Arkive Information Management LLC

Trademark Trial and Appeal Board

May 8, 2019

87487874 (T.T.A.B. May. 8, 2019)

Mailed: May 8, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Arkive Information Management LLC
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Serial No. 87487874
_____
Erik M. Pelton of Erik M. Pelton & Associates PLLC
for Arkive Information Management LLC.

Paul A. Moreno, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____
Before Mermelstein, Ritchie and Adlin, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Arkive Information Management LLC seeks a Principal Register
registration for the proposed mark ARKIVE, in standard characters, for:
Storage of paper documents, files, and records; physical
storage of electronically-stored data or documents;
relocation, namely, transportation of goods in the nature of
documents, computer hardware and software for business
records and other records; Facsimile retrieval services for
business in International Class 39; and

Conversion of business data and other documents from
physical to electronic media; Electronic scanning of
business records, visual material, documents,
photographic images, artwork, paintings, and printed
materials; Computer programming for others in the fields
of organization, maintenance, storage, management,
retention and destruction of business records, vital records,
This Opinion is Not a
Precedent of the TTAB
Serial No. 87487874
2
computer data, audiotapes, medical records, films, master
recordings, archival materials and records; Leasing
computer facilities, namely, provision of disaster recovery
computer facilities; computer services, namely, data
backup and recovery services; Computer security threat
analysis for protecting data; data migration; data
restoration; Computer services, namely, cloud computing
backup services; Computer disaster recovery planning;
Providing internet based data capture services that enable
storage, retention, and retrieval of data in International
Class 42.1

The Examining Attorney refused registration under Section 2(e)(1) of the Trade-
mark Act, 15 U.S.C. § 1052(e)(1), on the ground that the proposed mark is merely
descriptive of the identified services. After the refusal became final, Applicant ap-
pealed and Applicant and the Examining Attorney filed briefs.
I. The Record and Arguments
The Examining Attorney argues that “Applicant’s mark is a novel spelling of, and
the phonetic equivalent to, the word ‘archive.’” 6 TTABVUE 6 (Examining Attorney’s
Appeal Brief at 5). Thus, he relies on an American English dictionary which defines
“archive,” when used as a noun, as “a place where public records, documents, etc. are
kept.” According to the same definition, when used as a verb, “archive” means “to
place or keep (records, papers, etc.) in or as in archives.” September 18, 2017 Office
Action TSDR 8 (printout from “collinsdictionary.com”). The Examining Attorney
concludes that because “Applicant is providing the service of storing and archiving

1 Application Serial No. 87487874, filed under Section 1(a) of the Trademark Act, based on
first use in November 2016 and first use in commerce in December 2016.
Serial No. 87487874
3
documents and data … applicant’s mark merely describes the field and subject matter
of applicant’s services.” 6 TTABVUE 6-7 (Examining Attorney’s Appeal Brief at 5-6).
Applicant does not dispute the definitions of “archive” upon which the Examining
Attorney relies. Applicant contends, however, that its mark is a “creative double
entendre.” 4 TTABVUE 8 (Applicant’s Appeal Brief at 7).
ARKIVE is a creative combination and play on the words
“ark” and “archive” to create a unique unitary word that
has multiple meanings, any of which may be interpreted
and impressed differently by the consumer. Specifically,
Applicant’s mark plays on the word “ARK,” which is in
reference to the Ark of the Covenant and Noah’s Ark.
Applicant’s mark, therefore, conveys that its services are
as secure as the ark that Noah built for himself, his family,
and hundreds of animals, who were sheltered from the
flood. Likewise, the term “ARK” in Applicant’s mark may
be interpreted as referencing the safety and protection of
Applicant’s file sharing and data storage services.
Alternatively, consumers may be under the impression
that Applicant’s data sharing and cloud computing backup
services are as secure and sturdy as the Ark of the
Covenant, a gold-covered wooden chest with a lid cover
described [in] the Book of Exodus as containing the two
stone tablets of the Ten Commandments.

