Acquisition Solutions, Inc.

Trademark Trial and Appeal Board

Jan 28, 2005

No. 76313476 (T.T.A.B. Jan. 28, 2005)

Hearing:
December 7, 2004
Mailed: 1/28/2005
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Acquisition Solutions, Inc.
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Serial No. 76313476
_______
Ralph M. Tener of McCandlish & Lillard for applicant.
Theodore McBride, Trademark Examining Attorney, Law Office
103 (Dan Vavonese, Managing Attorney).
_______
Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Acquisition Solutions,
Inc. to register the mark ACQUISITION SOLUTIONS TRAINING
INSTITUTE (“ACQUISITION” and “TRAINING INSTITUTE”
disclaimed) for “training services, namely, conducting
courses, seminars, conferences, workshops, materials, and
multi-media presentations, in the fields of government
contracting, market research, strategic sourcing and source
selection, mission and strategic planning, requirements
definition, asset management, supply chain management,
program management, contract performance management,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76313476
2
acquisition knowledge management, procurement, and related
laws, regulations, policies, and practices.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its identified services.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs.2 An oral hearing was held before this panel of the
Board.
Applicant argues that the term “SOLUTIONS” in its mark
is very broad and general, and fails to specifically
identify anything listed in the recitation of its training
services. Pointing to the meaning of the term “solutions,”
applicant asserts that although it sells training services
that are in many cases expected to lead to answers or
dispositions of problems, applicant does not sell
1 Application Serial No. 76313476, filed September 17, 2001,
based on a date of first use anywhere and a date of first use in
commerce of January 22, 2001.
2 Applicant has made references to and relied upon prior Board
opinions marked, as is the present opinion, “This disposition is
not citable as precedent of the TTAB.” Decisions that are so
designated are not citable authority and will not be considered
by the Board. Applicant should refrain in the future from
citation to unpublished Board opinions. See In re A La Vielle
Russie Inc., 60 USPQ2d 1895, 1897 n. 2 (TTAB 2001); and In re
Polo International Inc., 51 USPQ2d 1061, 1063 n. 3 (TTAB 1999).
See generally TBMP §§101.03 and 1203.02(f) (2d ed. rev. 2004).
Ser No. 76313476
3
“solutions,” that is, methods, processes, answers or
dispositions. Applicant also contends, contrary to the
examining attorney’s view, that it is not a “solutions
provider,” and that this term of art describes a
specialized type of services in the information technology
field different from applicant’s services. The fact that
the component “SOLUTIONS” in the mark suggests that
applicant’s training services may solve a customer’s
problem does not make the term merely descriptive; instead,
applicant argues that it uses the term figuratively and
suggestively to evoke the intended results of utilizing its
training services. Applicant points to the existence of
several third-party registrations of “SOLUTIONS”-type marks
in the training services field wherein there is no
disclaimer of the term. Applicant also points to the
issuance of its registration (No. 2692380 on March 4, 2003)
of the mark ACQUISITION SOLUTIONS for a variety of printed
materials (e.g. newsletters, guides, research reports,
updates and training materials) in various fields
(government contracting, etc.--these fields are identical
as set forth in the registration and this application),
noting that the registration issued on the Principal
Register with a disclaimer of “ACQUISITION” but no
disclaimer of “SOLUTIONS.” In support of its position,
Ser No. 76313476
4
applicant submitted a dictionary definition of the term
“solutions,” and copies of third-party registrations.3
The examining attorney maintains that applicant is in
an industry that makes use of the term “solutions” to
describe a feature of the type of services offered by
applicant. The examining attorney points to applicant’s
website wherein applicant describes itself as a small
business “dedicated to providing experienced, solutions-
oriented acquisition support to federal agencies.” In
addition to this Internet evidence, the examining attorney
relied on a dictionary definition of “solutions provider,”
and on several third-party registrations wherein the term
“SOLUTIONS” is disclaimed apart from the mark.
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant services.
In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). A mark is
descriptive if it "forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
3 Applicant introduced, during the prosecution of its
application, several third-party registrations. Attached to its
reply brief are copies of nineteen additional third-party
registrations. Applicant also filed a separate request that the
