from: black, mildred sent: 6/22/2020 1:36:32 pm to: ttab
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From: Black, Mildred
Sent: 6/22/2020 1:36:32 PM
To: TTAB EFiling
CC:
Subject: U.S. Trademark Application Serial No. 88342553 - PERSONALIZED SPATIAL AUDIO - EBVR009US - EXAMINER BRIEF
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Attachment Information:
Count: 11
Files: Audio-1.jpg, Audio-2.jpg, Audio-3.jpg, personaliz-1.jpg, personaliz-2.jpg, personaliz-3.jpg, personaliz-4.jpg, spatial-1.jpg, spatial-2.jpg, spatial-3.jpg, 88342553.doc
United States Patent and Trademark Office (USPTO)
U.S. Application Serial No. 88342553
Mark: PERSONALIZED SPATIAL AUDIO
Correspondence Address: DAN NOONAN
PIRKEY BARBER PLLC
1801 EAST 6TH STREET SUITE 300
AUSTIN, TX 78702
Applicant: EmbodyVR Inc.
Reference/Docket No. EBVR009US
Correspondence Email Address:
EXAMINING ATTORNEY’S APPEAL BRIEF
INTRODUCTION
Applicant has appealed the final refusal based on the descriptiveness of the applied-for mark,
PERSONALIZED SPATIAL AUDIO, in standard characters. The examining attorney respectfully requests
that the final refusal be affirmed.
STATEMENT OF THE FACTS
The applicant filed the instant application on March 15, 2019. On June 3, 2019, the examining
attorney refused registration based on the descriptiveness of the mark pursuant to Section 2(e)(1) of the
Trademark Act. 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. The examining attorney
also required applicant to amend the identification of the goods.
The applicant filed a response to the refusal and requirement on August 8, 2019 resolving the
amendment to the identification of goods requirement. However, the examining attorney issued a final
refusal on September 4, 2019 refusing registration on the basis that the applied-for mark is merely
descriptive.
On March 2, 2020, applicant filed an appeal with the Trademark Trial and Appeal Board.
ISSUE ON APPEAL
The sole issue on appeal is whether the applied-for mark, PERSONALIZED SPATIAL AUDIO, in
standard characters, is descriptive of the following goods in International Class 009: Downloadable
software enabling users to identify the true direction of a sound source; Downloadable software to
enhance spatial awareness through sound; Downloadable software to enhance virtual experiences
through sound; Downloadable software used to spatialize one or multiple sound sources; Downloadable
software to create experiences through placement of sound sources in different directions;
Downloadable software used to create and personalize sound; Downloadable software used to
spatialize sound.
ARGUMENTS
I. LEGAL STANDARD
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d
872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171,
1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d
1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543
(1920)).
II. THE APPLIED-FOR MARK, PERSONALIZED SPATIAL AUDIO, IS MERELY DESCRIPTIVE OF APPLICANT’S GOODS
The applied-for mark is PERSONALIZED SPATIAL AUDIO in standard characters for
“Downloadable software enabling users to identify the true direction of a sound source; Downloadable
software to enhance spatial awareness through sound; Downloadable software to enhance virtual
experiences through sound; Downloadable software used to spatialize one or multiple sound sources;
Downloadable software to create experiences through placement of sound sources in different
directions; Downloadable software used to create and personalize sound; Downloadable software used
to spatialize sound” in International Class 009.
In the present case, the applied-for mark, PERSONALIZED SPATIAL AUDIO, describes a function
or purpose of the identified software. Terms that describe the function or purpose of a product or
service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474,
1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222
USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game
equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely
descriptive of jams and jellies). Specifically, applicant provides software for enabling users to
personalize and spatialize audio. Therefore, the relevant consumers will immediately recognize that the
applied-for mark merely describes the function or purpose of applicant’s goods, namely, software for
personalizing and spatializing audio to the individual users.
Generally, if the individual components of a mark retain their descriptive meaning in relation to
the goods, the combination results in a composite mark that is itself descriptive and not registrable. In
re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64
USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v.
Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION
TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion
technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES
merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006)
(holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique,
incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark
registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re
Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of
applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the
goods. Specifically, the relevant consumers will immediately recognize that the applied-for mark,
PERSONALIZED SPATIAL AUDIO, is merely descriptive of the function or purpose of applicant’s goods,
namely, software for spatializing audio and providing personalized audio.
