Agile Defense Inc.

Trademark Trial and Appeal Board

Sep 5, 2018

No. 86503544 (T.T.A.B. Sep. 5, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 5, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Agile Defense Inc.
_____

Serial No. 86503544
_____

Ryan S. Spiegel of Paley, Goldstein, Rosenberg, Eig & Cooper, Chartered
for Agile Defense Inc.
Michelle E. Dubois, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Wellington, Lykos, and Kuczma,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On January 14, 2015, Agile Defense Inc. (“Applicant”) filed an application to
register the mark AGILE FEDERAL in standard characters on the Principal Register
for “Design, development and implementation of software; Planning, design and
management of information technology systems” in International Class 42.1 During
prosecution, Applicant disclaimed FEDERAL apart from the mark as shown.

1 Application Serial No. 86503544 filed under Section 1(b) of the Trademark Act, 15 U.S.C. §
1051(b).
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The Trademark Examining Attorney has refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark is
merely descriptive of the identified services, or alternatively, deceptively
misdescriptive. Registration has also been refused on the ground that Applicant has
failed to demonstrate acquired distinctiveness in part as to the word AGILE under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).2 The appeal is now fully
briefed.
I. Preliminary Matter
Before analyzing the substantive issues before us, we address a matter raised by
Applicant. Applicant criticizes the Examining Attorney for refusing registration in
light of the contemporaneous allowance on the Principal Register of Applicant’s
Registration No. 5136711 for the standard character mark AGILE DEFENSE with
DEFENSE disclaimed for “Design, development and implementation of software;
Information technology consulting services; Planning, design and management of
information technology systems; Consulting in the field of information technology” in
International Class 42, services identical to those in the involved application.3

2 Claiming acquired distinctiveness under Section 2(f) in the alternative is not an admission
that the proposed mark or portion thereof is not inherently distinctive. See In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); In re E S Robbins Corp., 30 USPQ2d 1540,
1542 (TTAB 1992); In re Prof’l Learning Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB 1986). The
Board commends the Examining Attorney for seeking clarification from the Applicant
whether it wished to have the Board rule separately on the refusals issued under Section
2(e)(1) and whether its claim of acquired distinctiveness was intended to be made in the
alternative. See February 3, 2017 Office Action and May 9, 2017 Response.
3 The underlying application for the mark AGILE DEFENSE was filed June 14, 2016; the
mark registered on February 7, 2017.
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Applicant cites to Section 713.01 of the TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) (Oct. 2017) which states that “[w]hen assigned to act on an application that
was previously handled by a different examining attorney, the examining attorney
should act consistently with the examining attorney who handled the earlier-filed
application, unless it would be clear error (see TMEP § 706.01) to act consistently.”
The Board acknowledges Applicant’s concern and agrees that consistent
examination is one of the Office’s foremost goals. We must balance this objective,
however, with the countervailing aim of disallowing registration of marks where it
would be “clear error.”4 That is to say, “[t]he USPTO has a duty to issue valid
registrations …” TMEP § 706.01. Cf. Last Best Beef LLC v. Dudas, 506 F.3d 333, 84
USPQ2d 1699, 1704 (4th Cir. 2007) (“[F]ederal agencies, including the USPTO, have
broad authority to correct their prior errors.”). The Board is not bound by a prior
examining attorney’s decision when considering the merits of a refusal. Cf. In re USA
Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017) (in
determining likelihood of confusion, “[e]ach case is decided on its own facts, and each
mark stands on its own merits.”) (quoting In re Boulevard Entm’t, 334 F.3d 1336, 67
USPQ2d 1475, 1480 (Fed. Cir. 2003)). We therefore will analyze the evidentiary
record before us and make our determination accordingly.
II. Is Applicant’s Mark Merely Descriptive of the Identified Services?
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when