Board consider this additional evidence. At the oral hearing,
the examining attorney consented to the entry of this evidence
into the appeal record. Accordingly, we have considered all of
the third-party registrations submitted by applicant.
Ser No. 76313476
5
[or services]." Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 189 USPQ 759, 765 (2d Cir. 1976)
(emphasis added). See also: In re Abcor Development
Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978). Moreover,
in order to be descriptive, the mark must immediately
convey information as to the features, qualities or
characteristics of the services with a "degree of
particularity." Plus Products v. Medical Modalities
Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981).
See also: In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB
1986); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ
949, 952 (TTAB 1981); and In re TMS Corp. of the Americas,
200 USPQ 57, 59 (TTAB 1978). It is well established that
the determination of mere descriptiveness must be made not
in the abstract or on the basis of guesswork, but in
relation to the services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such
services. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995).
The term “solution” is defined, in relevant part, as
follows: “the method or process of solving a problem; the
answer to or disposition of a problem.” Merriam-Webster’s
Dictionary (4th ed. 2000).
Ser No. 76313476
6
The term “solutions” is a general, broad term in
regard to training services. See In re Hutchinson
Technology, 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988).
The term does not convey an immediate idea of the specified
services; rather, the general nature of the term would
require a mental pause and thought that renders the term
suggestive rather than merely descriptive of applicant’s
services.
In turn, the entire mark, ACQUISITION SOLUTIONS
TRAINING INSTITUTE, does not immediately impart with any
“degree of particularity” and without the exercise of some
degree of thought or imagination, information about
applicant’s training services. Applicant, rather than
literally providing acquisition solutions, provides
training services which it hopes will lead to solutions to
clients’ acquisition problems. The mark only suggests the
results to be achieved by the recipients of applicant’s
training services and, thus, the mark is one step removed
from being merely descriptive. We also agree with
applicant that its services do not fit into the category of
information technology services offered by a “solutions
provider.”
As to the third-party registrations, neither those
submitted by the examining attorney which include
Ser No. 76313476
7
disclaimers of the term “solutions,” nor those introduced
by applicant without disclaimers of the term “solutions,”
are very helpful in deciding the present case. Although
many of the registrations cover training services, it would
be stretching to say that all of the registrants are in the
same training field (e.g., some of the ones submitted by
the examining attorney cover information technology
services). In general, it is apparent that the treatment
of the term “solutions” by the Office has been mixed. In
any event, each case must be decided on its own merits, and
neither the Board nor the examining attorney is bound by
the prior actions of the Office. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
In summary, we find that the term “SOLUTIONS” in
applicant’s mark is only suggestive when used in connection
with applicant’s services. This record does not establish
that the mark ACQUISITION SOLUTIONS TRAINING INSTITUTE as a
whole is merely descriptive of applicant’s training
services. See Bose Corp. v. International Jensen Inc., 963
F.2d 1517, 22 USPQ2d 1704 (Fed. Cir. 1992); In re Classic
Beverage Inc., 6 USPQ2d 1383 (TTAB 1988); and Manpower,
Inc. v. The Driving Force, Inc., 212 USPQ 961 (TTAB 1981),
aff’d, 538 F.Supp. 57, 218 USPQ 613 (EDPA 1982). That is,
based on the record before us, it has not been established
Ser No. 76313476
8
that applicant’s mark, when used in connection with
applicant’s services, conveys an immediate idea about the
services with any degree of particularity. The
significance of the mark and specifically what it describes
about the services, when used in connection with the
services, is vague enough to render the mark suggestive.
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio, 25 USPQ2d
1361 (TTAB 1992). We concede that the present case is a
close one, but find that the mark falls on the suggestive
side of the line. In this connection, the Board has noted
in the past that if there is doubt about the merely
descriptive character of a mark, that doubt is resolved in
applicant’s favor, permitting publication of the mark so
that an interested third party may file an opposition to
develop a more comprehensive record. See In re Atavio
Inc., supra; and In re Gourmet Bakers Inc., 173 USPQ 565
(TTAB 1972).
Decision: The refusal to register is reversed.