A. Applicant’s Descriptive Use of The Wording in PERSONALIZED SPATIAL AUDIO
The wording in the applied-for mark is used to describe applicant’s software in the identification
of the goods. Applicant’s identification of goods states that the software is used to “spatialize sound,”
“enhance spatial awareness through sound,” enhance and create “virtual experiences through sound,”
and “to create and personalize sound.” (Emphasis added by examiner.) Therefore, the term
PERSONALIZED SPATIAL AUDIO merely describes the purpose or function of the software.
Applicant’s website further demonstrates the descriptive nature of the mark by making
numerous references to the wording in the mark. For example, applicant’s website encourages users to
“[c]heck out exclusive games on PC and VR with personalized spatial audio created with our Google
Resonance SDK,” by describing the goods as a “visual sound experience personalized from your motion
to your ears,” and by stating that “[w]ith audio personalized for your ears, you’ll reveal the true details
from your recordings and expand your story into new dimensions.” Furthermore, “[b]y taking VR and
the live visual experience to the next level, the player creates ‘In’ immersion, by feeling surrounded by
the audio landscape, bridging live, intuitive visuals and 3D spatialization audio.” See, June 3, 2019
Office Action, TSDR pages 12–13; emphasis added by examiner. As applicant’s website and identification
of goods show, applicant’s own descriptive usage of the applied-for mark underscores the primarily
merely descriptive significance of this term in relation to the goods at issue.
Applicant contends that the wording in PERSONALIZED SPATIAL AUDIO on applicant’s website is
being used in a trademark sense. However, as shown above, applicant’s website shows the wording in
the applied-for mark embedded within the text of the website to describe the function or purpose of
applicant’s software. Therefore, consumers would immediately recognize the applied-for mark as
describing applicant’s good.
B. Evidence of Record Shows Descriptive Use of PERSONALIZED SPATIAL AUDIO
The trademark examining attorney requests that the Trademark Trial and Appeal Board take
judicial notice of the attached evidence from MacMillan Dictionary and Merriam-Webster Dictionary.
TBMP §1208.04; see also Fed. R. Evid. 201; 37 C.F.R. §2.122(a). The Trademark Trial and Appeal Board
may take judicial notice of dictionary definitions that (1) are available in a printed format, (2) are the
electronic equivalent of a print reference work, or (3) have regular fixed editions. See In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1747 n.15 (TTAB 2018) (taking judicial notice of definition from
Dictionary.com because it was from The Random House Unabridged Dictionary), aff’d per curiam, 777 F.
App’x 516, 2019 BL 343921 (Fed. Cir. 2019); In re Jimmy Moore LLC, 119 USPQ2d 1764, 1768 (TTAB 2016)
(taking judicial notice of definitions from Merriam-Webster Online Dictionary at www.merriam-
webster.com); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (taking judicial notice of
definition from Encarta Dictionary because it was readily available in specifically denoted editions via
the Internet and CD-ROM); TBMP §1208.04; TMEP §710.01(c); see also Fed. R. Evid. 201; 37 C.F.R.
§2.122(a).
The term PERSONALIZED is defined as “made or changed in order to be especially appropriate
for a particular person,” (see attached dictionary evidence at
https://www.macmillandictionary.com/us/dictionary/american/personalized) and PERSONALIZE is
defined as to “design or produce (something) to meet someone's individual requirements” (see, June 3,
2019 Office Action, TSDR page 6). The term PERSONALIZED describes a feature of the goods, namely,
software for customizing the audio experience to the individual, thus personalizing it. This wording is
also shown in the language of applicant’s identification stating that the software is for creating and
personalizing sound, and it enables users to spatialize audio, therefore making it personalized to the
particular user.
The term SPATIAL is defined as “relating to the size, shape, and position of things, and the
relation of objects to each other in space.” See, attached dictionary definition at
https://www.macmillandictionary.com/us/dictionary/american/spatial. Applicant’s goods include
software for enabling users to identify the true direction of a sound source, or to enhance spatial
awareness through audio and to spatialize audio. Therefore, the term SPATIAL merely describes the
purpose of application’s audio spatializing software.
Furthermore, AUDIO is defined as “relating to sound that is recorded or broadcast.” See,
attached dictionary definition at https://www.macmillandictionary.com/dictionary/british/audio_1.