4 “Clear error” refers to “an administrative internal guideline used by the USPTO to
determine whether an examining attorney should issue a refusal or requirement that could
or should have been raised in a previous action.” TMEP § 706.01.
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used in connection with the applicant’s services, is merely descriptive of them. 15
U.S.C. § 1052(e)(1).5 “A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also In re TriVita, Inc., 783 F.3d
872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). By contrast, a mark is suggestive if it
“requires imagination, thought, and perception to arrive at the qualities or
characteristics of the [services].” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987).
The determination of whether a mark is merely descriptive must be made in
relation to the services for which registration is sought, not in the abstract. In re
Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831. This
requires consideration of the context in which the mark is used or intended to be used
in connection with those services, and the possible significance that the mark would
have to the average purchaser of the services in the marketplace. In re Chamber of
Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). In other words, the question
is not whether someone presented only with the mark could guess the services listed

5 “No trademark by which the [services] of the applicant may be distinguished from the
[services] of others shall be refused registration on the principal register on account of its
nature unless it ... (e) Consists of a mark which, (1) when used on or in connection with the
goods of the applicant is merely descriptive or deceptively misdescriptive of them. ...”
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in the identification. Rather, the question is whether someone who knows what the
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)). See also In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB
1998); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990);
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in
advertising material directed to the [services].” In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978). It may also be obtained from an applicant’s own
website and specimen of use and any explanatory text included therein. In re N.C.
Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001).
As noted above, Applicant has disclaimed the term FEDERAL. Notwithstanding
the disclaimer, the issue before us is whether Applicant’s mark AGILE FEDERAL,
when considered as a whole, is merely descriptive of “Design, development and
implementation of software; Planning, design and management of information
technology systems.”
Turning to the record, the Examining Attorney submitted the following definitions
of “agile” or “agile software development” from technical resources:
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Agile Software Development is a lightweight software
engineering framework that promotes iterative
development throughout the life-cycle of the project, close
collaboration between the development team and business
side, constant communication, and tightly-knit teams. …
Agile methodologies promote a project management
process that encourages frequent inspection and
adaptation.6
An umbrella term for a variety of best practices in creating
applications and information systems. These methods have
proven to be more effective in dealing with changing
requirements during the development phrase, which
always seem to occur. Also called “lean programming,” the
agile methods emphasize teamwork, customer involvement
and, most significantly, the creation of small or partial
pieces of the total system that are tested in a user
environment. For example, an application with 25 features
might be prototyped with only five or six thoroughly
completed before adding more, and so on.7
The record also reflects the well-recognized meaning of “agile” as a type of computer
software development methodology and IT solution as used by competitors in the
industry:
ArdentMC touts the offering of “Agile Software
Development” services on its website: “As one of …only a
handful of firms that has successfully introduced agile in
to Federal agencies, ArdentMC understands the need to
involve the client in every aspect of the development cycle.
Only through this involvement are development teams able
to develop solutions that can be responsive to the changing
mission needs of an organization.”8

6 April 24, 2015 Office Action p. 6, excerpt from Techopedia at www.techopedia.com. Citations
to the prosecution history in the USPTO’s TSDR database are to the downloadable .pdf
version. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018).
7 April 24, 2015 Office Action p. 8, excerpt from “Encyclopedia” at www.pcmag.com.
8 November 30, 2015 Office Action p. 6, excerpt from ArdentMC website at
www.ardentmc.com/our-services/agile-software-development.
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Onyx Government Services, LLC “provides agile software
development with COTS integration using the proven
Onyx Data Integration (ODI) Framework.”9
In promoting its own agile software development services,
Scanmarket acknowledges that others in the industry do
so as well: “Like many cloud-based software companies,
Scanmarket employs Agile software development methods.
Agile methodology is based on iterative, incremental
development and enable rapid, flexible response to change.
Agile lends itself perfectly to cloud application
development, and to the way we work at Scanmarket.
Supporting a single cloud platform eliminates unnecessary
work. This enable our team to fully realize the full potential
of Agile development methods.”10
Quint, a provider of agile software development services,
further explains the methodology: “Agile software
development is an important method for developing
iterative systems in collaboration with business. When a
business aims flexibly to react to the market, enhances its
systems and makes radical changes to its development
process, Agile software development can help!”11
Mindtree touts the qualifications of its agile software
developers: “Agile software development has quickly
proven its value in delivering high-quality applications
that meet customer needs. Mindtree agile developers
produce superior code that is easier to maintain, adapt and
extend. Our agile development practices, such as frequent
deliveries, continuous integration, and build, deployment
and test automation, reduce risk and rework.”12

