Arcat, Inc.

Trademark Trial and Appeal Board

Oct 13, 2004

No. 76458198 (T.T.A.B. Oct. 13, 2004)

Mailed: October 13, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Arcat, Inc.
________
Serial No. 76458198
______
Gene S. Winter of St.Onge Steward Johnson & Reens LLC for
Arcat, Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 15, 2002, Arcat, Inc. (a Connecticut
corporation) filed an application, based on Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), to register the mark
SPECWIZARD on the Principal Register for services amended
to read “application service provider featuring software
for use in creating specifications for builders and
architects” in International Class 42. Applicant’s claimed
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76458198
2
date of first use and first use in commerce is June 25,
2002.
The Examining Attorney refused registration on the
ground that the term SPECWIZARD, when used in connection
with the identified services of applicant, is merely
descriptive of those services under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
the Board. Both applicant and the Examining Attorney have
filed briefs, but an oral hearing was not requested.
Preliminarily we address an evidentiary matter. As
part of applicant’s combined request for reconsideration
and appeal brief on the case1 it submitted additional
evidence (consisting of a typed list of the marks and
numbers of several third-party applications and/or
registrations). The Board forwarded the application to the
Examining Attorney. She denied applicant’s request for
reconsideration and she objected to the typed list as
untimely filed with applicant’s appeal brief, but she also
argued the merits in case the Board considered the typed
list. Applicant did not submit a supplemental brief as was
1 This paper was filed within six months of the issue date of the
final refusal, and therefore, it was a request for
reconsideration, not a request for remand. See Trademark Rules
2.64(b) and 2.142(d).
Ser. No. 76458198
3
allowed by the Board; the Examining Attorney filed her
brief; and in applicant’s reply brief, it included a
slightly different and smaller list of third-party
registrations.
While the Examining Attorney is correct that the
record should be complete prior to appeal, applicant’s
initial typed list of third-party applications and
registrations was part of applicant’s timely filed request
for reconsideration. The Examining Attorney’s objection is
overruled and the initial typed list is considered of
record for whatever, if any, probative value it may have.
With regard to the typed list in applicant’s reply
brief, that is clearly untimely and has not been
considered, except to the extent that the information
appeared on the original list. See Trademark Rule
2.142(d).2
Turning to the merits of the refusal to register on
the basis that the term SPECWIZARD is merely descriptive,
the Examining Attorney contends that “spec” refers to
“specifications” and “wizard” refers to an interactive help
utility in computer software that assists the user in
performing a particular task; that in combination the term
2 We add that even if the additional listings had been
considered, they would not have altered our decision herein.
Ser. No. 76458198
4
SPECWIZARD connotes that applicant functions as an
application service provider and provides an interactive
wizard that assists the user in describing desirable
product specifications; and that the term is merely
descriptive of a significant attribute of applicant’s
services.
In support of her position, the Examining Attorney
submitted definitions from www.pcwebopaedia.com defining
“spec” as “2. short for specification,” and “wizard” as “1.
a utility within an application that helps you use the
application to perform a particular task….” She also
submitted a definition from www.linuxguruz.com defining
“wizard” as “4. An interactive help utility that guides the
user through a potentially complex task, such as
configuring a PPP driver to work with a new modem. Wizards
are often implemented as a sequence of dialog boxes which
the user can move forward and backward through, filling in
the details required. …”
In addition, the Examining Attorney relies on
applicant’s use of the terms “spec” and “wizard” on its
specimens of record (printouts of pages from applicant’s
website) as well as additional pages from applicant’s
website. The following are examples of applicant’s use of
the terms: (i) “Create custom building product
Ser. No. 76458198
5
specifications using SpecWizard”; (ii) “Coming Soon:
SpecWizard An interactive specification system that writes
customized specs based upon answers to specific
product/usage questions.”; and (iii) “ARCAT Launches
SpecWizard an interactive spec writing service containing
manufacturer specs.”
In further support of her position, the Examining
Attorney submitted: (i) copies of several excerpted stories
retrieved from the Nexis database showing use of the phrase
“specification wizard” in relation to builders/architects;
and (ii) printouts of pages from a few third-party websites
showing use of applicant’s “specwizard” thereon to show
that applicant’s program is a series of dialog boxes
through which the user moves, filling in the user’s
requirements.
