Allegis Group, Inc.

Trademark Trial and Appeal Board

Jul 27, 2018

No. 87340089 (T.T.A.B. Jul. 27, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: July 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Allegis Group, Inc.
_____

Serial No. 87340089
_____

Sherry Flax of Saul Ewing Arnstein & Lehr LLP,
for Allegis Group, Inc.
Alex Seong Keam, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Acting Managing Attorney.
_____

Before Bergsman, Shaw, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Allegis Group, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark MSP DIRECT (in standard characters, with “MSP” disclaimed) for:

Business management consultation in the field of business processes and
expansion; Business management and consultation in the field of payroll
processing, tax deposit filing and reporting, human resources
management, employee time and attendance record keeping; Business
management consultation in the field of capturing and analyzing
information and data for the purpose of improving business processes and
marketing campaigns; Employment hiring, recruiting, placement, staffing
and career networking services; Market research; Personnel placement
and recruitment; Supply chain management services; Business marketing
Serial No. 87340089
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consulting services; Promotion and marketing services and related
consulting in International Class 35.1

The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(e)(1) of the Trademark Act, on the ground that the
proposed mark is merely descriptive of Applicant’s identified services. 15 U.S.C. §§
1052(e)(1) and 1053. When the refusal was made final, Applicant twice requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, Applicant brought this appeal. We affirm the refusal to register.
I. Applicable Law

A term is unregistrable as a service mark on the Principal Register if, when used
in connection with the identified services of the applicant, it is merely descriptive of
them. 15 U.S.C. §§ 1052(e)(1) and 1053. See Apollo Med. Extrusion Tech., Inc. v. Med.
Extrusion Tech., Inc., 123 USPQ2d 1844, 1848 (TTAB 2017). A term is merely
descriptive within the meaning of Section 2(e)(1) “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 AG, 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).

1 Application Serial No. 87340089 was filed on February 17, 2017, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b).

Page references to the application record are to the .pdf version of the USPTO’s Trademark
Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders
on appeal are to the Board’s TTABVUE docket system.
Serial No. 87340089
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It is the Examining Attorney’s burden to show that a term is merely descriptive
of an applicant’s goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010
(Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts
to Applicant. In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir.
2003). The Board resolves doubts as to the mere descriptiveness of a mark in favor of
the applicant. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB
2016).
Here, Applicant has applied to register MSP DIRECT for services it summarizes
as “employment hiring and staffing, business management, and market research
services.”2 At the Examining Attorney’s request, Applicant has disclaimed MSP
because it is the acronym for “Managed Service Providers,” which refers to businesses
that manage the staffing needs of organizations, among other services.3 The
disclaimer of a term pursuant to a requirement by the Examining Attorney is a
concession that the term is at best merely descriptive. See In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988) (“By its disclaimer of the word LITE,
applicant has conceded that the term is merely descriptive as used in connection with
applicant’s goods.”) (citing State Oil Refining Corp. v. Quaker Oil Corp., 161 USPQ
547 (TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972)).

2 Applicant’s brief, 4 TTABVUE 2.
3 May 17, 2017 Office Action TSDR p. 3; June 27, 2017 Response to Office Action TSDR p. 2.
Applicant did not pursue the Examining Attorney’s advice to amend the application to seek
registration on the Supplemental Register. May 17, 2017 Office Action TSDR p. 4.
Serial No. 87340089
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The essential issue, then, is whether adding the word DIRECT to MSP renders
the applied-for mark inherently distinctive. Whether a mark is merely descriptive is
determined in relation to the services for which registration is sought and the context
in which the mark is used, not in the abstract or on the basis of guesswork. In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66
USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate 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). “The analysis requires consideration of the
possible significance that the mark would have to the average purchaser of the
identified goods or services in the relevant marketplace. In re Chamber of Commerce,
102 USPQ2d at 1219; Bayer, 82 USPQ2d at 1831; Abcor, 200 USPQ at 218.” In re
Well Living Lab Inc., 122 USPQ2d 1777, 1779 (TTAB 2017).
According to the evidence of record, businesses and other organizations often use
the services of managed service providers to recruit and manage their outsourced
staffing needs, although the MSPs provide other outsourcing services, as well. For
example:
• Humera advertises, “As your MSP, we become your partner by taking an active
role in managing your contingent workforce….”4
• Volt Consulting Group’s website states, “MSPs provide workforce management
expertise for their clients’ contingent labor programs by securing talent from a