9 November 30, 2015 Office Action p. 13, excerpt from Onyx Government Services, LLC
website at http://www.onyxgs.com/capabilities/agile-development.
10 November 30, 2015 Office Action pp. 14-15, excerpt from Scanmarket website at
http://scanmarket.com/technology/agile-software-development.
11 November 30, 2015 Office Action p. 17, excerpt from Quint website at
http://quintgroup.com/consulting/agile-development.
12 November 30, 2015 Office Action p. 31, excerpt from Mindtree website at
http://www.mindtree.com/possibilities/agile.
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We now look to the second component of the mark, the word FEDERAL. According
to the record, the adjective “federal” is defined as “of or connection with the central
government of some countries.”13 Applicant’s services are unrestricted as to its target
market. We must therefore assume that prospective consumers include the U.S.
federal government and its agencies. Indeed, this is confirmed by Applicant’s
President and Chief Executive Officer: “The company … has expanded to provide
support services to federal government agencies beyond the defense sector. As such,
it sought to register the mark “Agile Federal” to reflect a broader array of federal
government customers.”14 Cf. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707,
1710 (Fed. Cir. 2017) (“the TTAB did not err by considering the explanatory text of
the specimens in the descriptiveness inquiry”).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive commercial impression.
If each component retains its merely descriptive significance in relation to the
[services], the combination results in a composite that is itself merely descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004). See
also In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Putman Publ’g Co., 39
USPQ2d 2021 (TTAB 1996). Such is the case here where the combination of the terms

13 April 24, 2015 Office Action p. 4, Cambridge Dictionaries Online at
http://dictionary.cambridge.org/us/dictionary/american-english/federal.
14 Affidavit of Jay Lee (“Lee Affidavit”) ¶ 6 submitted with October 23, 2015 Response to
Office Action at pp. 9-11.
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“agile” followed by “federal” immediately conveys to prospective consumers a
characteristic of the services, namely that Applicant’s “Design, development and
implementation of software” as well as “Planning, design and management of
information technology systems” utilize the “agile” software development
methodology and are targeted to the U.S. federal government.
Applicant postulates that at most “agile is more of a loose or general philosophy
at best and that it is not limited to software services.” Applicant’s Brief, p. 13; 7
TTABVUE 14. Applicant’s argument is belied by the evidence of record. In the
commercial context described above, consumers encountering Applicant’s mark
AGILE FEDERAL will immediately know that AGILE refers to particular type of
methodology used in connection with Applicant’s software and IT services directed to
federal departments and agencies.
In sum, Applicant’s proposed mark immediately conveys, without need for
conjecture or speculation, an attribute of Applicant’s services. Accordingly, we find
Applicant’s proposed standard character mark AGILE FEDERAL merely descriptive
of the identified services.15
III. Is Applicant’s Mark Deceptively Misdescriptive of the Identified Services?
Next we consider the Examining Attorney’s alternative refusal that the applied-

