Bernie Graham

Trademark Trial and Appeal Board

May 10, 2013

No. 85255894 (T.T.A.B. May. 10, 2013)

Mailed: May 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Bernie Graham
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Application No. 85255894
Filed: March 2, 2011
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Paul D. Bangor, Jr., Thorp Reed & Armstrong LLP, for applicant.
Alice Benmaman, Trademark Examining Attorney, Law Office 116, Michael W.
Baird, Managing Attorney.
————
Before Bucher, Mermelstein, and Wellington, Administrative Trademark
Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Bernie Graham, an individual, filed an application for registration of
PADPIVOT (in standard characters) to be used on goods identified as a “[s]tand
specially adapted for holding tablet computers, PC tablets, pad computers, digital
book readers and electronic book readers,” alleging a bona fide intent to use the
mark in commerce. Registration has been finally refused on the ground that the
mark, when used in connection with the identified goods, is merely descriptive of
them. Trademark Act § 2(e)(1); 15 U.S.C. § 1052(e)(1).
We affirm the refusal to register.
I. Applicable Law
A term is merely descriptive if it immediately conveys knowledge of a signifi-
cant quality, characteristic, function, feature or purpose of the services with which
This Opinion is not a
Precedent of the TTAB

Application No. 85255894
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it is used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009–10 (Fed. Cir. 1987). Whether a particular term is merely descriptive is deter-
mined in relation to the goods for which registration is sought and the context in
which the term 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, the issue is whether someone
who knows what the goods 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); In re Tower Tech, Inc., 64 USPQ2d
1314, 1316–17 (TTAB 2002); In re Patent & Trademark Servs. Inc., 49 USPQ2d
1537, 1539 (TTAB 1998). “On the other hand, if one must exercise mature thought
or follow a multi-stage reasoning process in order to determine what product or
service characteristics the term indicates, the term is suggestive rather than merely
descriptive.” E.g., In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003); In re Shutts, 217 USPQ 363, 364–65 (TTAB 1983).
II. Discussion
Applicant identifies its goods as a “stand specially adapted for holding ... pad
computers....”1 The examining attorney submitted evidence showing that “pivot” is
defined as “a fixed point or pin that something turns or balances upon.” MACMILLAN
DICTIONARY (online) pivot (http://macmillandictionary. com/ dictionary/ american/

1 We need not consider the rest of the identification of goods.

Application No. 85255894
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pivot (accessed June 9, 2011)). Applicant does not dispute this definition. The
examining attorney also submitted evidence defining “pad” as “an iPad-like tablet
computer.” COMPUTER DESKTOP ENCYCLOPEDIA, pad (THE FREE DICTIONARY BY
FARLEX http://encyclopedia2 .thefreedictionary.com/pad (accessed Jan. 9, 2012)). The
examining attorney concludes that both “pad” and “pivot” are descriptive of
applicant’s goods, and that the combination of those terms is likewise descriptive of
a “stand specially adapted for holding ... pad computers....” Final Ofc. Action (Jan. 9,
2012).
Applicant’s first (and presumably best) argument is that the examining
attorney ignored “highly probative evidence that Applicant’s PADPIVOT mark is
not merely descriptive,” namely, an “email received from a head purchaser of Best-
Buy to the Applicant that requested all [PADPIVOT] product ... be re-labeled to add
‘portable tablet stand.’ ” Applicant did not submit this email for the record, but
applicant’s quotation of it does not bear out the argument:
“. . . will be delivered on or prior to * * * and the rest will
be [sic] filter through the remainder of the week. Also we
were just asked by the merchant team to add a sticker to
call out that is this a stand [sic]. So our intention is to re-
label the first 3K in store. We are getting labels
printed to replace the bottom Rocketfish label with
one that would call out ‘Portable Tablet Stand’.
Once I have a date I will let you know, but we would like
all products updated with the ‘new’ label.”
Response to Ofc. Action (Dec. 9, 2011) (emphasis and alterations as in original).
From this email, applicant concludes that

Application No. 85255894
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the mark PADPIVOT at this time has been found to be
insufficient to describe the nature of the device so as to
entice sales. Reasonable consumers without knowledge of
the PADPIVOT mark and goods were unable to under-
stand what the goods were with the PADPIVOT mark ap-
plied directly thereto without additional language that
would qualify as “merely descriptive” to provide such
information to consumers.
App. Br. at 4.
We disagree. First, the only reason applicant’s wholesale purchaser gave for
requesting a label change was “to call out that this is a stand.” The buyer did not
say that “reasonable consumers ... were unable to understand what the goods were,”
only that it wanted to emphasize on the label that the goods function as a stand.
But in any event, applicant’s argument relies on an incorrect standard for descrip-
tiveness. We are not concerned with whether “consumers without knowledge of the
PADPIVOT mark and goods” would be able to “understand what the goods [are].” To
the contrary, the descriptiveness of a mark is not to be judged in a vacuum; the
proper question is what the mark would mean to a consumer who does know what
the goods are. In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002) (“[I]t is
well- established that the determination of mere descriptiveness must be made not
in the abstract or on the basis of guesswork, but in relation to the goods or services
for which registration is sought, the context in which the mark is used or intended
to be used, and the impact that it is likely to make on the average purchaser of such
goods or services.”).
Moreover, whether the descriptiveness of the mark would “entice sales” is irrele-