4 MyHumera.com 8/1/2017, Aug. 18, 2017 Office Action TSDR p. 10.
Serial No. 87340089
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wide range of sources including staffing suppliers, outsourced service
providers, independent contractors, and other talent pools.”5
• Solarwinds msp website defines “Managed Service Provider – An IT company
that provides services, such as server monitoring and maintenance, for a
number of different clients.”6
• Allegis Global Solutions’ website advertises “SIGMA: AGS’s new mid-market
contingent workforce solution … Businesses are increasingly using contingent
labor for their talent needs. More than 40% of the United States workforce now
falls into the contingent category and companies of all sizes are embracing non-
employee talent.”7
Hence, the average purchasers of MSP services would tend to be managers and
other officers of client companies. These corporate purchasers, to whom the
aforementioned advertising is directed, would, by virtue of their positions and
managerial experience, be knowledgeable about the various types of MSP services.
In the eyes of these purchasers, the Examining Attorney contends, “DIRECT is
not a source identifying wording in the context of the applicant’s services and

5 VoltConsultingGroup.com 8/18/2017, Aug. 18, 2017 Office Action TSDR p. 17.
6 SolarWindsMSP.com 5/15/2017, May 17, 2017 Office Action TSDR p. 18.
7 AllegisGlobalSolutions.com 5/17/2017, May 17, 2017 Office Action TSDR p. 42. The
Examining Attorney also cites to the definition of “Managed Services Provider” in Wikipedia,
en.Wikipedia.org 8/18/2017, Aug. 18, 2017 Office Action TSDR p. 30. “[T]he Board will
consider evidence taken from Wikipedia so long as the non-offering party has an opportunity
to rebut that evidence by submitting other evidence that may call into question the accuracy
of the particular Wikipedia information.” In re IP Carrier Consulting Grp., 84 USPQ2d 1028,
1032 (TTAB 2007).

Serial No. 87340089
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therefore the applicant cannot claim exclusive rights to use the wording.”8
“Businesses and competitors should be free to use descriptive language when
describing their own goods and/or services to the public in advertising and marketing
materials,” he maintains,9 citing In re Abcor Dev. Corp., 200 USPQ at 217 (“The major
reasons for not protecting such [merely descriptive] marks are: (1) to prevent the
owner of a mark from inhibiting competition in the sale of particular goods; and (2)
to maintain freedom of the public to use the language involved, thus avoiding the
possibility of harassing infringement suits by the registrant against others who use
the mark when advertising or describing their own products.”) and In re
Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001) (“The intent of Section
2(e)(1) is to protect the competitive needs of others, that is, descriptive words must
be left free for public use”) (internal punctuation and citation omitted).
In support of this position, the Examining Attorney quotes several pertinent
dictionary definitions of “direct”, including “to supervise, manage…” and “by the
shortest way…,”10 as well as “to manage or regulate the business or affairs of; be in
charge of” and “having no intervening persons, conditions, or agencies, immediate.”11
In the context of MSP services, then, “MSP DIRECT describes the specified services
as featuring or using Managed Service Providers directly to hire staff or in the direct

8 Examining Attorney’s brief, 6 TTABVUE 7.
9 May 17, 2017 Office Action p. 3.
10 YourDictionary.com 5/17/2017, May 17, 2017 Office Action TSDR p. 22.
11 AHDictionary.com 8/18/2017, Aug. 18, 2017 Office Action TSDR pp. 62-64; Examining
Attorney’s brief, 6 TTABVUE 7.
Serial No. 87340089
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management of an organization’s business needs. MSPs may assimilate into a
company and act as the recruitment office that would directly hire staff,” the
Examining Attorney concludes.12
Applicant protests that “DIRECT has many definitions that could be understood
by consumers to apply to Applicant’s services.”13 It continues:
Merriam Webster provides the following definitions: to impart orally; to
regulate the activities or course of; to carry out the organizing, energizing,
and supervising of; to follow a straight course; to point out. …. Any of these
definitions are easily ascribed to Applicant’s services as they might be
understood by relevant consumers in connection with MSP. MSP DIRECT
might refer to Applicant itself providing business consulting services,
organizing the activities of third party contractors, or holding in person
meetings. It might also refer to Applicant placing third party consultants
to perform services, or to the quick provision of any of these services.
Because DIRECT does not necessarily refer to the “managing or
supervising work” interpretation (that is not found in the dictionary),
consumers cannot immediately understand its meaning. It requires some
operation of the imagination to connect the term DIRECT to a feature of
Applicant’s MSP services. The need for additional information to
understand the meaning of DIRECT renders it suggestive, not merely
descriptive, of Applicant’s services.14