15 Applicant and the Examining Attorney have each submitted their own respective set of
“dueling” third-party registrations, some of which for example show a disclaimer or
registration of marks comprised of the term AGILE on the Supplemental Register in
connection with the same or related services at issue here, while others do not. In light of the
persuasiveness of the Internet evidence discussed above, we need not weigh the probative
value of the third-party registrations. In other words, our determination that Applicant’s
mark is merely descriptive rests solely on the Internet evidence discussed infra.
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for mark AGILE FEDERAL is deceptively misdescriptive of Applicant’s services
within the meaning of Trademark Act Section 2(e)(1). See, e.g., In re Hinton, 116
USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of
tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312
(TTAB 2006) (holding SEPTEMBER 11, 2011 deceptively misdescriptive of history
books and entertainment services not pertaining to the events of September 11,
2001). The test for determining whether a mark is deceptively misdescriptive has two
parts: (1) whether the mark misdescribes the services; and if so, (2) whether
consumers are likely to believe the misrepresentation. See In re White Jasmine LLC,
106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ
1213, 1214 (TTAB 1984)). Regarding the first part of the test, a mark is
misdescriptive when the mark merely describes a significant aspect of the services
that the services could plausibly possess but in fact do not. In re Hinton, 116 USPQ2d
1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d at 1312; In re Phillips-Van
Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005). If this first prong is satisfied, our next
inquiry is whether consumers are likely to believe the misrepresentation. In re
Hinton, 116 USPQ2d at 1052; In re White Jasmine, 106 USPQ2d at 1394; In re
Phillips-Van Heusen Corp., 63 USPQ2d at 1048; In re Quady Winery, 221 USPQ at
1214. The Board has applied the reasonably prudent consumer test in assessing
whether a proposed mark determined to be misdescriptive involves a
misrepresentation consumers would be likely to believe. See R. J. Reynolds Tobacco
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Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985).
Based on the evidence discussed above concerning the refusal that Applicant’s
mark is merely descriptive, we find that it is plausible that Applicant’s services
consisting of “Design, development and implementation of software; Planning, design
and management of information technology systems” could employ the “agile”
software development methodology. In the affidavit submitted by Applicant’s
President and Chief Executive Officer, Jaeyoon “Jay” Lee, he states that with a few
de minimus exceptions, Applicant’s software development and IT solution services do
not involve the agile software development methodology.16 Insofar as according to
this statement Applicant’s services do not utilize the “agile” paradigm, we find that
the term AGILE in Applicant’s mark AGILE FEDERAL misdescribes the services.
Having satisfied this initial prong, we next consider whether a reasonably prudent
consumer is likely to believe the misrepresentation that Applicant’s services utilize
the “agile” methodology. Applicant argues that the AGILE portion of its mark is not
intended to denote this particular type of computer software design rubric but rather
refers to “reflect the company’s commitment to nimble and responsive service to its
customers.”17 According to Applicant’s President and CEO, “[i[n my experience, no
customer of ours has ever indicated that they thought our use of the term ‘agile’
referred to the so-called agile software development method, particularly since we’ve
been using the name Agile Defense since 2011 with customers for whom we have

16 Lee Affidavit ¶¶ 7-12 submitted with October 23, 2015 Response to Office Action at pp. 9-
11.
17 Id. at ¶ 9. See also id. in passim.
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never provided any services related to that method.”18 Noting however the evidence
discussed above that it is not uncommon for third-parties to use “agile” to identify a
type of computer software development and IT solution methodology, we are
unpersuaded by Applicant’s argument. As such, we find Applicant’s mark to be
deceptively misdescriptive within the meaning of Section 2(e)(1).
IV. Has Applicant Shown Acquired Distinctiveness In Part Under Section 2(f)?
Lastly, we consider whether Applicant has met its burden of demonstrating
acquired distinctiveness in part as to the term AGILE under Section 2(f). See In re
La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015);
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1006-07
(Fed. Cir. 1988). Section 2(f) of the Trademark Act provides in relevant part:
Except as expressly excluded in subsections (a), (b), (c), (d),
(e)(3), and (e)(5) of this section, nothing herein shall
prevent the registration of a mark used by the applicant
which has become distinctive of the applicant’s goods in
commerce. The Director may accept as prima facie evidence
that the mark has become distinctive, as used on or in
connection with the applicant’s goods in commerce, proof of
substantially exclusive and continuous use thereof as a
mark by the applicant in commerce for the five years before
the date on which the claim of distinctiveness is made.
The underlying rationale of Section 2(f) has been explained as follows:
[U]nlike the first five sections of 15 U.S.C. §1052 which
define the grounds upon which a trademark registration is
to be refused, Section 2(f) serves as an exception to a
rejection under the provisions of one of the other sections,
Section 2(e) (citation omitted). Section 2(f) permits
registration of marks that, despite not qualifying for
registration in light of Section 2(e), have nevertheless