Therefore, this wording is encompassed by the identification to describe the purpose of applicant’s
software in the field of “sound,” or “audio.” By combining these descriptive terms, PERSONALIZED
SPATIAL AUDIO merely describes the function or purpose of applicant’s software.
The evidence of record shows that PERSONALIZED SPATIAL AUDIO is commonly used to describe
spatializing sound and personalizing it to the specific user.
The evidence includes the following attached screenshots:
• National Science Foundation website featuring an abstract titled “Personalized Spatial Audio via Scientific Computing and Computer Vision.” This abstract discusses how humans spatialize audio. See, September 4, 2019 Office Action, TSDR pages 7–10; emphasis added by examiner.
• ResearchGate Conference Paper, “Sonification of 3D Scenes Using Personalized Spatial Audio to Aid Visually Impaired Persons.” This research states that the “sonar-like algorithm utilizes segmented 3D scene images, personalized spatial audio and musical sound patterns.” See, September 4, 2019 Office Action, TSDR pages 11–12; emphasis added by examiner.
• ResearchGate, “Naviton—A Prototype Mobility Aid for Auditory Presentation of Three-Dimensional Scenes to the Visually Impaired.” This paper discusses technologies similar to applicant’s by stating “[t]he proposed sonification algorithm utilizes reduction of information through scene image segmentation, personalized spatial audio via head-related transfer functions (HRTFs)….” See, September 4, 2019 Office Action, TSDR pages 13–32; emphasis added by examiner.
• Website for CAMERA Centre for the Analysis of Motion, Entertainment Research and Applications article titled, “Personalized Spatial Audio Content for VR Applications” discussing uses of personalized spatial audio in virtual reality settings similar to applicant’s, and how to simulate sounds for the individual user in these contexts. See, September 4, 2019 Office Action, TSDR pages 33–35; emphasis added by examiner.
• Article from WR Scout titled, “Is Sound the Secret Sauce for Making Immersive Experiences?” The article describes a user’s experience with personalized spatial audio technology. See, September 4, 2019 Office Action, TSDR pages 36–44.
• Article in Hindai titled, “Current Use and Future Perspectives of Spatial Audio Technologies in Electronic Travel Aids.” This article describes applications of spatialized audio similar to applicant’s. See, September 4, 2019 Office Action, TSDR pages 45–71; emphasis added by examiner.
This evidence shows that the wording in the applied-for mark is commonly used in the relevant
industry to describe the purpose or function of applicant’s software.
Applicant argues that the evidence of record does not show use of the mark in connection with
the identified goods. The fact that an applicant may be the first or only user of a merely descriptive
designation does not necessarily render a word or term incongruous or distinctive; as in this case, the
evidence shows that PERSONALIZED SPATIAL AUDIO is merely descriptive. See In re Fat Boys Water
Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826
(TTAB 2012); TMEP §1209.03(c). Even if applicant is the first user of the term PERSONALIZED SPATIAL
AUDIO used in connection with software for personalizing and spatializing audio for the user, the
evidence of record nonetheless shows that the wording in the mark is commonly used in the relevant
industry to describe the purpose or function of applicant’s software.
Applicant claims that the evidence of record dated September 4, 2019 is highly technical and
aimed at a sophisticated audience. Applicant also describes its goods as complex, cutting-edge, high-
tech software for use in a wide variety of fields. Although the evidence might be complex, it is in the
same field as applicant’s software, and therefore applicant’s consumers who are interested in
applicant’s high-tech sound-related software may also be familiar with the evidence of record that is
directly related to the function of applicant’s software.
Applicant has referenced additional dictionary definitions for the words in the mark that are not
relevant to the context of the identified goods to argue that consumers would be unable to immediately
recognize the descriptive nature of the mark. However, descriptiveness is considered in relation to the
relevant goods. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not
controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as
any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”
In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222
USPQ 258, 259 (TTAB 1984)). Additionally, despite applicant’s claims that consumers would view the
term PERSONALIZED SPATIAL AUDIO to mean something other than software personalized to the user to
spatialize audio, applicant has not provided any alternative meanings or commercial impressions of the
term. The context of applicant’s goods would prevent consumers from associating applicant’s mark with
other meanings of the wording merely because the individual terms may possess additional meanings.
