Action 6/6/11, Ex 90-95, 110-114.
`
`Much of the material submitted by the Examining Attorney consists of news articles that
`
`happen to have the words “cloud” and “tv” in proximity to each other, but otherwise are
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`completely random and have absolutely no connection to the phrase CLOUDTV or the goods
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`
`
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`9
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`

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`and services at issue here. For example, of the 100 news articles submitted by the Examining
`
`Attorney as part of the 1/11/12 Office Action, 87 are completely irrelevant and appear to be
`
`included because they happen to reference the words “cloud” and “tv” in sequence. Over 25 of
`
`the articles are from a Florida newspaper which references the city of St. Cloud and also happens
`
`to reference television. Many references relate to ActiveVideo’s own trademark use. E.g., Office
`
`Action 6/6/11, Ex. 19-40.
`
`The Examining Attorney cited references which refer to “cloud computing” generally.
`
`Office Action 6/24/10, Ex 15-17; Office Action 6/6/11, Ex 17-18, 41-42, 120-124. Other
`
`references refer to “the cloud” generally. Office Action 6/6/11, Ex 3-5, 45-48, 85-89, 107-109,
`
`127. Numerous cited references make absolutely no use of the term cloudTV or cloud TV.
`
`Office Action 6/6/11, Ex. 3-5, 6-14; Office Action 1/11/12, Ex. 15-18. None of these references
`
`demonstrate that CLOUDTV is used by the relevant public as a generic term for ActiveVideo’s
`
`goods and services.
`
`The Examining Attorney also cited to a few examples of infringing trademark uses of the
`
`CLOUDTV mark, many of which ActiveVideo has sought to police. E.g., Office Action 6/6/11,
`
`Ex 69-70; Office Action 1/11/12, Ex 1-2, 9-14, 31-34. For example, the Examining Attorney
`
`made reference to “Cloud TV” by 9 x 9 Networks, which apparently offers services to
`
`individuals to allow them to watch internet videos selected and organized by 9 x 9 “curators.”
`
`Office Action, 6/24/10, Ex. 18-20. This is not an example of a generic use of the term Cloud TV
`
`for software used to provide interactive television, but instead is infringing trademark use. Other
`
`examples of third party use of “Cloud TV” are similarly infringing use, which ActiveVideo has
`
`
`
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`10
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`

`
`sought to police, such as the use of the term “Digital Cloud TV.” Office Action 6/6/11, Ex 100-
`
`103.1
`
`The few other uses of “Cloud TV” cited by the Examining Attorney appear to be for
`
`goods and services that are different from those offered by ActiveVideo, although the limited
`
`evidence of record makes it difficult to assess these references. For example, the Examining
`
`Attorney cites references relating to television hardware. Office Action 6/6/11, Ex 71-72; Ex.
`
`78-80 (PlayStation Network); Ex. 3-5, 107-109, 118-119 (Google TV), Ex. 115-116 (hospitality
`
`TV); Office Action 1/11/12, Ex 9-11. Other examples relate to the use of the term “Cloud TV”
`
`used in connection with accessing videos over the Internet and streaming video over an Internet
`
`Protocol connection, or other goods or services. E.g., Office Action 6/6/11, 81-84, 125-126
`
`(IPTV), 117 (Amazon); Office Action 1/11/12, Ex 5, 22-24 (Google TV and Apple TV). These
`
`limited examples of use of the term “Cloud TV” in relation to different goods and services does
`
`not make ActiveVideo’s CLOUDTV mark generic for its products. Cf. In re Stroh Brewery Co.,
`
`34 USPQ2d 1796, 1797 (TTAB 1995) (VIRGIN not merely descriptive as applied to non-
`
`alcoholic malt beverages, even if descriptive of other types of mixed drinks, i.e., cocktails).
`
`For example, the Examining Attorney cites an article entitled “Cloud TV may replace
`
`Local TV altogether,” but this article relates to computers, not software used for providing
`
`interactive television services. It states “now all you require is a browser and an internet
`
`connection to get applications, games and TV on your computer.” Moreover, as used in the
`
`article, “cloud TV” is distinct from cable television services: “No subscription fees need to be
`
`paid to cable operators and channel owners. There are no hardware requirements.” Office
`
`Action, 6/6/11, Ex 43-44. Thus, the term “Cloud TV’ is used to describe television programs
`
`
`1 When ActiveVideo sent a cease and desist letter to the owner of the website at
`“digitalcloudtv.com,” the owner agreed to change the term to “Digital Cloud Portal.”
