Conversive, Inc.

Trademark Trial and Appeal Board

Aug 17, 2006

No. 78240383 (T.T.A.B. Aug. 17, 2006)

Mailed:
17 August 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Conversive, Inc.
________

Serial Nos. 78240383 and 78240385
_______

Kent E. Baldauf, Jr. of The Webb Law Firm, P.C. for
Conversive, Inc.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 22, 2003, applicant (Conversive, Inc.)
applied to register two marks, ASSISTED RESPONSE AGENT
(Ser. No. 78240383) and ASSISTED RESPONSE (Ser. No.
78240385), in typed or standard character form, on the
Principal Register for goods ultimately identified as
follows:
Computer programs, namely an interactive natural
language processing knowledge base used to build and
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. Nos. 78240383 and 78240385
2
customize interactive conversational mechanisms in the
form of an animated or virtual character which assists
[sic], answer questions and provide information to
users of web sites, for use in real-time Internet
relay communications platforms in Class 9.1

The applications are based on applicant’s stated bona fide
intention to use the marks in commerce.
The examining attorney refused to register the marks
on the ground that the marks ASSISTED RESPONSE AGENT and
ASSISTED RESPONSE are merely descriptive of the goods. 15
U.S.C. § 1052(e)(1). After the examining attorney made the
refusals final, these appeals followed. On March 16, 2006,
the board granted the examining attorney’s request to
consolidate the appeals. Inasmuch as the records and

1 In its requests for reconsideration, applicant offered
conditional amendments that were accepted by the examining
attorney but did not result in the allowance of the applications.
In their appeal briefs, the examining attorney and applicant
refer to the goods in the 78240383 application as they are set
out above. Accordingly, although the amendment was stated to be
conditional, it is clear that applicant and the examining
attorney have treated this identification as the operative one,
and we have done so also. In the 78240385 application, applicant
refers to the earlier identification of goods:
Computer programs, namely an interactive natural language
processing knowledge base used to build and customize
interactive conversational mechanisms which assist, answer
questions and provide information to users of web sites,
for use in real-time Internet relay communications
platforms.
The brief goes on to explain that the amendment “was dependent
upon allowance by the Examining Attorney” (Brief at 2 n.1). The
78240385 conditional amendment also specified that the web sites
were “relating to higher education admissions and student loan
information.” The outcome of this case does not depend on which
version of the identification of goods we consider and we will
refer to the relevant portion of the identifications of goods in
our discussion.
Ser. Nos. 78240383 and 78240385
3
issues are similar, we will refer to the record in the
78240383 application unless we specify otherwise.
The examining attorney’s position (Brief at unnumbered
p. 4) is that “the mark ASSISTED RESPONSE AGENT conveys to
consumers that goods are used for providing assisted
responses through an agent. The mark ASSISTED RESPONSE
conveys to consumers that a function of the goods is the
provision of assisted responses.” The examining attorney
relies on dictionary definitions and Internet and
electronic database articles to support her refusals.
Applicant maintains that “the words ‘assisted,’ ‘response’
and ‘agent’ do not describe Applicant’s software product.
Likewise, the various third party articles do not use the
words to describe a product of the type offered by
Applicant under its mark.” Brief at 4.
The examining attorney has included with her first
Office action definitions of the terms in the marks:
Assisted – To give help or support to, especially as a
subordinate or supplement; aid.

Response – 1. The act of responding. 2. A reply or an
answer.

Agent – 1. One that acts or has the power to act. 2.
One empowered to act or to represent another. An
author’s agent; an insurance agent. 3. The means by
which something is done or caused; instrument.

