Cooperative Educational Service Agency No. 6Download PDFTrademark Trial and Appeal BoardMar 18, 2015No. 85919229 (T.T.A.B. Mar. 18, 2015) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 18, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Cooperative Educational Service Agency No. 6 _____ Serial No. 85919229 _____ Joseph S. Heino of Davis & Kuelthau, S.C., for Cooperative Educational Service Agency No. 6. Dominic Ferraiuolo, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Quinn, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Cooperative Educational Service Agency No. 6 (“Applicant”) seeks registration on the Principal Register of the mark CMS4SCHOOLS (in standard characters) for “computer software that provides web-based access to applications and services through a web operating system or portal interface,” in Class 9.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on 1 Application Serial No. 85919229 was filed on April 30, 2013, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as May 2006. Serial No. 85919229 - 2 - the ground that Applicant’s mark CMS4SCHOOLS merely describes “content management system” software designed to be used by schools. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. A term is merely descriptive of goods or services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the goods or services 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 Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and every specific feature of the goods or services in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the relevant marketplace. See In re Serial No. 85919229 - 3 - Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). See also In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely Serial No. 85919229 - 4 - descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, non-descriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing head at one end, the head being of solid uninterrupted construction without prongs”). “If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term identifies, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also In re Shutts, 217 USPQ at 364-365 ; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). The term “CMS” is defined, in relevant part, as an abbreviation for “content management system.”2 A “content management system” is software that allows a data base manager to create functional websites, more specifically defined as follows: Software that is used to manage text, images, audio and video content from a Web site. It provides a mechanism 2 AcronymFinder.com attached to the August 7, 2013 Office Action. Serial No. 85919229 - 5 - for submission of material, storage and maintenance, as well as the distribution and conversion of HTML pages for viewing. … a content management system (CMS) may also provide all the programs necessary for Web site development. It may include or accept plug-ins that provide banner advertising, shopping carts, blogs, wikis, newsletters, opinion polls, chat rooms and forums. Some CMS systems may be able to publish not only to a Web site, but to a CD/DVD or print as well.3 As part of its February 6, 2014 Response to an Office Action, Applicant submitted a substitute specimen of use. An excerpt from the specimen is shown below: 3 TheFreeDictionary.com derived from the COMPUTER DESKTOP ENCYCLOPEDIA (1981- 2013) attached to the August 7, 2013 Office Action. Serial No. 85919229 - 6 - A customer testimonial included in the specimen of use noted above is set forth below: Applicant’s mark CMS4SCHOOLS is a compressed version of the term CMS 4 SCHOOLS without a space between the terms “CMS,” “4,” and “SCHOOLS.” It is clear from the evidence that CMS4SCHOOLS will be understood by the intended users of Applicant’s software that the mark refers to content management software for use by schools. The combination of CMS, 4, and SCHOOLS to form Applicant’s mark does not evoke a new and unique commercial impression. Numerous cases have held that telescoping two words which as a whole are merely descriptive of the goods or services into a single term does not avoid a finding of mere descriptiveness for the combined term. See, for example, In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (FIRSTIER, the equivalent of “first tier,” is merely descriptive of banking services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897, n.2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian art.’”); In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE merely descriptive of wire rope); In re Serial No. 85919229 - 7 - Gagliardi Bros., Inc., 218 USPQ 181 (TTAB 1983) (BEEFLAKES is merely descriptive of thinly sliced beef); and In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED is merely descriptive of jellies and jams). The use of the numeral “4” in lieu of the word “For” does not turn Applicant’s mark into a suggestive term because a slight misspelling of a word will not turn a descriptive term into a non-descriptive mark. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 39 USPQ 402 (1938) (NU-ENAMEL; NU found equivalent of “new”); In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is no legally significant difference here between ‘quik’ and ‘quick’”); In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding URBANHOUZING, in standard character form, would be perceived by consumers as the equivalent of the descriptive term URBAN HOUSING, rather than as including the separate word ZING). We must also consider that Applicant's mark, presented in standard character form, is not limited to any special form or style as displayed in connection with its software.4 See Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) (“The drawing in the instant application shows the mark typed 4 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (January 2015). Serial No. 85919229 - 8 - in capital letters, and … this means that [the] application is not limited to the mark depicted in any special form.”). