Conversive, Inc.

Trademark Trial and Appeal Board

Sep 13, 2006

No. 78211492 (T.T.A.B. Sep. 13, 2006)

Mailed: September 13, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Conversive, Inc.
___________

Serial No. 78211492
___________

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

Ronald L. Fairbanks, Trademark Examining Attorney, Law
Office 117 (Loretta Beck, Managing Attorney).
____________

Before Quinn, Walters and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Conversive, Inc. has filed an application to register
on the Principal Register the mark SEARCHAGENT for “computer
programs, namely an interactive natural language processing
knowledge base used to build and customize interactive
conversational mechanisms in the form of an animated or
virtual character, which assist, answer questions and
provide information to users of web sites, for use in real-
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 78211492
2
time Internet relay communications platforms,” in
International Class 9.1
The examining attorney has issued a final refusal to
register, under 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 in connection with its goods.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
The examining attorney contends that, in relevant part,
the term “search” is defined as “to examine a computer file,
disk, database, or network for particular information” and
the term “agent” is defined as “a program that works
automatically on routine tasks specified by a user, for
example, sorting email or monitoring the Internet,”2 and, as
such, the proposed mark is “simply a combination of two
descriptive terms in the computer industry.” (Brief,
unnumbered p. 5.) The examining attorney asserts that “the
term AGENT identifies an actual feature or technology
already in existence [and] the fact that applicant’s
software may represent a next generation or improvement upon
the technology already in existence in no way lessens the
descriptive nature”; and that “the composite wording on its

1 Serial No. 78211492, filed February 6, 2003, based on an allegation of
a bona fide intention to use the mark in commerce.

Serial No. 78211492
3
face immediately informs the prospective consumer that the
applicant’s software in some way, shape, or manner provides
an intelligent agent that has a search component or
capability.” (Id., unnumbered p. 7.)
In support of his position, the examining attorney
submitted excerpts from several websites, and examples are
shown below:

Intelligent-agents.com - lists “intelligent-
agents” partner sites, including “Agentland –
information resource on intelligent agents”

Copernic.com – identifies its product as follows:
“Copernic Agent – more than a simple Web search
engine – Copernic Agent takes Internet searching
to a whole new level: it doesn’t leave you only
with search results, its loaded with advanced
management features like filtering, grouping and
summarizing.”

Compinfo-center.com – identifies itself as
follows: “CompInfo – The Computer Information
Center - The top one-stop reference resource for
corporate IT, computers and communications”; under
the heading – “Intelligent Agents-Outline” it
includes the following statement: “Intelligent
agents are programs that carry out a task
unsupervised and apply some degree of intelligence
to the task. The intelligence may be pretty
minimal but often will include some degree of
learning from past experience. For example, an
agent that searches the Internet for interesting
material can be told by the user whether what it
found was interesting or not. In this way, it can
be trained to be more successful in the future. …
There is considerable ongoing research in this
field, with many exciting possibilities.”

Agentland.com – Under a tab entitled “learn” it
included the following listing:

2 The cited reference is www.encarta.msn.com/dictionary.
Serial No. 78211492
4
“Agent families” – “meet the families of agents
that live in AgentLand: find out what each one can
do for you and learn how to use them.” The listed
agents are:
Searchagents; Webmasteragents; Webagents;
Developanagent; Monitoringagents; Shopbots;
Virtualassistants; Algames
…
Under the Search agents category is the following
statement: Search agents improve your information
retrieval on the Internet. Use them to find your
way around the web easily, and quickly get to the
information you need.

En.Wikipedia.org – The following is the entry for
“Software Agent”: “in computer science, a software
agent is a piece of autonomous, or semi-autonomous
proactive and reactive, computer software. Many
individual communicative software agents may form
a multi-agent system.”

Answers.com – Computer Desktop Encyclopedia – the
term “search” is defined as follows: “1. To look
for specific data in a file or an occurrence of
text in a file. A search implies sequential
scanning of content or indexes in order to find
the results rather than a direct lookup. A search
on the web yields a list of web pages that contain
all the words in the search criteria. 2. The file
of search engine technologies.”

Verbots.com – Includes the following statement in
an advertisement for its product Verbot 4: “If
you’re interested in building your own exciting,
entertaining agents, then you’ll want to register
your Verbot 4. …
The Verbot Player allows you to interact with
intelligent agents.”