Ser. Nos. 78240383 and 78240385
4
The examining attorney also included this definition
of “agent” with the final Office action: “a software
routine that waits in the background and performs an action
when a specified event occurs. For example, agents could
transmit a summary file on the first day of the month or
monitor incoming data and alert the user when a certain
transaction has arrived.”
The examining attorney submitted various excerpts from
the Internet and an electronic database of articles that
show use of the term ASSISTED RESPONSE. We set out some
examples below with emphasis added.
Pilner.net Assisted Response System is multi-platform
compatible. CRM system designed to help you quickly
respond to incoming e-mail. Capabilities such as bulk
mailing, bounce detection, and extensive reporting.
Assists the operator in selecting the proper response
for each e-mail, from a library of preconfigured
responses.
www.scripts.com

Insight RT – Knowledge Management
Use of these automated channels (such as e-mail auto-
response, web self-help, customer feedback, online
surveys, etc.) is significantly less expensive than an
agent-assisted response.
www.realmarket.com

Numerous applications within EnsemblePro – including
predictive dialing, email auto and assisted response,
coordinating voice and data transfers and screen pops.
www.tmcnet.com2

2 Similar information was contained in the Business Wire articles
of November 12 and 19, 2002.
Ser. Nos. 78240383 and 78240385
5
If Edify E-Mail only understands part of a message, it
will route it to a live agent with a suggested
response for the part it did understand. For messages
which need live interaction, Edify E-Mail offers
assisted response capability as well as an authoring
tool, complete with response repository capabilities.
www.phoenixcti.com

Firepond’s Answer … enables Saga to process incoming
emails from its customers and web site visitors faster
and more efficiently with the direct and assisted
response functionality in Answer, its email management
and automation product.
Business Wire, December 6, 2001.3

All responses are now stored in a single response
library that is used both by the Intelligence Engine
for automated responses as well as by the Agent
Desktop for CSR assisted responses.
Business Wire, June 26, 2002.

The cost of an automated e-mail transaction is less
than 10 percent of the cost of an agent-assisted
response.
ASAP, February 1, 2001.

Chordiant also announce[d] the availability of
Chordiant Automated Response and Chordiant Assisted
Response.
Software World, January 1, 2001.

Chordiant Knowledge Base uses a sophisticated
knowledge engine to deliver the most relevant answers
to consumer questions and delivers these responses via

3 “[W]e believe that communications have changed dramatically
during the past fifteen years such that by now it is by no means
uncommon for even ordinary consumers (much less sophisticated
doctors and researchers) to receive news not only via tangible
newspapers and magazines, but also electronically through
personal computers. Thus, it is much more likely that newswire
stories will reach the public because they can be picked up and
‘broadcast’ on the Internet. In short, while we are not saying
that newswire stories are of the same probative value as are
stories appearing in magazines and newspapers, we think that the
situation has changed such that said newswire stories have
decidedly more probative value than they did” previously. In re
Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003).
Ser. Nos. 78240383 and 78240385
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Automated Response, Assisted Response or Live Response
applications.
“Company Profile – Chordiant,” CRMAdvocate website.

NetworkDirect’s Eagle Email Introduces Eagle Response;
Email Assisted Response System Designed for Businesses
of Any Size.
Business Wire, October 30, 2000.

Existing storage resources are frequently stretched to
meet increasing application demands. To avoid
outages, limits can be defined to trigger manual,
automated, or automation-assisted responses.
ASAP, May 1, 2003.

Repair and maintenance of the systems are reportedly
supplemented by a customer assistance center that
users anywhere in the U.S. can reach by dialing a
toll-free number. Known as the Computer-Assisted
Response for Emergency Service, the hotline provides a
means for remotely answering customer questions and
diagnosing systems problems.
ComputerWorld, January 4, 1982.

The customer service solutions emerging to fill this
niche have their roots in several disciplines in
computer science. They’re enjoying a resurgence in
applications including knowledge management, user-
interface design, case-based reasoning, and good old-
fashioned FAQ lists. Most of these solutions involve
one or more of three types of technologies:
- a knowledge base with access to experts and a
system to present the collected questions
online;
- an email management system that can include
some level of automated or assisted response;
- live chat.
Sims, “You Asked For It,” NewArchitect website.

