Behome247, Inc.

Trademark Trial and Appeal Board

Aug 7, 2015

No. 86183045 (T.T.A.B. Aug. 7, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Behome247, Inc.
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Serial No. 86183045
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Matthew H. Swyers of The Trademark Company,
for Behome247, Inc.
Janice L. McMorrow, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Quinn, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Behome247, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark ENTERPRISE PROPERTY CONTROL (in standard characters)
(“PROPERTY CONTROL” disclaimed) for “software as a service (SAAS) services
featuring software for allowing vacation rental property managers the ability to
manage their properties remotely” in International Class 42.1

1 Application Serial No. 86183045, filed February 3, 2014 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use of the mark anywhere on October 1,
2013, and first use in commerce on October 5, 2013.
Application Serial No. 86183045

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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,
when used in connection with Applicant’s services, is merely descriptive thereof.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs.
We affirm.
The Examining Attorney maintains that Applicant’s services comprise
enterprise software services for control of vacation properties and, as such, the
proposed mark is merely descriptive of the services. In support of the refusal, the
Examining Attorney introduced excerpts taken from third-party websites, and
copies of third-party registrations.
Applicant argues that its applied-for mark is suggestive of Applicant’s services,
but not merely descriptive of them. In this connection, Applicant contends that
there is a degree of imagination about its mark, focusing on the different ways in
which the word “enterprise” is defined, including “a project or activity that involves
many people and is often difficult”; and the absence of a dictionary definition of the
terminology “property control,” which is “a term of art used by (among others) law
enforcement organizations and large universities to refer to the variety [of] policies
and procedures by which they manage, track, transport and store items which have
either utilitarian or evidentiary value to the organization.” (4 TTABVUE 12).
Applicant also contends that competitors do not have a need to use the same
terminology for similar services and, in this regard, dismisses the probative value of
Application Serial No. 86183045

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the third-party registration evidence showing that the Office considers the
terminology “enterprise” to be merely descriptive for computer software and related
services. Applicant acknowledges that although “some components of [the definition
of “enterprise software”] apply to Applicant’s services, such as the ability to process
business documents remotely via the internet, other components are clearly
distinct, as the Applicant’s services are not limited to use by large corporations or
the government.” (4 TTABVUE 13). In support of its position, Applicant submitted
third-party registrations.
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 Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007) (citing
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)), In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). 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; rather, it is sufficient
that the term describes one significant attribute, function or property of the goods
or services. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is
descriptive cannot be determined in the abstract. Bayer, 82 USPQ2d at 1831.
Rather, descriptiveness must be evaluated “in relation to the particular goods for
which registration is sought, the context in which it is being used, and the possible
Application Serial No. 86183045

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significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” Id.; In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Contrary to the gist of Applicant’s argument that “when
confronted with the mark in its entirety….it is unlikely that the consumer would
arrive at a description of the Applicant’s services,” (4 TTABVUE 12), it is settled
that “[t]he 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.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (citing In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. See, e.g., DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 103
USPQ2d at 1756 (SNAP SIMPLY SAFER is merely descriptive for “medical devices,
namely, cannulae; medical, hypodermic, aspiration and injection needles; medical,
hypodermic, aspiration and injection syringes”); In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM is merely descriptive
of computer software for managing a database of records that could include patents
Application Serial No. 86183045

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for tracking the status of the records by means of the Internet); In re Petroglyph
Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM is merely descriptive of
computer game software); In re Tower Tech Inc., 64 USPQ2d at 1317
(SMARTTOWER is merely descriptive of commercial and industrial cooling towers);
In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS is
merely descriptive of computer programs for use in development and deployment of
application programs); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990)
(OATNUT is merely descriptive of bread containing oats and hazelnuts), aff’d per
curiam, 928 F.2d 411 (Fed. Cir. 1991).
Applicant’s specimen is instructive regarding the nature of its services.

Application Serial No. 86183045

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The record includes the following information about “enterprise” software:
Enterprise software is an over-arching term for any
software used in large organizations (whether business or
government). It is considered to be an essential part of a
computer-based information system, and it provides
business-oriented tools such as online payment processing
and automated billing systems.

The main goal behind enterprise software is to improve
enterprise productivity and efficiency through business
logic support functionality. Enterprise software performs
business functions including order processing, accounting
and customer relationship management.
(techopedia.com)
*******
Enterprise software is also a hugely broad category. To
illustrate, here is a list of tools that might be included in a
given enterprise software suite, [including] ordering,
scheduling, [and] customer information management.
(office.about.com)
*******
Application Serial No. 86183045

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Enterprise software, also known as enterprise software
application (ESA), is purposed-designed computer
software used to satisfy the needs of an organization
rather than individual users. Such organizations can vary
from businesses, schools, interest-based user groups and
clubs, retailers, or governments. Enterprise software is an
integral part of a (computer based) Information System,
and as such includes web site software and production.

Enterprise software describes a collection of computer
programs with common business applications, tools for
modeling how the entire organization works, and
development tools for building applications unique to the
organization. The software is intended to solve an
enterprise-wide problem, rather than a departmental
problem. Enterprise level software aims to improve the
enterprise’s productivity and efficiency by providing
business logic support functionality.

