CA Think, Inc.

Trademark Trial and Appeal Board

Aug 31, 1999

No. 75046395 (T.T.A.B. Aug. 31, 1999)

Paper No. 13
DEB
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 31, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re CA Think, Inc.
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Serial No. 75/046,395
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Frederic M. Wilf of Saul Ewing Remick & Saul for CA Think, Inc.
Stanley I. Osborne, Jr., Trademark Examining Attorney, Law
Office 102 (Thomas Shaw, Managing Attorney).
_______
Before Hairston, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
CA Think, Inc., a Delaware corporation, has filed an
application1 for registration of the mark “PROFESSIONAL HELP
DESK” for “computer software and instructional manuals, sold
together as a unit, for the management, tracking and resolution
of support inquiries and requests for help regarding computer
technical issues.”2

1 The trademark application was actually filed by International
Data Operations, Inc., in 1996. However, during the prosecution of
this appeal, on April 10, 1998, the mark was assigned to CA Think,
Inc.
2 Serial No. 75/046,395, filed January 22, 1996, alleging use since
January 1, 1994.
Ser. No. 75/046,395
2
The Trademark Examining Attorney issued a final refusal to
register based upon Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark “PROFESSIONAL HELP
DESK” when used on this software, so resembles the registered
mark, “HELPDESK,” as applied to “computer programs for linking
work stations to provide in-house, end-user support” as to be
likely to cause confusion, or to cause mistake, or to deceive.3
The Trademark Examining Attorney also issued a final refusal to
register based upon Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s entire mark
is merely descriptive of the goods.
Applicant has appealed both bases of the final refusal to
register. Briefs have been filed,4 but applicant did not request
an oral hearing.
First, we will focus on the issue of likelihood of
confusion with the cited Trellis registration. The Trademark
Examining Attorney contends that the mere addition of a word to
a registered mark is not sufficient to overcome a likelihood of

3 Registration No. 1,548,090 issued on July 18, 1989 to Trellis
Software, Inc. The registration (hereinafter, the “Trellis
registration”) sets forth dates of first use of September 30, 1988; §8
affidavit accepted and §15 affidavit filed.
4 The Trademark Examining Attorney in his brief, and the applicant
with its reply brief, have continued to submit attachments as evidence
of their respective positions. We have not considered either group of
attachments since they do not comply with the established rule that
the evidentiary record in an application must be complete prior to the
filing of the notice of appeal. See 37 CFR 2.142(d), and In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Ser. No. 75/046,395
3
confusion when the marks have such similar connotations. He
points out that the goods of applicant and registrant are
substantially identical.
Applicant argues strenuously that the Trellis registration
should not stand as a bar to the instant application because the
term “Help Desk” is highly descriptive of this type of computer
programs. Applicant contends that the cited registration is not
enforceable, or if it is enforceable at all, it would be as a
single word (“HELPDESK”) and not as two separate words as
applicant seeks to register it (“HELP DESK”). Applicant also
points out that third-party registrations on the federal
register demonstrate the inconsistency of the position taken by
the Trademark Examining Attorney.5 Applicant argues that third
parties’ composite marks incorporating the word “HELP DESK” (or
“HELPDESK”) have registered in recent years despite the
existence of the Trellis registration. These third parties were
permitted to disclaim “HELP DESK” or “HELPDESK.” Furthermore,
applicant contends that the word “PROFESSIONAL” -- the prominent
first word in its mark -- is alone distinctive enough to serve

5 Applicant lists a small number of third-party registrations in
responses to Office actions and again in its briefs. However, in
reaching our decision, the Board is not compelled to even consider the
listed registrations as credible evidence of the existence of the
registrations so listed. In re Hub Distributing, Inc., 218 USPQ 284
(TTAB 1983). In order to make these third party registrations of
record during ex parte examination, soft copies of the registrations
or even photocopies of the appropriate U.S. Patent and Trademark
Ser. No. 75/046,395
4
as a source-identifier for goods in this field, and cites to
specific third-party registrations to demonstrate this point.6
In the course of rendering this decision, we have followed
the guidance of In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973), that sets forth
the factors which, if relevant, should be considered in
determining likelihood of confusion.
We turn first to a closer examination of the goods of
registrant and of applicant. Registrant’s goods are described
as “computer programs for linking work stations to provide in-
house, end-user support.” Applicant has identified its goods as
“computer software and instructional manuals, sold together as a
unit, for the management, tracking and resolution of support
inquiries and requests for help regarding computer technical
issues.” Both are goods in International Class 9, namely,
computer “programs” or computer “software.” Both listings
describe software applications being used in a computer-
networking environment. While using different wording, it is
clear both computer programs would be marketed to large
organizations that want to provide in-house technical assistance
more efficiently for their employees –- specifically, computer