Id. at 9-10 (Applicant’s Appeal Brief at 8-9) (citations omitted). Applicant points out
that “ark” is defined as: “a boat or ship held to resemble that in which Noah and his
family were preserved from the Flood”; and “the sacred chest representing to the
Hebrews the presence of God among them.” March 16, 2018 Office Action Response
TSDR 11 (printout from “merriam-webster.com”). Moreover, the Merriam-Webster
dictionary entry goes on to explain that “the figurative meaning of ark as something
that affords protection or safety” derives from Noah’s Ark. Id. at 13.
Serial No. 87487874
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II. Analysis
The record leaves no doubt that ARKIVE is merely descriptive, because it
immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the services for which it is used. In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987)); In re Abcor Dev., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
Specifically, ARKIVE, which looks and is spelled almost the same, and sounds exactly
the same, as the word “archive,” immediately conveys Applicant’s: “storage of paper
documents, files and records” and “physical storage of electronically-stored data or
documents” in Class 39; and its “computer programming for others in the fields of …
storage … retention … of business records, vital records, … archival materials and
records,” “computer services, namely, data backup and recovery services,” “computer
services, namely, cloud computing backup services” and “providing internet based
data capture services that enable storage, retention, and retrieval of data” in Class
42. It is settled that if a proposed mark is descriptive of any of the services identified
in a particular class, registration is properly refused. See In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (quoting In re Richardson Ink Co.,
511 F.2d 559, 185 USPQ 46, 48 (CCPA 1975) (“registration should be refused if the
mark is descriptive of any of the goods [or services] for which registration is sought.”));
In re Quik-Print Copy Shop, Inc., 616 F. 2d 523, 205 USPQ 505, 507 (CCPA 1980).
While ARKIVE and the word “archive” are not identical, as the Examining
Attorney points out, Applicant’s slight misspelling of “archive” as its phonetic
Serial No. 87487874
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equivalent ARKIVE does not make ARKIVE non-descriptive. Nupla Corp. v. IXL Mfg.
Co., 114 F.3d 191, 42 USPQ2d 1711, 1716 (Fed. Cir. 1997) (“Nupla’s mark [CUSH-N-
GRIP], which is merely a misspelling of CUSHION-GRIP, is also generic as a matter
of law”); In re Quik-Print, 205 USPQ at 507 n.9 (finding QUIK-PRINT merely
descriptive of printing and copying services, stating “[t]here is no legally significant
difference here between ‘quik’ and ‘quick.’”); In re Carlson, 91 USPQ2d 1198, 1203
(TTAB 2009) (“applicant’s applied-for mark, URBANHOUZING in standard
character form, will be immediately and directly perceived by consumers as the
equivalent of the admittedly descriptive term URBAN HOUSING, rather than as
including the separate word ZING”); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475
(TTAB 2007) (“The generic meaning of ‘togs’ is not overcome by the misspelling of the
term as TOGGS in applicant’s mark. A slight misspelling is not sufficient to change
a descriptive or generic word into a suggestive word.”).
Applicant’s argument that ARKIVE is a double entendre is not well-taken. “A
double entendre is registrable only if the second, non-descriptive meaning would be
readily apparent to the consumer from the mark itself.” In re S. Malhotra & Co., AG,
128 USPQ2d 1100, 1105 (TTAB 2018); In re Calphalon 122 USPQ2d at 1163 (“The
multiple interpretations that mark an expression a ‘double entendre’ must be
associations the public would make fairly readily ….”). Here, as in Calphalon,
Applicant’s mark “does not readily evoke the alternative meaning claimed by
Serial No. 87487874
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Applicant, in the manner in which marks such as SUGAR & SPICE2 and NO BONES
ABOUT IT3 readily evoked associations with familiar matter from the American
English vernacular, and is thus not a double entendre.” In re Calphalon, 122 USPQ2d
at 1164. See also In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1158-59 (TTAB
2003) (“[I]n the context of applicant’s services, it is unlikely that viewers or potential
viewers of applicant’s programs will discern a double entendre in the word ‘accents.’
To have a double entendre, both meanings must be readily apparent, but the meaning
suggested by applicant is not apparent upon seeing the mark in connection with the
services.).”
Moreover, there is no evidence (or reason to believe) that consumers would
construe ARKIVE as a reference to Noah’s Ark, the Ark of the Covenant or for that
matter any other type of “ark.” To the contrary, Applicant’s use of the mark makes
clear that ARKIVE conveys the same descriptive meaning as “archive,” as illustrated
by the following excerpts from Applicant’s website:

2 See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968).
3 See In re Nat’l Tea Co., 144 USPQ 286 (TTAB 1965).
Serial No. 87487874
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April 17, 2018 Office Action TSDR 7, 9. While Applicant’s website does reference
“disaster recovery,” which was arguably the purpose of Noah’s Ark, and “security,”
which is arguably the purpose of the Ark of the Covenant, the connection between
“disaster recovery” and “security” on the one hand and Noah’s Ark or the Ark of the
Covenant on the other is not by any means “readily apparent” from Applicant’s
proposed mark, especially where the letters “a-r-k” are used only as part of the term
ARKIVE in standard characters, and Applicant uses the phonetically identical,
common and descriptive or generic term “archive” (as well as equivalent terms such
as “backup”) repeatedly throughout its website. Similarly, Applicant’s website refers
to its services as “storage solutions,” as shown below:
Serial No. 87487874
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Id. TSDR 19. In other words, it is clear that ARKIVE is being used to refer to the
“storing” of data or materials, rather than Noah’s Ark or the Ark of the Covenant.4
“[T]he meaning suggested by applicant is not apparent upon seeing the mark in
connection with the services.” In re Ethnic Home Lifestyles, 70 USPQ2d at 1159.
III. Conclusion
Because the record reveals that Applicant’s proposed mark ARKIVE is nothing
more than a slight misspelling of and the phonetic equivalent to “archive,” the term
is merely descriptive of a characteristic, feature, function or purpose of Applicant’s
identified services.
Decision: The refusal to register Applicant’s proposed mark under Section 2(e)(1) of
the Trademark Act is affirmed.

4 In any event, even if, as Applicant argues, the letters “a-r-k” are perceived as a reference to
the “safety and protection” of Noah’s Ark, or as indicating that Applicant’s services are “as
secure and sturdy as the Ark of the Covenant,” these alternative meanings may be merely
descriptive as well. In fact, Applicant’s website touts the safety, protection and security
Applicant’s identified services provide. In other words, “to the extent [ARKIVE] does present
two meanings,” they may both be merely descriptive of Applicant’s services. In re RiseSmart
Inc., 104 USPQ2d 1931, 1934 (TTAB 2012).