However, “[s]o long as any one of the meanings of a word is descriptive, the word
may be merely descriptive.” In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1034
(TTAB 2007). As we have noted above, we must consider the descriptiveness of a mark
in the context of the relevant services. In re Chamber of Commerce of the U.S., 102
USPQ2d at 1219. The evidence the Examining Attorney has adduced from third party
usage indicates that Management Service Providers can essentially step into the

12 Examining Attorney’s brief, 6 TTABVUE 7.
13 Applicant’s brief p. 5, 4 TTABVUE 6.
14 Applicant’s brief p. 3, 4 TTABVUE 4; Applicant’s June 27, 2017 Response to Office Action
TSDR pp. 2, 6. See also Applicant’s reply brief p. 2, 7 TTABVUE 3.
Serial No. 87340089
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shoes of their client companies and directly recruit, hire, and supervise contingent
staff for the benefit of the client companies. For example:
• Allegis Global Solutions states:
15
• Volt Consulting Group states:
16

15 AllegisGlobalSolutions.com 5/17/2017, May 17, 2017 Office Action TSDR p. 44.
16 VoltConsultingGroup.com 8/18/2017, Aug. 18, 2017 Office Action TSDR p. 17.
Serial No. 87340089
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• Humera states:
17
Applicant argues that Humera began using the term “MSP Direct” after Applicant
filed its subject application.18 That argument misses the point. Even if Applicant were
the first to combine these descriptive terms (which has not been shown) trademark
law does not countenance someone obtaining “a complete monopoly on use of a
descriptive term simply by grabbing it first.” KP Permanent Make-Up, Inc. v. Lasting

17 MyHumera.com 8/1/2017, Aug. 18, 2017 Office Action TSDR p. 11.
18 Applicant’s reply brief pp. 2-3, 7 TTABVUE 3-4.
Serial No. 87340089
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Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) quoted in In re Fat
Boys Water Sports, 118 USPQ2d at 1514-15. Such terms can quickly spread in general
parlance. In re Styleclick.com, 58 USPQ2d at 1527. As the examples above
demonstrate, that is the way the Management Service Providers advertise their
services to client companies, and the way those client companies’ officers would
understand the term DIRECT in the context of those services: direct recruitment and
supervision of the contingent workforce. DuoProSS Meditech v. Inviro Med. Devices,
103 USPQ2d at 1757; In re Chamber of Commerce, 102 USPQ2d at 1219 (consider
significance of term from perspective of average purchaser of identified services in
the relevant marketplace). This evidence supports a finding that the term is not
source-identifying, and cannot be appropriated by one MSP; it is descriptive, and
must be available to competitors. In re Abcor, 200 USPQ at 217; In re Styleclick.com
Inc., 58 USPQ2d at 1527.19
In further support of his position, the Examining Attorney submits evidence of
seven third-party registrations featuring business services, some of which are similar
to Applicant’s, with DIRECT disclaimed or the mark is registered on the

19 The Examining Attorney adds that “DIRECT is also merely descriptive of the marketing
services because businesses market or sell goods directly to consumers rather than through
retailers.” Examining Attorney’s brief, 6 TTABVUE 7; Sept. 8, 2010 Office Action TSDR p.
20. We find it unnecessary to reach this interpretation in view of the evidence establishing
that Managed Service Providers directly recruit and supervise contingent staff. “A term need
not immediately convey an idea of each and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or services. In re Chamber of
Commerce, 102 USPQ2d at 1219.” In re Highlights for Children, Inc., 118 USPQ2d 1268, 1270
(TTAB 2016).

Serial No. 87340089
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Supplemental Register. These include:
ENGINE DIRECT, Reg. No. 4119207 for inter alia “marketing consulting and
marketing plan development in the field of business development; business
development services in the fields of product innovation, marketing strategy,
advertising, customer acquisition, customer retention, customer service” in Class 35
(DIRECT disclaimed);20

LATAM DIRECT, Reg. No. 4137133 for inter alia “distributorship services in the field
of computer software and technology solutions services, and professional business
consultation services relating to technology solutions in the fields of business,
education, healthcare and government” in Class 35 (Supplemental Register; DIRECT
disclaimed);21

CAPSTONE DIRECT, Reg. no. 4691823 for “business consultation and management
regarding marketing activities and launching of new products” in Class 35 (DIRECT
disclaimed);22

JMFA DIRECT, Reg. No. 2964000 for inter alia “business management services for
financial institutions; business consulting in the field of economic, regulatory,
earnings improvement and strategic planning for financial institutions” in Class 35
(DIRECT disclaimed);23