Office electronic printouts must be submitted. See Weyerhaeuser Co.
v. Katz, 24 USPQ2d 1230 (TTAB 1992).
6 As noted above, these third-party registrations are not properly
of record in this case.
Ser. No. 75/046,395
5
end-users experiencing difficulties. Accordingly, looking at
the two identifications of goods, we agree with the Trademark
Examining Attorney that under trademark law, these goods must be
deemed to be substantially the same.
We turn next to a critical examination of the marks. It
appears that applicant has taken registrant’s mark, “HELPDESK,”
has altered it slightly by inserting a space between the word
“HELP” and the word “DESK,” and then has incorporated it into
its own mark by adding the word “PROFESSIONAL.” We find that
this new mark does not create a starkly different commercial
impression from that one takes away from the Trellis mark. For
example, customers of registrant’s “HELPDESK” software may well
assume that applicant’s “PROFESSIONAL HELP DESK”7 software is a
new release or an updated version of the “HELPDESK” software.
Applicant has repeatedly taken the position -- during the
prosecution of this application before the Trademark Examining
Operations and again during this ex parte appeal before the
Board –- that the Trellis registration is unenforceable because
the term “help desk” (or “help-desk” or “helpdesk”) is highly
descriptive in this field. However, Section 7(b) of the
Trademark Act, 15 U.S.C. §1057(b), provides that a certificate

7 We should also note that while applicant’s drawing does indeed
show the mark as “… HELP DESK” (two words), the predominant commercial
impression one takes away from applicant’s actual usage of this mark
on the specimens of record is of a single word “… HELPDESK.”
Ser. No. 75/046,395
6
of registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in commerce in connection with
the goods or services specified in the certificate.
Accordingly, during this ex parte prosecution, applicant will
not be heard on matters that constitute a collateral attack on
the cited registration (e.g., that the mark is unenforceable
because it is merely descriptive or even generic). See In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385,
1387, 165 USPQ 515, 517 (CCPA 1970); In re Pollio Dairy Products
Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).
In any event, notwithstanding any alleged weakness in the
cited mark, even weak marks are entitled to protection against
the registration by a subsequent user of a substantially similar
mark for closely related goods.
Turning to the issue of descriptiveness, we examine the
evidence placed into the record by the Trademark Examining
Attorney. The initial LEXIS/NEXIS search for the phrase
“professional help desk” resulted in fifty-two stories, of which
only the first twenty-five were attached to the initial Office
action. Of these stories, at least twenty-two reflect proper
trademark usage of the term, referring to applicant and/or its
Ser. No. 75/046,395
7
software products. Viewed in a light most favorable to the
Office, only one reporter/writer used the term “professional
help desk” in an arguably descriptive manner. Similarly, the
evidence of record later placed into the file (i.e., up through
the time of the final refusal to register) did not do anything
to strengthen his conclusion that this entire phrase is merely
descriptive.
The Trademark Examining Attorney also attached to the
initial Office action three separate dictionary entries defining
the words “professional,” “help,” and “desk.” He then argues
that taking the ordinary meaning of each of these entries singly
and putting them into a composite phrase, the resulting meaning
is merely descriptive of the goods. However, we find neither
the explanations consistent nor the evidence convincing.
There is no evidence in the record, for example, to show
that “professional” is used in the industry to describe a broad
class of software. Additionally, at various times in the ex
parte prosecution of this application, the Trademark Examining
Attorney attempts to explain why the word “Professional” is
descriptive in the context of this composite mark. However, in
looking at the evidence, none of the cited uses conveys an
immediate or precise significance with respect to applicant's
software. See U.S. West Inc. v. BellSouth Corp., 18 USPQ2d
1307, 1312 (TTAB 1990) [“THE REAL YELLOW PAGES” is not merely
Ser. No. 75/046,395
8
descriptive of classified telephone directory since word “REAL”
does not “…convey any immediate or precise significance with
respect to applicant's goods…”].
We find that the word “Professional” does not convey an
immediate significance as to specific members of a corporate
call center’s staff (e.g., analysts, programmers, administrators
and/or managers). The word “Professional” does not convey an
immediate significance as to the actual computer end-users
within the corporate customer’s organization. And it does not
convey anything precise as to a feature of the goods themselves
– i.e., the advanced capabilities of the software itself to
supplant call center support personnel altogether. When this
lack of immediacy and precision on the part of the word
“Professional” alone is combined with the evidence of uses of
this combined term (e.g., in periodicals, whenever the three
word term “Professional Help Desk” appears, it refers
overwhelmingly to applicant and/or applicant’s products), it
casts doubt on the Office’s conclusion. Accordingly, based
solely upon the record we have before us, we harbor doubt about
whether this term is merely descriptive. It has long been
recognized that there is a thin line separating highly
suggestive and merely descriptive designations. In a case where
reasonable persons may differ, it has been the practice of this
Board to resolve such doubt in applicant's favor and publish the
Ser. No. 75/046,395
9
mark for opposition purposes (unless, of course, like the
instant case, the alleged descriptiveness issue is not the sole
impediment in the case). Accordingly, we reverse the refusal to
register on the basis of mere descriptiveness.
Decision: The refusal to register based upon likelihood of
confusion is affirmed. The refusal to register based upon mere
descriptiveness is reversed.
P. T. Hairston
D. E. Bucher
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board