Although there is no single, widely accepted list of
enterprise software characteristics, they generally include
performance, scalability, and robustness.
(wickipedia.com)

The word “property” is defined as “something that is owned by a person,
business, etc.; a piece of land often with buildings on it that is owned by a person,
business, etc.” (merriam-webster.com).
At the outset of our analysis, we again note Applicant’s acknowledgement that
some portions of the definition of “enterprise software” apply to Applicant’s services
while others do not. (4 TTABVUE 13). What Applicant apparently overlooks in
making this concession, however, is that the proposed mark need not describe all of
the purposes, functions, characteristics, or features of Applicant’s services to be
considered merely descriptive; it is enough if the proposed mark describes one
significant function or attribute. See In re Chamber of Commerce, 102 USPQ2d at
Application Serial No. 86183045

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1219; In re Oppedahl & Larson LLP, 71 USPQ2d at 1371, (citing In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001))
(“A mark may be merely descriptive even if it does not describe the ‘full scope and
extent’ of the applicant’s goods or services.”); In re Positec Group Ltd., 108 USPQ2d
1161, 1171 (TTAB 2013) (“[I]f the mark is descriptive of some identified items – or
even just one – the whole class of goods still may be refused by the examiner.”).
In any event, we find that the term “enterprise” is merely descriptive of
Applicant’s services utilizing enterprise software that allows vacation rental
property businesses or managers to remotely access property control functions (such
as property access and temperature control). When the proposed mark
ENTERPRISE PROPERTY CONTROL is considered as a whole, it merely describes
services utilizing enterprise software featuring property control functions. The
proposed mark immediately describes, without need of conjecture or speculation, a
significant feature or function of Applicant's services. Nothing requires the exercise
of imagination, cogitation, mental processing or gathering of further information in
order for purchasers of, and prospective customers for, Applicant's services to
readily perceive the merely descriptive significance of the terminology
ENTERPRISE PROPERTY CONTROL as it pertains to “software as a service
(SAAS) services featuring software for allowing vacation rental property managers
the ability to manage their properties remotely.”
Both Applicant and the Examining Attorney have relied upon third-party
registrations in support of their respective arguments on the issue of mere
Application Serial No. 86183045

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descriptiveness. The third-party registrations are probative evidence of the meaning
of a word, in the same way that a dictionary can be used to establish that a word
has a significance in a particular industry. Institut Nat. Des Appellations D'Origine
v. Vintners Int’l. Co., Inc., 958 F.2d 1574, 1581, 22 USPQ2d 1190, 1196 (Fed. Cir.
1992) (“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.”); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694-95 (CCPA 1976) (third-party registrations “may be given
some weight to show the meaning of a mark in the same way that dictionaries are
used”); In re Sela Prods., LLC, 107 USPQ2d 1580, 1588 (TTAB 2013); In re Box
Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) (“Third-party registrations can be
used in the manner of a dictionary definition to illustrate how a term is perceived in
the trade or industry.”).
The Examining Attorney points to several third-party registrations wherein the
word “Enterprise” is disclaimed, or that issued on the Supplemental Register. The
examples include the following representative registrations, all for computer
software and/or related services: Reg. No. 4030974 for ENTERPRISE MOBILITY
SYSTEMS and design (“ENTERPRISE MOBILITY SYSTEMS” disclaimed); Reg.
No. 4159378 for ENTERPRISE APPLICATION VIEWER (Supplemental Register);
Reg. No. 4231719 for ENTERPRISE BACKUP (Supplemental Register); Reg. No.
4437777 for ENTERPRISE WORKFORCE (Supplemental Register); and Reg. No.
4616872 for VISIBLE ENTERPRISE (“ENTERPRISE” disclaimed). Applicant
Application Serial No. 86183045

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responded by arguing that each of the registrations covers the “specialized field of
‘enterprise software,’” which is used by large organizations, not property managers.
Applicant, for its part, refers to certain registrations on the Principal Register that
issued without any disclaimers of the word “Enterprise” or reliance on Section 2(f).
The registrations are for computer software and/or related services, and include the
following: Reg. No. 4271501 for SIMPLIFYING ENTERPRISE MOBILITY; Reg. No.
4276595 for DRILLING ENTERPRISE; and Reg. No. 4584206 for ENTERPRISE
SIGNAL and design.
Although we have considered the state of the register evidence, the third-party
registrations are not conclusive on the issue of mere descriptiveness. Each case
must stand on its own merits, and a mark that is merely descriptive must not be
registered on the Principal Register simply because other similar marks might
appear on the register. In re International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB
2000); In re Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977). 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.”). Although the register may contain conflicting indications about how
the Office treats the word “Enterprise” in composite marks for computer software
and/or related services, the other evidence in the record is sufficient to support the
mere descriptiveness refusal.
Application Serial No. 86183045

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Based on the record before us, we find that the proposed mark ENTERPRISE
PROPERTY CONTROL is merely descriptive of “software as a service (SAAS)
services featuring software for allowing vacation rental property managers the
ability to manage their properties remotely.”
Decision: The refusal to register is affirmed.