18 Id. at ¶ 9.
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“become distinctive of the applicant’s [services] in
commerce.” Thus, “Section 2(f) is not a provision on which
registration can be refused,” … but is a provision under
which an applicant has a chance to prove that he is entitled
to a federal trademark registration which would otherwise
be refused.
“The statute is silent as to the weight of evidence required for a showing under
Section 2(f) ‘except for the suggestion that substantially exclusive use for a period of
five years immediately preceding filing of an application may be considered prima
facie evidence.’” In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417,
422 (Fed. Cir. 1985) (quoting In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381, 382-
83 (CCPA 1960)). Trademark Rule 2.41(a), 37 C.F.R. § 2.41, entitled “Proof of
distinctiveness under section 2(f),” fills in this gap for trademarks or service marks,
providing three methods for proving acquired distinctiveness:
(1) Ownership of prior registration(s). In appropriate cases,
ownership of one or more active prior registrations on the
Principal Register or under the Trademark Act of 1905 of
the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently
similar to the goods or services in the application; however,
further evidence may be required.
(2) Five years substantially exclusive and continuous use
in commerce. In appropriate cases, if a trademark or
service mark is said to have become distinctive of the
applicant’s goods or services by reason of the applicant’s
substantially exclusive and continuous use of the mark in
commerce for the five years before the date on which the
claim of distinctiveness is made, a showing by way of
verified statements in the application may be accepted as
prima facie evidence of distinctiveness; however, further
evidence may be required.
(3) Other evidence. In appropriate cases, where the
applicant claims that a mark has become distinctive in
commerce of the applicant’s goods or services, the applicant
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may, in support of registrability, submit with the
application, or in response to a request for evidence or to a
refusal to register, verified statements, depositions, or
other appropriate evidence showing duration, extent, and
nature of the use in commerce and advertising
expenditures in connection therewith (identifying types of
media and attaching typical advertisements), and verified
statements, letters or statements from the trade or public,
or both, or other appropriate evidence of distinctiveness.
The courts have provided further guidance, stating that in determining acquired
distinctiveness, relevant factors may include “copying, advertising expenditures,
sales success, length and exclusivity of use, unsolicited media coverage, consumer
studies (linking the name to a source).” In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1424 (Fed. Cir. 2005) (citing Cicena Ltd. v. Columbia Telecomms. Grp.,
900 F.2d 1546, 14 USPQ2d 1401 (Fed. Cir. 1990)). See also Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012). No
single factor, however, is determinative. In re Steelbuilding.com, 75 USPQ2d at 1424.
The involved application was filed under Section 1(b) of the Trademark Act. A
claim of distinctiveness under Section 2(f) normally is not raised in a Section 1(b)
application before the applicant files an amendment to allege use or a statement of
use because a claim of acquired distinctiveness, by definition, requires prior use. In
re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009). However, “[a]n intent-to-use
applicant may assert a claim of acquired distinctiveness under §2(f) as to part of a
mark prior to filing an acceptable allegation of use if the applicant has already used
the relevant part of the mark in commerce on or in connection with the specified goods
or services, or related goods or services.” TMEP § 1212.09(b). “[A]n applicant can
establish a prima facie case of acquired distinctiveness in the mark in an intent-to-
Serial No. 86503544
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use application where it can show that same mark acquired distinctiveness for
sufficiently similar or related goods [or services], and that this acquired
distinctiveness will transfer to the goods [or services] specified in the application
when the mark is used in connection with them.” In re Olin Corp., 124 USPQ2d 1327,
1333 (TTAB 2017).19 “To establish that such a transfer will take place, Applicant must
show a sufficient similarity or relationship between the goods [or services] in
connection with which the mark has acquired distinctiveness and those identified in
the intent-to-use application so that the purchasing public will perceive that the
mark’s primary significance is to identify Applicant as the source of the new goods [or
services].” Id. “Section 1(b) applicants face a heavy burden in establishing that their
mark will acquire distinctiveness when use commences. Accordingly, the required
showing for acquired distinctiveness to ‘transfer’ to new products [or services] is a
rigorous one.” Id. at 1335.
An additional issue presented in this appeal pertains to Applicant’s Section 2(f)
claim in part as to the word AGILE. “When an applicant is claiming §2(f) as to only a
portion of its mark, then the previously registered mark must be the legal equivalent
of the relevant portion for which the applicant is claiming acquired distinctiveness.”
TMEP § 1212.04(b) (citing TMEP § 1212.02(f)). See also TMEP § 1212.09(b) (“Claim
of §2(f) ‘in Part’ in §1(b) Applications”). Furthermore,
Generally, the element that is the subject of the §2(f) claim
must present a separate and distinct commercial