Examples from the Examining Attorney’s Nexis database
evidence showing use of the phrase “specification wizard”
are shown below:
Headline: Fit Ball: F Ball is to extend
its factory because of growing demand
for its products
…But he hastens to add: “That doesn’t
mean that we are against technological
advances. We have put RAG online. Our
CD Rom has a specification wizard. So
we can certainly be proactive when there
is a need to be. But we feel the
personal touch is essential and
Ser. No. 76458198
6
customers approve of this. … “Contract
Flooring Journal,” June 2003;
Headline: Material Selection; Services
…These tools include the chemical
compatibility wizard, the fluid blender,
an RTV material selector, specifications
wizards, a viscosity at temperature
calculator and the weatherseal wizard. …
“Rubber World,” September 22, 2002;
Headline: Silicone Specifications;
Services; Brief Article
…A search wizard searches for a product
with keywords, competitive offsets, CAS
numbers, documents and alphabetically.
Specification wizards allow users to
specify a product from the company in
their application and find a silicone
product which meets their compliance
specification. … “Rubber World,” June
22, 2002; and
Headline: Master Builders unveils new
electronic tool
…architects develop custom concrete and
admixture specifications for projects.
The Master Builders Material
Specification Developer contains a
specification wizard that poses a series
of questions the user must answer
regarding the concrete required in a
project. “Concrete Products,” September
2001.
Applicant urges reversal on the basis that the burden
of establishing the mere descriptiveness of a mark is on
the USPTO; that the Examining Attorney improperly dissected
the mark rather than considering the mark as a whole in
determining descriptiveness; that the combination of “spec”
and “wizard” results in a registrable mark; that the mark
Ser. No. 76458198
7
SPECWIZARD “does not apprise the user of all of the
characteristics of the service” (brief, p. 3); that the
mark does not immediately and directly convey information
about the particular characteristics of the services, but
rather purchasers must exercise thought and a multi-stage
reasoning process to determine the attributes of the
involved services; that the Examining Attorney’s definition
of the term “wizard” does not apply to applicant’s
services, but instead, the term “is suggestive of a mentor
or guide who navigates the user through the specification-
writing process” (reply brief, p. 2); and that the USPTO
has determined that the term “wizard” used in connection
with software is entitled to trademark protection as shown
by applicant’s initial typed list of about 40 third-party
applications and registrations.
In explaining why applicant asserts the term “wizard”
is not descriptive in relation to its services, applicant
argues as follows (brief, p. 4):
…wizards [e.g., “letter wizard,”
“install wizard”] are components of a
program that help a user utilize the
program.
In contrast, the SPECWIZARD service is
not a component or utility that helps a
user to utilize a program or
application. SPECWIZARD is the
program, which is an expert system that
simulates the judgement and behavior of
a human expert with knowledge and
Ser. No. 76458198
8
experience in the creation of
construction specifications.
SPECWIZARD is not a utility of a
specification writing program, which
[would be] known as specification
writers or spec writers in the
industry. As such, the service
provided by SPECWIZARD is the expert
guidance to a user for the creation of
a building specification.
A term is merely descriptive of goods or services,
within the meaning of Section 2(e)(1), if it immediately
conveys information concerning an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term or phrase describe all of
the properties or functions of the goods or services in
order for it to be considered merely descriptive thereof;
rather, it is sufficient if the term or phrase describes a
significant attribute of the goods or services.
The issue of whether a particular term or phrase is
merely descriptive must be determined not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the term or
phrase is being used on or in connection with those goods
or services, and the possible significance that the term or
Ser. No. 76458198
9
phrase is likely to have to the average purchaser of the
goods or services because of the manner in which it is
used. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). See also, 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §§11:66-11:71 (4th ed.
2001). Further, the question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them. See In re Home
Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990); and In re American Greetings Corp., 226 USPQ 365
(TTAB 1985).