C. The Applied-For Mark is Merely Descriptive Rather Than Suggestive
Within the context of the identified goods, the applied-for mark, PERSONALIZED SPATIAL
AUDIO, does not require imagination, thought, or perception to understand the nature of applicant’s
software for personalizing and spatializing audio for the user. A mark is suggestive if some imagination,
thought, or perception is needed to understand the nature of the goods described in the mark; whereas
a descriptive term immediately and directly conveys some information about the goods. See Stoncor
Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755
(Fed. Cir. 2012)); TMEP §1209.01(a). The mark directly and specifically informs consumers of the
purpose or function of the goods.
Applicant argues that the applied-for mark is suggestive because the wording in the mark does
not sufficiently describe the purpose or function of the goods with any degree of particularity because
the goods are more complex than the wording in the applied-for mark describes. Therefore, applicant
argues, consumers will not understand PERSONALIZED SPATIAL AUDIO to be descriptive of software for
personalizing and spatializing audio for the user. However, “[a] mark may be merely descriptive even if
it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl &
Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is
enough if a mark describes only one significant function, attribute, or property. In re The Chamber of
Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b);
see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. In the present case, the mark
describes a significant function of the goods as stated in applicant’s identification of goods.
Furthermore, determining the descriptiveness of a mark is done in relation to an applicant’s
goods, the context in which the mark is being used, and the possible significance the mark would have
to the average purchaser because of the manner of its use or intended use. See In re The Chamber of
Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at
963-64, 82 USPQ2d at 1831. In other words, consumers who know that applicant provides software for
personalizing and spatializing audio will understand PERSONALIZED SPATIAL AUDIO to be merely
descriptive of a function or purpose of applicant’s software. Therefore, the mark is merely descriptive of
the identified goods.
Applicant has previously provided copies of third-party registrations using just one of the words
from the applied-for mark, rather than the mark in its entirety, for use in connection with different
goods and services. See, August 8, 2019 Response to office action, TSDR pages 18–48. The fact that
third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the
issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP
§1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because
other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at
519; TMEP §1209.03(a).
It is well settled that each case must be decided on its own facts and the Trademark Trial and
Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc.,
236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330,
1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is
determined based on the evidence of record at the time each registration is sought. In re theDot
Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett Designs,
Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.
Furthermore, applicant’s previously attached registrations are not similar to the mark at issue
because they contain additional wording not found in the applied-for mark, are unitary, omit wording
from the applied-for mark, and/or are for different goods and services (for example, Reg. No. 3860887
for SPACIAL for cabinets, Reg. No. 2518149 for SPATIAL MSAG for databases with geographic
information for emergency service personnel, and Reg. No. 4551870 for YOUR PARTNER IN
PERSONALIZED CARE for software for use in chronic condition management). Additionally, Reg. No.
1921737 was cancelled on September 29, 2017. Cancelled or expired third-party registrations have no
probative value other than as evidence that the registrations were issued. See Action Temp. Servs. Inc.
v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989); In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir.
2019); TBMP §704.03(b)(1)(A). These prior registrations do not negate the descriptive nature of the
applied-for mark.
D. Evidence of Record Leaves No Doubt That The Mark is Merely Descriptive
Applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on
applicant’s behalf. E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d
1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).
However, in the present case, the evidence of record leaves no doubt that the mark is merely
descriptive.
Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a
descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly
infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d
811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free
to use descriptive language when describing their own goods to the public in advertising and marketing
materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
CONCLUSION
The applied-for mark, PERSONALIZED SPATIAL AUDIO, is merely descriptive of applicant’s
identified goods. The mark will immediately convey to consumers the purpose or function of applicant’s
software, namely, software for personalizing and spatializing audio for the user. Furthermore, the
evidence of record consisting of website articles, dictionary definitions, and applicant’s website,
demonstrates the descriptive use of the wording within the marketplace. The relevant consumer
encountering the applied-for mark used in connection with the identified services will immediately be
informed of the purpose or function of the goods due to the descriptive nature of the applied-for mark.
For the foregoing reasons, it is respectfully submitted that the refusal of registration under Section
2(e)(1), 15 U.S.C. Section 1052(e)(1) of the Trademark Act be affirmed.
Respectfully submitted,
Black, Mildred
/Mildred Black/
Trademark Examining Attorney
Law Office 130
571.270.1217
John Lincoski
Managing Attorney
Law Office 130
571-272-9436