Application No. 85255894
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vant. A mark is merely descriptive of the identified goods if it immediately “conveys
information regarding a function, or purpose, or use of the goods.” DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755
(Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 200 USPQ at 217 ). A descriptive
term need not tell the purchaser everything about the goods or even be sufficient by
itself to identify what the goods are, so long as it conveys significant information
about them. Interpayment Svcs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1466
(TTAB 2003); In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1924 (TTAB 2002). And
while the information conveyed by the mark must be of some significance — i.e., not
trivial — the examining attorney need not show that the information would affect a
purchaser’s buying decision. Accordingly, we do not view this email communication
(as quoted by applicant) to be persuasive.
Applicant next argues that “[w]hile Applicant’s goods have a ball and socket
joint, the common definition of Pad is insufficient to describe the goods or a use
thereof. It is a word with multiple meanings but, in all the meanings, at this time
none imply the Applicant’s ‘use’ or ‘purpose.’ ” App. Br. at 4. Applicant quotes a
lengthy definition of “pad” from Merriam-Webster’s on-line dictionary in which none
of the definitions are relevant to applicant’s goods, and cites an on-line dictionary of
computer jargon which “does not list ‘PAD’ as a recognized computer term. Id. at 5–
6. Applicant suggests that the computer devices its goods are made to work with are
better described as “tablets,” “notebooks,” or “readers.” Id.
The problem with applicant’s argument is that applicant himself uses “pad” de-

Application No. 85255894
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scriptively in his application, identifying his goods as a “stand ... for holding ... pad
computers....”2 Application (March 2, 2011) (emphasis added). It is true that the
identification of goods also refers to “tablet computers, PC tablets, ... digital book
readers and electronic book readers,” but the availability of these terms does not
diminish the descriptiveness of “pad” as a type of computer which can be held by
applicant’s stand. See In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (“There is
no requirement that the Office prove actual competitor use or need; it is well
established that even if an applicant is the only user of a merely descriptive term,
this does not justify registration of that term.” (citations omitted)).
Despite applicant’s lack of success in finding a relevant definition for “pad,” the
examining attorney submitted an excerpt from an on-line dictionary defining a
“pad” as “an iPad-like tablet computer.” The fact that other dictionaries do not
include similar definitions is not necessarily fatal. A mark can be descriptive even if
it does not appear in any dictionary at all. In re Orleans Wines, Ltd., 196 USPQ 516,
517 (TTAB 1977). And in a field in which jargon changes as quickly as that of
personal computing devices, it is not unusual to find words in descriptive use well
before they are found in mainstream dictionaries (or any dictionary at all). We find
the examining attorney’s evidence sufficient to establish prima facie that “pad” is
descriptive as applied to applicant’s goods, and that applicant’s evidence is

2 Although applicant later amended the identification of goods pursuant to the examining
attorney’s requirement, the application as originally filed included the reference to “pad
computers.” The examining attorney did not question applicant’s use of “pad” in the
identification of goods.

Application No. 85255894
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insufficient to rebut that evidence. Thus we think it clear that applicant’s
customers — who are owners of pad computers, tablet computers, electronic book
readers, and the like — would clearly understand the significance of the term “pad”
when used in connection with a stand for such devices.
Applicant does not dispute the meaning of “pivot” or its meaning in the context
of the identified goods. See App. Br. at 4 (“While applicant’s goods have a ball and
socket joint....”). The examining attorney’s dictionary evidence shows that “pivot” is
defined as “a fixed point or pin that something turns or balances upon.” The
examining attorney submitted a picture of applicant’s goods from its website:

Final Ofc. Action (Jan. 9, 2012).3

3 The picture in the record was split over two pages; we have pieced it together for clarity.

Application No. 85255894
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This picture clearly shows a pad computer being held by an arm, which is
attached to a stand by a ball-and-socket joint. Such a joint would allow the pad to
pivot on the stand to most positions or angles the user might need. We find that
relevant purchasers would easily understand the descriptive relevance of the term
“pivot” to such goods.
Finally, we conclude that the combination of PAD and PIVOT in applicant’s
mark does not remove the result from the realm of descriptiveness. Although the
words are concatenated, they are easily recognized as the words “pad” and “pivot.”
See, e.g., Carlson, 91 USPQ2d at 1200 (URBANHOUZING merely descriptive (citing
In re Cox Enters. Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (THEATL equivalent to
THE ATL and descriptive); In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004)
(GASBUYER merely descriptive)). The words PAD and PIVOT do not together form
a new, non-descriptive meaning, nor do they create a double-entendre, or have any
unusual or surprising connotation when juxtaposed as in the applied-for mark.
Potential purchasers would immediately recognize, without further conjecture, that
a stand for pad computers sold under the term PADPIVOT is simply a pivot for a
pad computer, i.e., a feature, function, characteristic, or use of the identified goods.4

4 Applicant also argues that the examining attorney’s request in her first Office action for
information pursuant to Trademark Rule 2.61(a) about applicant’s goods is evidence that
his mark is not descriptive. Applicant is incorrect. The examining attorney’s requirement
for information was not inconsistent with her refusal of registration either at the time of
the first office action or now. A Rule 2.61(a) request is routinely issued when the examining
attorney is unfamiliar with the goods. The subject application was filed on an intent-to-use
basis, so the examining attorney had no specimens to refer to, and in addition to refusing
registration under Trademark Act § 2(e)(1), she also issued a requirement for an amend-

Application No. 85255894
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III. Conclusion
We have carefully considered all of the evidence and argument of record. We
conclude that PADPIVOT is merely descriptive of the identified goods, and that
registration must accordingly be refused pursuant to Trademark Act § 2(e)(1).
Decision: The refusal to register is AFFIRMED and registration to applicant is re-
fused.

ment to the identification of goods. A request for information was simply a prudent ap-
proach to examination in the event the goods were not what she had — correctly, it
appears — assumed them to be. Applicant’s position is apparently that if the mark is
descriptive, the examining attorney would have no need for further information, but as
noted above, a mark need only describe one aspect of the goods in order to be descriptive.
Information provided pursuant to such a request assists in the thorough examination of
applications and sometimes leads to the withdrawal of a refusal.