Chorus Call, Inc.

Trademark Trial and Appeal Board

May 22, 2013

No. 76702057 (T.T.A.B. May. 22, 2013)

Mailed:
May 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chorus Call, Inc.
________

Serial No. 76702057
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Ansel M. Schwartz, Esq. for Chorus Call, Inc.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Mitchell Front, Managing Attorney).
_______

Before Quinn, Zervas and Masiello, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Chorus Call, Inc. has appealed from the final refusal
of the examining attorney to register DATASHARE (in
standard character form) on the Principal Register as a
trademark for “software application for data conferencing
that allows conferees of an audio or video conference to
share data from their computer to any other conferee's
computer in the audio or video conference” in International
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Ser No. 76702057
2
Class 9.1 Registration has been finally refused pursuant to
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of a feature of its identified goods, namely,
that the goods permit users to share data. Additionally,
applicant claimed, in the alternative, acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), and the examining attorney maintains that
applicant's showing of acquired distinctiveness is
insufficient. Finally, applicant requested that if its
claim of acquired distinctiveness is not accepted, that its
proposed mark be registered on the Supplemental Register.
For the reasons set forth below, we affirm the refusal
to register and the examining attorney’s refusal to accept
applicant’s Section 2(f) showing. Applicant’s request in
the alternative to amend the application to seek
registration on the Supplemental Register is granted.
A mark is merely descriptive if it describes an
ingredient, quality, characteristic, function, feature,
purpose, or use of an applicant’s goods and/or services.
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420,

1 Application Serial No. 76702057, filed March 15, 2010, based
originally on Section 1(b) of the Trademark Act (intent-to-use).
Applicant filed a statement of use declaring first use and first
use in commerce on March 7, 2010, which the examining attorney
accepted.
Ser No. 76702057
3
1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009-10 (Fed. Cir. 1987). Generally, a mark
that merely combines descriptive words is not registrable
if the individual components retain their descriptive
meaning in relation to the goods and/or services and the
combination results in a composite mark that is itself
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) (holding SMARTTOWER merely descriptive of
“commercial and industrial cooling towers and accessories
therefor, sold as a unit”); In re Sun Microsystems, Inc.,
59 USPQ2d 1084 (TTAB 2001) (holding AGENTBEANS merely
descriptive of “computer software for use in development
and deployment of application programs on a global computer
network”).
DATASHARE is a combination of the terms “data”2 and
“share”;3 and applicant specifies in its identification of
goods that its software application “allows conferees of an
audio or video conference to share data.” Further,
applicant’s webpage, which is of record, states, “DataShare
is written in Java, and allows clients to share data (send
and receive) without having to know anything about the

2 Defined as “information in numerical form that can be digitally
transmitted or processed” in merriam-webster.com. See first
Office action.
3 Defined as “to partake of, use, experience, occupy, or enjoy
with others” in merriam-webster.com. See first Office action.
Ser No. 76702057
4
other clients.” The third-party evidence in the record
demonstrates use of “share” or “sharing” and “data”
adjacent to each other, or in close proximity to each
other, thereby informing consumers that data is transferred
or shared in the context of computer software.
Applicant argues that its mark “standing alone, does
not describe qualities, ingredients or characteristics of
the goods, and further does not even allow for a stretch of
imagination to figure out what the goods are with which the
market (sic) is associated, data conferencing.” Brief at
2. However, the determination of whether a mark is merely
descriptive is made in relation to an applicant’s goods
and/or services, not in the abstract. In re The Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219
(Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).
Applicant also argues that its mark “creates ambiguity
or incongruity, which requires purchasers and perspective
[sic] consumers to pause and reflect on the significance of
the words of the mark to even possibly attempt to
understand what are the associated goods.” Brief at 3.
Applicant has not identified the ambiguity or incongruity,
and one is not apparent to us.
Ser No. 76702057
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Because the combination of the descriptive terms
“data” and “share” does not create any identifiable
incongruity or separate non-descriptive meaning, the
compound mark DATASHARE is merely descriptive of a feature
of applicant’s goods.
Because we have concluded that applicant's mark is
merely descriptive of a feature or characteristic of its
services, we now consider applicant's claim – which is made
in the alternative - that its mark has acquired
distinctiveness.
It is applicant's burden to prove acquired
distinctiveness of a descriptive mark. Yamaha Int'l Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1006 (Fed. Cir. 1988) (applicant established acquired
distinctiveness in design); In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
Applicant relies on two declarations by Joseph A.
Onomastico, Jr. in support of its claim of acquired
distinctiveness. In his first declaration, Mr. Onomastico
states that “[b]etween approximately March, 2010 and the
end of July, 2010, applicant … expended $24,378.89 in
regard to advertising of the above-identified trademark”;
Ser No. 76702057
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and that “[b]etween approximately the beginning of January,
2010 and the end of July 2010, applicant … incurred
approximately $53,015.00 in costs creating and maintaining
the website through which the goods associated with the
above identified trademark are accessed.” In his second
declaration, Mr. Onomastico stated that applicant incurred
an additional $8,859.55 in expenses at a trade show in June
of 2011.
It is our studied determination that applicant’s
showing of acquired distinctiveness for the merely
descriptive term DATASHARE for “software application for
data conferencing that allows conferees of an audio or
video conference to share data from their computer to any
other conferee's computer in the audio or video conference”
falls short of the quantum of evidence required for a
showing of acquired distinctiveness for its merely
descriptive mark. Applicant has used its proposed mark for
a short period of time, since March 7, 2010. Additionally,
Applicant’s statement of “over $80,000 in establishing and
developing goodwill and secondary meaning” includes over
$50,000 in costs for creating and maintaining its website.
The cost of creating and maintaining the website in and of
itself does not allow us to gage how many consumers view
the webpage, or the extent of efforts taken by applicant to
Ser No. 76702057
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cause consumers to view the mark as a source indicator.
There is no indication as to the numbers of applicant’s
customers so that we may consider how many individuals
would likely have viewed the website, and how the proposed
mark is viewable on the website. As for applicant’s stated
advertising costs, there also is no information in the
record for us to judge whether in the field of applicant’s
goods the expenditures are significant (and they do not
appear to be significant). Regarding the expenditures at a
trade show, they are for only one trade show and there is
no indication as to how many people participated in the
trade show and likely were exposed to applicant’s mark.
Accordingly, we find that applicant has not established
that its proposed mark for the goods which are the subject
of applicant's application has acquired distinctiveness.
See Trademark Rule 2.41(a).
Decision: The refusal to register on the Principal
Register on the basis that applicant's mark is merely
descriptive under Section 2(e)(1), and the examining
attorney’s finding that applicant has failed to prove the
applied-for mark has acquired distinctiveness under Section
2(f) of the Trademark Act, are both affirmed. Applicant’s
alternative request to seek registration on the
Ser No. 76702057
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Supplemental Register is granted; the proposed mark will
proceed to registration on the Supplemental Register.