19 In In re Olin Corp., the majority held that Trademark Rule 2.41 “does not directly state
that it applies to transfer of acquired distinctiveness to applications under Section 1(b), but
we find that it does.” 124 USPQ2d at 1333.
Serial No. 86503544
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impression apart from the other elements of the mark.
That is, it must be a separable element in order for the
applicant to assert that it has acquired distinctiveness as a
mark. Consequently, if a mark is unitary for purposes of
avoiding a disclaimer, a claim of §2(f) in part would
generally not be appropriate since the elements are so
merged together that they cannot be regarded as
separable. If appropriate, the applicant can claim §2(f) as
to the entire unitary mark.
TMEP § 1212.02(f)(ii).
With this guidance in mind we commence our analysis, noting that Applicant
argues that it has met the threshold under all three subsections of Trademark Rule
2.41(a) in an effort to establish acquired distinctiveness as to the AGILE portion of
its mark.
As per Trademark Rule 2.41(a)(1), Applicant owns Registration No. 4202215 for
the mark displayed below on the Principal Register, for “Design, development and
implementation of software; Planning, design and management of information
technology systems” in International Class 42.20

20 Registered on September 4, 2012, alleging January 1, 2012 as the date of first use anywhere
and in commerce; “Combined Declaration of Use and Incontestability under Sections 8 & 15”
filed September 5, 2017 and accepted on October 5, 2017. The description of the mark is as
follows: “The mark consists of the letter ‘A’ and words ‘AGILE DEFENSE’. The letter ‘A’ is
presented in a stylized form with the diagonal lines of the ‘A’ in navy blue and a stylized red
curve presented as the line completing the letter ‘A’. The word ‘Agile’ is presented in a stylized
navy blue font and the word ‘defense’ is presented in a stylized red font.” The colors red and
navy blue are claimed as a feature of the mark. None of the wording is disclaimed.
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Applicant also owns Registration No. 5136711 for the standard character mark
AGILE DEFENSE on the Principal Register, with DEFENSE disclaimed for “Design,
development and implementation of software; Information technology consulting
services; Planning, design and management of information technology systems;
Consulting in the field of information technology.” There is no question that when
compared to both registrations, the services in the involved application are more than
“sufficiently similar or related”; they are in fact identical or identical in part. As such,
Applicant need not show “transference” as to the services identified in the prior
registrations as compared to the application. The concern however is whether either
of the marks displayed in Applicant’s prior registrations constitutes the “same mark”
as the component for which Applicant seeks registration under Section 2(f) in part.21
Applicant argues that because the term AGILE in both previously registered marks

21 We agree with the Examining Attorney’s observation based on TMEP § 1212.02(f)(ii)(A),
that the better practice in this situation would have been to claim acquired distinctiveness
as a whole; namely, as to “AGILE FEDERAL.” See TMEP § 1212.02(f)(ii)(A) (“Claiming §2(f)
in part is appropriate when descriptive matter that is combined with an inherently
distinctive element, such as arbitrary words or an inherently distinctive design, presents a
separate and distinct commercial impression apart from the other matter in the mark and
has acquired distinctiveness through use by itself,” or, as an alternative to a disclaimer.”).
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is the dominant portion, those marks are the same as the applied-for portion of the
mark AGILE in AGILE FEDERAL. In Applicant’s view:
The law allows for a claim of acquired distinctiveness of the
dominant part of a mark based on the prior use/and or
registration of the dominant part of another mark. The two
marks do not need to be identical in their entirety and
neither does the entirety of the prior mark need to be
incorporated into the new mark in order to obtain acquired
distinctiveness.
Applicant’s Brief, p. 20; 7 TTABVUE 21 (emphasis in original). This is not the correct
analysis. An applied-for mark or portion thereof is considered the same mark if it is
the legal equivalent of the previously-registered mark. Cf. In re Highlights for
Children, Inc., 118 USPQ2d 1268, 1273-74 (TTAB 2016) (citing In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)). As
explained by the U.S. Court of Appeals for the Federal Circuit in Dial-A-Mattress,
supra:
A proposed mark is the “same mark” as previously-
registered marks for the purpose of [Trademark Rule
2.41(a)]22 if it is the “legal equivalent” of such marks. A
mark is the legal equivalent of another if it creates the
same, continuing commercial impression such that the
consumer would consider them both the same mark. … No
evidence need be entertained other than the visual or aural
appearance of the marks themselves.
Emphasis added. (citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156,
17 USPQ2d 1866, 1868 (Fed. Cir. 1991)). Cf. In re Highlights for Children, Inc., 118
USPQ2d at 1274 (“ … the result is immediately apparent; IMÁGENES