TOP SHELF DIRECT, Reg. No. 4897761 for “business management consulting and
advisory services” in Class 35 (DIRECT disclaimed).24

Applicant counters this third-party registration evidence with 17 registrations in
which DIRECT is not disclaimed.25 For example:
DIRECT SOURCE, Reg. No. 5064026 for “employment staffing consultation services;
employment agency services, namely, filling the temporary and permanent staffing
needs of businesses; employment hiring, recruiting, placement, staffing and career
networking services; professional staffing and recruiting services; employment
recruiting services; executive recruiting services; executive search and placement

20 May 17, 2017 Office Action TSDR pp. 33-35.
21 Id. at 36-38.
22 Id. at 39-40.
23 July 18, 2017 Office Action TSDR pp. 8-10.
24 Id. at 18-19.
25 Applicant’s brief pp. 3-4, 4 TTABVUE 4-5.
Serial No. 87340089
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services; professional staffing and recruiting services” in Class 35;26

TMAC DIRECT & Design, Reg. No. 4889063 for “employment recruiting, placement,
and staffing in the fields of health care, medicine, medical device development,
pharmacology and biotechnology” in Class 35;27

PHARM TECH DIRECT, Reg. No. 5235961 for “employment hiring, recruiting,
placement, staffing and career networking services” in Class 35 (PHARM TECH
disclaimed);28

ISSUER DIRECT & Design, Reg. No. 5169309 for “platform as a Service (PAAS)
featuring computer software platforms to enable companies to produce, disclose, and
distribute financial documents, namely, disclosure documents sent to federal
agencies for compliance purposes, and press releases and other similar
communications to financial professionals for business purposes” (ISSUER
disclaimed) in Class 42;29

BACKHAUL DIRECT, Reg. No. 4987366 for inter alia “freight logistics management;
transportation logistics services, namely, arranging the transportation of goods for
others; business management consultation in the field of freight transportation
logistics” (BACKHAUL disclaimed) in Class 35.30

Applicant argues that these registrations “demonstrate that the USPTO
recognizes that the term DIRECT is not merely descriptive in connection with
business services, including the employment and staffing services that Applicant
provides.” Citing In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745
(TTAB 2016); In re Box Sols. Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).31 The
Examining Attorney rejoins that “The applicant’s registration evidence is not

26 Aug. 18, 2017 Response to Office Action TSDR p. 4.
27 June 27, 2017 Response to Office Action TSDR p. 19.
28 July 28, 2017 Response to Office Action TSDR p. 5.
29 June 27, 2017 Response to Office Action TSDR p. 12.
30 Id. at 15.
31 Applicant’s brief p. 4, 4 TTABVUE 5.
Serial No. 87340089
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compelling because the third party registrations proffered by the applicant do not
contain the same or similar services as in the instant case.”32
Although not controlling, “[t]hird-party registrations can be used in the manner
of a dictionary definition to illustrate how a term is perceived in the trade, industry,
or ordinary parlance. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675 (Fed. Cir. 2015).” RxD Media, LLC v. IP Application Development
LLC, 125 USPQ2d 1801, 1812 (TTAB 2018). “Such third party registrations show the
sense in which the word is used in ordinary parlance and may show that a particular
term has descriptive significance as applied to certain goods or services.” Inst. Nat’l
des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992).
In this case, the third-party registration evidence is inconclusive. The most the
registrations demonstrate is that the term DIRECT is merely descriptive in some
contexts, and not so in others. Some of the registrations involve unrelated services,
such as freight transportation management or distribution of computer software;
others involve traditional employment staffing services for employers who directly
hire and supervise the employees. Each application must be considered on its own
record. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir.
2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221
(Fed. Cir. 2009)).
In this case, the third party website evidence above is more on point. It shows how

32 Examining Attorney’s brief, 6 TTABVUE 14.
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Management Service Providers recruit and supervise a contingent workforce directly.
Management Service Providers advertise their direct provision of services to client
companies, and those client companies’ officers would perceive the term DIRECT that
way, in the context of the trade, industry, or ordinary parlance.
On this record, the preponderance of evidence indicates that MSP DIRECT is
merely descriptive of Applicant’s services.
II. Conclusion
For the foregoing reasons, on consideration of all of the evidence of record,
including parts we have not mentioned, we find that Applicant’s applied-for mark,
MSP DIRECT, is merely descriptive under Section 2(e)(1). 15 U.S.C. § 1052(e)(1).
Decision: The refusal to register Applicant’s applied-for mark MSP DIRECT is
affirmed.