In this case, the Examining Attorney has met the
burden of establishing a prima facie case of mere
descriptiveness. In fact, this record includes ample
evidence that in the context of applicant’s services,
“application service provider featuring software for use in
creating specifications for builders and architects,” the
term “spec” refers to “specifications” (see e.g.,
dictionaries and applicant’s own use of the word and the
Ser. No. 76458198
10
abbreviated word),3 and the term “wizard” refers to a
computer software tool or utility which guides the user
through a step-by-step process (see e.g., the dictionary
definitions, Nexis database excerpts, and pages from
applicant’s website). The term SPECWIZARD, considered as a
whole and in its entirety, when used in connection with
applicant’s service featuring software for use in creating
specifications for builders and architects, is merely
descriptive of a significant feature, purpose and function
of the service. Specifically, the purchasing public would
readily understand, without imagination or conjecture, that
applicant’s service features software that is an
interactive tool or utility used in relation to arriving at
appropriate specifications for construction and other
projects of builders and architects.
Applicant’s argument that, in the context of
applicant’s services, purchasers would understand the term
“wizard” to refer to its pre-computer meaning of a guide or
mentor is not persuasive. Applicant’s own specimens
include the following wording:
Solution: Software That Listens ands
Remembers!
3 Applicant does not contest this point. At page 4 of its brief,
applicant stated: “As to the term ‘spec’, applicant submits that
it is commonly understood in connection with specifications.”
Ser. No. 76458198
11
SpecWizard is a software solution
specially created for the preparation
of CSI-formatted specifications. It
uses a familiar technique that is easy
to understand, fast and accurate.
…
This software-driven selection process
determines how to populate multiple
sections within the spec.
The questions and answers are presented
graphically to make the process
intuitively simple to understand and
use.
This confirms consumers’ understanding of the term
“wizard” as it is now defined in the context of an
interactive help utility in computer software.
Based on the record, we find that the term SPECWIZARD,
when used in connection with the involved services,
immediately conveys to the purchasing public the idea of
the featured software which is an interactive guide tool or
utility in relation to applicant’s service. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
(APPLE PIE merely descriptive of potpourri); In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987) [FIRSTIER (stylized) merely descriptive of
banking services]; In re Copytele Inc., 31 USPQ2d 1540
(TTAB 1994) (SCREEN FAX PHONE merely descriptive of
facsimile terminals employing electrophoretic displays);
and In re Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB
Ser. No. 76458198
12
1994) (SMARTPROBE merely descriptive of disposable
cryosurgical probes).
Further, even if applicant is the first (and/or only)
entity to use the term SPECWIZARD in relation to its
identified services, such is not dispositive where, as
here, the term unquestionably projects a merely descriptive
connotation. See In re Tekdyne Inc., 33 USPQ2d 1949, 1953
(TTAB 1994), and cases cited therein.
With respect to the typed list of third-party
registrations of various “WIZARD” marks (showing only the
mark and the number) submitted by applicant, this evidence
is not persuasive of a different result in this case.4
First, mere typed listings of third-party registrations are
not an appropriate way to enter such material into the
record, and the Board does not take judicial notice of
registrations in the USPTO. See Weyerhaeuser Co. v. Katz,
24 USPQ2d 1230 (TTAB 1992); Cities Service Company v. WMF
of America, Inc., 199 USPQ 493 (TTAB 1978); and In re
Duofold Inc., 184 USPQ 638 (TTAB 1974).
Second, the list does not indicate whether any of the
marks were registered with a disclaimer of the term
4 Applicant’s typed list included application serial numbers.
Third-party applications, even if properly submitted, are
evidence of nothing except that the applications have been filed.
Ser. No. 76458198
13
“wizard,” or under the provisions of Section 2(f) of the
Trademark Act. Nor does the list indicate the specific
goods involved.5 Even if such information were of record,
while uniform treatment under the Trademark Act is an
administrative goal, the Board’s task in an ex
parte appeal is to determine, based on the record before
us, whether applicant’s mark is merely descriptive. As
often noted by the Board, each case must decided on its own
merits. We are not privy to the records of the third-party
registration files and, moreover, the determination of
registrability of those particular marks by the Trademark
Examining Attorneys cannot control our decision in the case
now before us. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to
[applicant’s application], the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”)
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.
5 Applicant stated in its combined request for reconsideration
and appeal brief (p. 6) that the third-party applications and/or
registrations were “in Class 9 for software related products.”