Powered by Banter’s Relationship Modeling engine
(RME), the leading natural language for CRM
applications, Reply v4.5 provides unmatched accuracy
and ease of use for intelligent response, assisted
response, and rules-based routing.
Banter website, Press Release, June 5, 2001.

Ser. Nos. 78240383 and 78240385
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The examining attorney also points to applicant’s
literature that describes its products.
The Call Center is ground zero for your customer care…
But you now have a new challenge. The Internet. Your
customers are going there. You know that there are
big cost-saving opportunities. But shouldn’t there be
a way to lay that last mile of railroad track that
divides these two essential functions? Shouldn’t you
be able to use all of your human, data and systems
resources in an online environment and gain the best
of both worlds? Now you can.

The AssistedResponseAgent Solution.

AssistedResponseAgent is a revolutionary product that
for the first time integrates all of the human,
process and data resources of the Call Center with the
cost savings and scalability of the Internet.

Automatic escalation to a live online CSR.

AssistedResponseAgent has all of the features and
capabilities of AnswerAgent. But it provides more as
well. For those companies that want to provide that
level of customer service that only human beings are
capable of, the AssistedResponseAgent uses
Conversive’s patent pending escalation process to
seamlessly refer any question not immediately
answerable by the Agent’s NLP [natural language
processing] engine to a CSR [customer service
representative]. The CSR receives the question
through Conversive’s advanced message controller…
CSR’s are provided with a highly advanced interface
that includes short cuts, editing capabilities and
suggestions from our NLP engine. Once the reply is
sent, the engine takes over the conversation again,
and continues to answer every question that it can.

Based on this evidence, the examining attorney
concludes that the marks ASSISTED RESPONSE and ASSISTED
RESPONSE AGENT are merely descriptive of applicant’s goods.
Ser. Nos. 78240383 and 78240385
8
Applicant, on the other hand, has responded to this
evidence by arguing that the “mark ‘ASSISTED RESPONSE
AGENT’ may convey a ‘response’ that is assisted in some
way. However, it does not describe a software product that
enables the development of an animated or virtual character
for interacting with users of a web site in a
conversational matter.” Brief at 6. See also 78240385
Brief at 5. Regarding the examining attorney’s evidence,
applicant makes several observations (Brief at 7-8):
Specifically, in the article “Concerto Software
Launches EnsemblePro 5.0,” the words “assisted
response” are used in connection with coordinated
voice and data transfers and screen pops. In the
article “Firepond’s eService Performer Helps Saga
Manage Interaction with “Silver Surfers”; Top UK Web
Site for Over-50s Has Complete View of its Customers,”
the words “assisted response” are used in a discussion
of the processing of incoming e-mails in an e-mail
management product. In the article “E-Mail Management
Technologies: A Purchaser’s Primer; Technology
Information,” the words “assisted response” are used
in a discussion of automated e-mail message systems.
The article “NetworkDirect’s Eagle Email Introduces
Eagle Response; E-mail Assisted Response System
Designed for Businesses of Any Size” describes a
system for reducing time for e-mail replies by using
pre-developed messages to customer questions. The
article “maximize SAN and NAS ROI with SRM: matching
application requirements with appropriate storage
resources enables administrators to fully realize the
value of networked storage; storage resource
management,” the words “assisted response” are used in
connection with notification of instances where data
storage capacity is surpassed. In the article
“Firepond Delivers Intelligent Multi-Channel Contact
Center with New eServicePerformer 2002; Combines fast
deployment with advanced intelligence and easy
integration,” the words “assisted response” are used
Ser. Nos. 78240383 and 78240385
9
in the discussion of a customer assistance product for
e-mail responses. The article “E-Mail Management
Technologies: A Purchaser’s Primer; Technology
Information” uses the words “agent-assisted response”
to describe a method of sending e-mail responses to e-
mail inquiries with human involvement. The article
“Chordiant Knowledge management System; Management
News and Products; Brief Article; Product
Announcement” refers to words “assisted response” in a
product name. This likewise appears to be product for
responding to e-mails in a written form. The article
“Marks Debut in DP; Savin Comes Out With Two OA
Systems,” the words “computer-assisted response” are
used in connection with a hotline for remote repair
and maintenance problems.