The examining attorney also included the results of an
Internet search using the Google search engine. The list is
not particularly informative due to the brevity of the
entries. The following are a few examples:

“…Personal search agent from Agents Technologies…”
Serial No. 78211492
5

“UB (Buffalo.edu) SOM Student Resources - … books
on software agents; agent application sites…”

“Botspot.com - …The latest sampling of new bots
and intelligent agents from the botspot report …
Fido is a personal search agent whose purpose is
…”

Applicant contends that “the examining attorney’s
conclusion of mere descriptiveness is based upon an over
simplistic and/or inaccurate understanding of the product at
issue” and describes its product as “software [that] enables
the purchaser to build and customize a virtual character
which responds, in a real-time conversational manner, to
inquiries made by the users of the purchaser’s web site.”
(Brief, p. 4.) Applicant acknowledges that the dictionary
definitions of the individual terms “search” and “agent”
submitted by the examining attorney are accurate, but
asserts that “together, they define a software product that
would automatically conduct searches [and] this does not
describe [applicant’s] product.” (Id.) Applicant states
that “at most, the mark SEARCHAGENT may convey a background
software routine used for searching” (id., p. 5). Applicant
seeks to distinguish its mark and goods from the mark and
goods involved in In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001)(AGENT BEANS merely descriptive of
identified software where “beans” defined as “application
development software” and “agent” defined as “software
routine that waits in the background and performs actions
Serial No. 78211492
6
when a specified event occurs”), cited by the examining
attorney, by arguing that the individual terms comprising
the composite AGENT BEANS merely described the particular
software, which applicant therein had conceded performed a
background routine function, and which applicant claims is
not the case herein.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it 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, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
Serial No. 78211492
7
Applicant admits that the definitions of “agent” and
“search” in the record are accurate and we find that the
evidence of record further supports the accuracy of those
definitions. While some of the evidence includes references
to “intelligent agents,” the individual term “agent,” as
used in the evidence, has the same meaning as “intelligent
agent.” Contrary to applicant’s contention, an agent is not
limited to a program that searches the Internet; rather, the
evidence of record indicates that an agent is semi-
autonomous software that automatically examines (i.e.,
“searches”) computer files, databases, etc. under certain
parameters to retrieve certain types of information. The
definition of “agent” submitted by the examining attorney
refers to the function of searching the Internet as an
example of, not a limitation on, the definition of an
“agent.” Moreover, combining the two terms into the
composite term SEARCHAGENT does not result in a term that
has a meaning different from, or incongruous with, the
meanings of the individual terms.3
Applicant’s software, as identified, essentially
creates a virtual character to interact with the users of
the software purchaser’s website and, using natural
language, answer the questions of the website user.

3 We also note that this conclusion is the same whether or not the terms
are merged into a single word or remain as two separate words in the
same order.
Serial No. 78211492
8
Applicant disputes that its software performs any automatic
routine tasks, as noted in the definition of the term
“agent,” and, thus, its mark is not merely descriptive.
However, it is only logical that, in order to answer the
website user’s questions, applicant’s software must include,
as an integral component, an “agent” that “searches” the
website, and/or other websites, for the answers to the posed
questions. This agent presumably routinely updates its
searches of the website and other sources even when asked
the same questions so that the answers reflect any updates
made to the information contained on the website or other
source. Without this component to its software, applicant’s
virtual character would be, perhaps, an innovative device,
but it would be of little use. Thus, we find that the
composite SEARCHAGENT exactly describes these significant
and integral features and functions of applicant’s software
as identified in the application.
We agree that, as the applicant suggests, the examining
attorney’s rationale for why the applied-for term is merely
descriptive is vague. However, the Board does not need to
find that the examining attorney’s rationale was correct in
order to affirm; rather, we can rely on a different
rationale. See, In re AFG Industries Inc., 17 USPQ2d 1162
(TTAB 1990). Based on our discussion herein, we conclude

Serial No. 78211492
9
that, when applied to applicant’s goods, the term
SEARCHAGENT immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s goods, as described above. 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 goods to readily
perceive the merely descriptive significance of the term
SEARCHAGENT as it pertains to applicant’s goods. While this
case may be different from In re Sun Microsystems Inc.,
supra, on its facts, the result is the same.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.