`
`
`
`
`
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`11
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`

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`provided over the Internet to computers. This is different from the products and services offered
`
`by ActiveVideo, which are used to allow television subscribers to interact with a television
`
`service using a remote control, particularly via a video-on-demand service. Third Villalpando
`
`Decl. at ¶ 4-7; Office Action 6/24/10, Ex 5-7 (Wikipedia entry describing “ActiveVideo’s
`
`CloudTV™ platform” which allows users to deliver television and Web-based content as a single
`
`MPEG stream).
`
`A few additional uses of “Cloud TV” cited by the Examining Attorney appear to be in
`
`relation to products or services outside the United States. Office Action 1/11/12, Ex 3-4, 25-27.
`
`Other citations by the Examining Attorney simply do not provide sufficient information to
`
`evaluate their relevance. E.g., Office Action 11/15/10, Ex 34; Office Action 6/6/11, Ex 15-16,
`
`57-59, 66-68, 73-77, 96-99, 104; Office Action 1/11/12, Ex 6-8, 19-21, 28-30. In re Keith
`
`Roberts, Serial No. 76/670,534, 2009 WL 1068748 *2 (TTAB April 3, 2009) (citing In re
`
`Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002)) (“The examining attorney’s print-out of the
`
`results of an Internet search by the Yahoo search engine are of little probative value, largely
`
`because insufficient text is available to determine the nature of the information and, thus, its
`
`relevance.”).
`
`The USPTO has permitted numerous similar marks for computer software and related
`
`services to be registered, including quite recently. See Response to Office Action 7/11/12, p. 14-
`
`15. ActiveVideo’s mark is no more generic or descriptive than these third party registrations,
`
`which are persuasive evidence that ActiveVideo’s mark should also be allowed to register. In re
`
`JMH Productions, Serial No. 76/608,812, 2006 WL 2558361 (TTAB August 25, 2006) (citing a
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`“plethora” of third party registrations which “serve at the very least to raise some doubt that the
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`relevant consuming public would regard [applicant’s mark] in its entirety as immediately
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`conveying the subject matter of its goods and services”).
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`Without evidence that “CloudTV” is used by the relevant public to describe the genus of
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`ActiveVideo’s goods and services, the Examining Attorney has failed to meet the heavy burden
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`of clear and convincing evidence that CLOUDTV is generic. Rather, as the evidence of record
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`shows, CLOUDTV is recognized in the relevant industry as ActiveVideo’s unique brand.
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`C. Any Doubts Must Be Resolved In ActiveVideo’s Favor
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`The Board must resolve any doubts in ActiveVideo’s favor and reverse the Examining
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`Attorney’s refusal to register the mark on the ground that it is generic. In re Grand Forest
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`Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006) (“we resolve our doubts in applicant’s
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`favor.”); In re Mehy Holdings, Serial No. 76/522,942, 2006 WL 3147913 at *7 (“the Office bears
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`the burden of proof and genericness must be shown by clear evidence … we cannot say the
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`Office has met its burden.”).
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`II.
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`THE CLOUDTV TRADEMARK IS NOT PRIMARILY MERELY DESCRIPTIVE
`AND SHOULD BE REGISTERED
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`A. The CLOUDTV Trademark Is Not Merely Descriptive As It Does Not
`Immediately Convey Knowledge About The CLOUDTV Goods and Services
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`ActiveVideo’s CLOUDTV mark is, for similar reasons, not primarily merely descriptive
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`of its computer software and software-based services. The burden of showing that a mark is
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`merely descriptive is on the USPTO, and the USPTO has failed to meet that burden here. In re
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`Remacle, 66 USPQ2d at 1224. A mark is “merely descriptive” only if it immediately conveys
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`knowledge of an ingredient, quality, characteristic, purpose, function or use of the goods to
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`which it is applied. In contrast, “a mark is suggestive if imagination, thought or perception is
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`required to reach a conclusion on the nature of the goods or services.” In re Southern Nat’l Bank
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`of No. Carolina, 219 USPQ 1231, 1231-32 (TTAB 1983) (MONEY 24 not merely descriptive
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`for “banking services, namely, automatic teller machines”).