Applicant also argues (Brief at 9) that in the
CRMAdvocate article the “term is used to describe the
asserted outdated approach of having a human ‘agent’ handle
the process” and, in the Concerto article, the term is
“used to describe automated voice and data transfers for
the EnsemblePro product sold to multimedia contact
centers.” In addition, applicant maintains that the
“Phoenix CTI site includes a description of a product
called ‘Edify E-Mail.’ It is noted that this e-mail
product ‘offers assisted response capability’ due to its
ability to suggest response to humans responding to an e-
mail.” Brief at 10.
We begin our analysis by noting that a mark is merely
descriptive if it immediately describes the ingredients,
qualities, or characteristics of the goods or services or
if it conveys information regarding a function, purpose, or
Ser. Nos. 78240383 and 78240385
10
use of the goods or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See
also In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
A term is merely descriptive if it describes a single
significant quality or property of the goods. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004) (“A mark is merely descriptive if it
consists merely of words descriptive of the qualities,
ingredients or characteristics of the goods or services
related to the mark. Thus, a mark is merely descriptive if
it immediately conveys knowledge of a quality or
characteristic of the product. A mark may be merely
descriptive even if it does not describe the full scope and
extent of the applicant’s goods or services”) (citations
and internal quotation marks omitted). See also In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987)
and Meehanite Metal Corp. v. International Nickel Co., 262
F.2d 806, 120 USPQ 293, 294 (CCPA 1959). In
descriptiveness cases, the test is not whether potential
customers can guess what the goods or services are when
they consider the mark in the abstract. Instead, we must
consider the mark in relation to the goods or services to
Ser. Nos. 78240383 and 78240385
11
determine if the term is merely descriptive. Abcor, 200
USPQ at 218.4
At this point, we look at applicant’s goods because we
must determine the question of descriptiveness in the
context of these goods. Applicant’s goods are computer
programs, namely an interactive natural language processing
knowledge base used to build and customize interactive
conversational mechanisms which assist, answer questions
and provide information to users of web sites. These
programs link automated responses with human interaction.
Applicant’s literature indicates that its program involves
a computer program that responds to a customer’s problem
with a series of questions. However, it has the capacity
“to seamlessly refer any question not immediately
answerable by the Agent’s NLP [natural language processing]
engine to a customer service representative.” When the
representative is dealing with the customer, the program
provides the representative with “short cuts, editing
capabilities and suggestions” to assist the representative
in responding to the customer. After the representative
resolves the question that the program could not answer,
applicant’s program takes over the process again.

4 We have not considered applicant’s cited non-precedential board
opinions. TBMP § 103 (2d rev. 2004).
Ser. Nos. 78240383 and 78240385
12
Therefore, applicant’s programs assist representatives to
provide a response to customers. In addition, applicant’s
software includes an agent function where not only does
applicant’s software act as an “agent” for the business but
it also waits in the background and performs an action when
a specified event occurs such as responding to specific
consumer inquiries.
In the field of customer service, the term “assisted
response” has traditionally been used to describe programs
that assist representatives or programs that respond to
customers. Applicant’s literature (Denial of
Reconsideration attachment) describes the evolution of the
customer service center.
Customers increasingly choose the Internet as their
first point of customer contact. This should save
companies money, since the Internet provides the
single best opportunity to provide excellent service
to customers in a scalable, repeatable way.
Unfortunately, most companies are not servicing their
customers well on the Internet, so customers resort to
other, more expensive channels such as telephone and
email…

Our solutions provide a highly flexible customer
interface that guides your customers through their
problems with the same type of conversational process
that a CSR would use. We provide your customers with
web pages, forms, graphics, and data as appropriate.
We can solicit information from your customers and
write that information to the appropriate database or
CRM systems, so that it will be available in the
appropriate form for further action.