22 Trademark Rule 2.41(a) was formerly Trademark Rule 2.41(b).
Serial No. 86503544
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ESCONDIDAS, even though it has the same meaning as HIDDEN PICTURES, is not
“the same mark” as HIDDEN PICTURES. The marks are entirely different aurally
and visually, and we do not read Dial-A-Mattress as stating that marks with the same
meaning are “the same mark.”); In re Binion, 93 USPQ2d at 1531 (the applied-for
marks BINION and BINION’S are not the “same” marks as the previously registered
marks JACK BINION and JACK BINION’S); In re Nielsen Bus. Media, Inc., 93
USPQ2d 1545, 1547 (TTAB 2010) (THE HOLLYWOOD REPORTER and THE
BOLLYWOOD REPORTER are not “legal equivalents”).
Applying these standards, we find that the marks displayed in each of the prior
registrations are not the same, or legal equivalents of the term AGILE, by itself. The
term AGILE, alone, does not engender the same “continuing commercial impression”
as either the previously registered composite mark A AGILE DEFENSE or standard
character mark AGILE DEFENSE. The visual and aural appearance of the marks is
obviously distinct. Cf. Van Dyne-Crotty, 17 USPQ2d at 1868 (court considered the
legal equivalence of CLOTHES THAT WORK. FOR THE WORK YOU DO and
CLOTHES THAT WORK, and stated, “[i]t does not appear that the Board entertained
any other evidence concerning the legal equivalence of these two marks except for the
visual or aural appearance of the marks themselves. However, no more was
necessary.”). As such, none of Applicant’s prior registrations support a prima facie
claim of acquired distinctiveness.
We direct our attention now to Trademark Rule 2.41(a)(2), i.e., whether Applicant
has made a prima facie showing of acquired distinctiveness based on five years’ of
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“substantially exclusive and continuous” use of the same mark as the AGILE portion
of the present mark with sufficiently similar or related services. In support thereof,
Applicant relies on the statement in the Lee Affidavit that Applicant “has been using
the name Agile Defense since 2011.”23 In this regard, Applicant’s Section 2(f) claim
fails for the reasons stated above. Moreover, Applicant failed to satisfy the statutory
requirement of Section 2(f) to aver that its use of the mark AGILE DEFENSE has
been “substantially exclusive.” See In re Olin Corp., 124 USPQ2d at 1337.
Having determined that Applicant failed to make a prima facie showing of
acquired distinctiveness in AGILE based either on its ownership of a prior
registration or five years of “substantially exclusive and continuous use” of the same
mark, we now consider Applicant’s “actual evidence” of acquired distinctiveness. In
this regard, Applicant relies entirely on the Lee Affidavit wherein Mr. Lee avers that
Applicant has had over seven years of use AGILE DEFENSE and success in the
government contracts marketplace, but is devoid of any concrete statements
regarding annual sales or marketing expenditures under its previously used marks.
The declaration standing alone fails to establish a transference of acquired
distinctiveness from Applicant’s previously used AGILE DEFENSE marks to the
applied-for portion of the mark AGILE in AGILE FEDERAL.
In sum, we have considered the totality of Applicant’s evidence and find that
Applicant has failed to show that the term AGILE as displayed in its mark AGILE

23 Lee Affidavit ¶ 9.
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FEDERAL has acquired distinctiveness and will be recognized as a source indicator
upon Applicant’s use of the mark in interstate commerce.24
Decision: The refusal to register is affirmed.

24 Notwithstanding our determination, even if we had found Applicant’s previously used and
registered marks A AGILE DEFENSE and AGILE DEFENSE to be the “same mark” or the
legal equivalent of AGILE FEDERAL, Applicant’s evidence would still be found insufficient.