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`The assessment regarding mere descriptiveness “must be determined, not in the abstract,
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`but rather in relation to the goods for which registration is sought, the context in which the mark
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`is used in connection with those goods, and the possible significance which the mark would
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`have, because of the context in which it is used, to the average purchaser of the goods in the
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`marketplace.” Concurrent Technologies, Inc. v. Concurrent Technologies Corp., 12 USPQ2d
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`1054, 1057 (TTAB 1989). The mark must be viewed as a whole. Id. Even if “cloud” and “tv”
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`have independent meaning, it does not follow that the mark in its entirety, that is CLOUDTV, is
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`merely descriptive. Id. (Although “concurrent” standing alone has meaning in computer field;
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`no evidence that term “concurrent technologies” has meaning in the trade).2
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`In this case, CLOUDTV is at most suggestive, because consumers must dissect
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`ActiveVideo’s mark to gain any “understanding” to what the mark might refer. Many
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`consumers, including the vast majority of the ultimate end-users of ActiveVideo’s services (such
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`as users viewing the CLOUDTV on a Philips web-based tv), would not have any inkling that
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`“cloud” has any relevance to the computer field or any belief that the term has any relation to
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`ActiveVideo’s proprietary software platform. The most common meaning of the term “cloud” is
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`in the context of weather, e.g., an “aggregation of minute particles of water or ice suspended in
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`2 The Examining Attorney incorrectly assessed the descriptiveness issue when she concluded that
`“applicant’s claim of acquired distinctiveness is in effect a concession that the mark sought to be
`registered is merely descriptive.” This is an incorrect statement. ActiveVideo makes its
`arguments regarding acquired distinctiveness in the alternative, and explicitly does not concede
`that its mark is merely descriptive, as demonstrated above. This basis for the Examining
`Attorney’s refusal must be rejected. “Claiming distinctiveness in the alternative is not an
`admission that the proposed mark is not inherently distinctive.” TMEP §1212.02(c); see also In
`re Furniture Mart Land Holdings I, LLC, Serial Nos. 77/323,885 and 77/323,944, 2012 WL
`4361420 at *3 (TTAB Sept. 12, 2012).
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`the air.” Office Action 6/24/10, Ex 24-27; Office Action 11/15/10, Ex 41-46. This connotation
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`is reinforced by ActiveVideo’s marketing and advertising which uses images of blue skies and
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`puffy white clouds. Second Villalpando Decl., Ex. F.
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`The Examining Attorney’s initial reaction to the CLOUDTV mark reinforces this
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`conclusion, as she noted that “the evidence shows that ‘CLOUDTV refers to television services
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`and content that features clouds.” Office Action 6/24/10, p. 2. As the Examining Attorney’s
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`initial reaction and evidence shows, “cloud” is capable of many different meanings, and the most
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`common meaning to the average consumer would be its meaning in the context of weather
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`patterns. Office Action 6/24/10, Ex 10-14, 24-28; Office Action 11/15/10, Ex 41-48; Office
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`Action 6/6/11, Ex 53-56. Thus, the term CLOUDTV cannot be considered “merely descriptive”
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`with respect to ActiveVideo’s goods and services. See, e.g., In re K-2 Corporation, Serial No.
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`78/364,151, 2006 WL 2645220 *4 (TTAB Sept. 7, 2006) (finding term “cinch” has multiple
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`connotations; applicant rebuts Examining Attorney’s argument that mark is merely descriptive).
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`B. The CLOUDTV Trademark Is Not Merely Descriptive As “Cloud” and “Cloud
`Computing” Are Incongruous When Used In the Television Industry Context
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`Even the highly sophisticated television and entertainment media professionals who
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`purchase ActiveVideo’s CLOUDTV goods and services would not consider the term merely
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`descriptive. Cloud computing is incongruous with traditional television services. A cable
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`company would use the CLOUDTV software platform to develop and run applications which
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`would allow the cable company’s television subscribers to enjoy an interactive television
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`experience. Subscribers would be able to control interactive co