Ser. Nos. 78240383 and 78240385
13
The term “assisted response” is used to describe
various computer programs that assist customer service
representatives in responding to customer’s inquiries. For
example, the NewArchitect website refers to three solutions
to customer service
- a knowledge base with access to experts and a
system to present the collected questions
online;
- an email management system that can include
some level of automated or assisted response;
- live chat.

Applicant’s programs combine the Internet with a live chat.

Another program, Pilner.net Assisted Response System,
“assists the operator in selecting the proper response for
each e-mail.” Other sites, www.realmarket.com and
www.tmcnet.com, also refer to an “assisted response” by a
human agent. The Edify E-Mail program is an email program
that will route a message to a live agent with a suggested
response. The program “offers assisted response
capability.” www.phoenixcti.com. The Firepond software
also has “assisted response functionality.” Business Wire,
December 6, 2001. The Banter engine, which is also a
natural language engine for customer relations management
applications, features an assisted response feature.
While applicant quibbles with the examples that the
examining attorney has introduced into the record, the
Ser. Nos. 78240383 and 78240385
14
evidence nonetheless remains relevant to the question of
descriptiveness here. Several examples involve an email
system with a live response feature. This system is
similar to applicant’s Internet system with a live response
feature. Furthermore, in order to establish a prima facie
case of descriptiveness, it is not incumbent on the
examining attorney to establish that an applicant’s term is
used by others on goods that are identical to applicant’s.
The question is whether potential purchasers, when they
view applicant’s goods, would understand that its mark
describes a feature or characteristic of the goods. Here,
the examining attorney has shown that various customer
service management tools, including software that has a
live response feature, use the term “assisted response.”
This evidence is relevant to understanding how potential
purchasers of applicant’s computer programs would
understand the term ASSISTED RESPONSE.
While applicant points out that its marks are not
found in the dictionary, we cannot agree with its
conclusion that the terms are “made up and arbitrary.”
Brief at 4. The words clearly have a meaning that would be
relevant to applicant’s goods, and the evidence shows that
others use the term “Assisted Response” in a descriptive
manner. While applicant appears to agree that “Assisted
Ser. Nos. 78240383 and 78240385
15
Response” “may convey a ‘response’ that is assisted in some
way,” applicant argues that the term “does not describe a
software product that enables the development of an
animated or virtual character for interacting with users of
a web site in a conversational manner.” Brief at 6.
However, as we indicated earlier, to be descriptive, a mark
does not have to describe the full scope and extent of the
applicant’s goods. Oppedahl & Larson, 71 USPQ2d at 1371.
Applicant’s mark is descriptive of a feature of applicant’s
goods inasmuch as it immediately informs prospective
purchasers of the fact that its programs have an assisted
response feature.
We also emphasize that the definitions of applicant’s
terms ASSISTED RESPONSE and ASSISTED RESPONSE AGENT are
themselves evidence of the descriptiveness of the term.
Indeed, applicant’s programs assist customer service
representatives to respond to customers and the program
acts as an agent or representative of the company. The
evidence also makes it clear that the term “Assisted
Response” itself is used in the customer service industry.
The terms ASSISTED RESPONSE AGENT and ASSISTED RESPONSE
immediately inform prospective purchasers that the program
assists a company’s employees who are responding to
Ser. Nos. 78240383 and 78240385
16
customers. When we view the marks in this context, we
conclude that the marks are merely descriptive.

Decision: The examining attorney’s refusals to
register the marks ASSISTED RESPONSE and ASSISTED RESPONSE
AGENT on the ground that the marks are merely descriptive
of the involved goods are affirmed.