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not limited to any particular rendition of the mark); and INB National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992). Although as indicated by its specimen, the letters CMS are depicted in a different color than 4SCHOOLS creating a visual separation between the terms, it is clear from our precedents that when a mark is presented in standard character form, the Board must consider all manners in which Applicant could depict its mark. In view of the foregoing, we find that Applicant’s mark CMS4SCHOOLS used in connection with a content management system for schools immediately and directly informs purchasers that Applicant’s software is “computer software that provides web-based access to applications and services through a web operating system or portal interface.” See In re Cox Enterprises, Inc., 82 USPQ2d 1040 (TTAB 2007) (applicant's proposed mark THEATL is merely descriptive of applicant's magazines, newspapers, and directories, since (i) at least one class of relevant purchasers are residents of Atlanta, Georgia, and visitors to Atlanta area, (ii) the evidence of record shows that term THE ATL would be recognized by Atlanta residents and visitors as nickname for Atlanta, (iii) THE ATL describes significant feature or characteristic of applicant's publications, which will feature, in part, news, activities, events, and attractions of interest to residents of Atlanta and tourists and visitors, and (iv) Serial No. 85919229 - 9 - because THEATL is simply a compressed version of THE ATL that is equivalent in sound, meaning, and impression, it is equally descriptive). Applicant argues that consumers will utilize a multistage reasoning process to understand that the CMS portion of the mark CMS4SCHOOLS, both individually and collectively, refers not just to computer software but to content management system software.5 Although Applicant contends that the generality of the description of goods in the application defeats the descriptiveness claim, we find that the breadth of Applicant’s description of goods, “computer software that provides web-based access to applications and services through a web operating system or portal interface,” encompasses content management software. This is corroborated by Applicant’s substitute specimen of use which states that CMS4SCHOOLS is a “Web site content management system” and the customer testimonial stating that the Arrow School District was “looking for a content management system that would be easy for teachers to use.” Applicant also contends that the mark is not merely descriptive because an ordinary consumer upon encountering the mark would not know anything about the goods. At best, the Applicant’s Mark may convey some sort of connection to a school-related user, but there is nothing in the mark which describes Applicant’s goods, namely, computer software. An ordinary consumer simply could not imply that the goods are computer software merely by looking at the mark and, more importantly, knowing that the goods are computer software, the same consumer would not know the purpose to which the software is put, 5 Applicant’s Reply Brief, p. 2. Serial No. 85919229 - 10 - who would use it, who would benefit by its use, what system or platform it encompasses, what grade levels it may apply to and why someone would use it and to what result or benefit. In short, the mark is still suggestive because the goods, i.e., computer software, remain unknown to the person seeing only the mark.6 However, as indicated above, the test is not whether the consumer can guess what the goods are by looking at the mark; the question is whether someone who knows what the goods are will understand the mark to convey information about them. In this regard a consumer shopping for “computer software that provides web-based access to applications and services through a web operating system or portal interface” upon encountering the mark CMS4SCHOOLS will know without the need for any mental gymnastics or application of logic that the mark merely describes a content management system for schools. Finally, Applicant asserts that “[t]here are any number of ‘4-something’ marks that have not been deemed descriptive, including many in Int’l Class 9, for which Applicant has previously provided during prosecution of this application.”7 It is well settled that the Board must decide each case on its own merits. In re Owens- Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir. 1985). Even if some prior registrations had some characteristics similar to Applicant’s mark, the PTO's allowance of such prior registrations does not bind the Board. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). In this case, while the record contains many prior registrations that include the “4 6 Applicant’s Brief, p. 6. 7 Applicant’s Brief, p. 8. Applicant submitted “4-something” formative marks in its February 6, 2014 and August 28, 2014 Responses to Office Actions. Serial No. 85919229 - 11 - something” formative, these registrations do not conclusively prove that the mark CMS4SCHOOLS, in its entirety, is not merely descriptive. Decision: The refusal to register Applicant’s mark CMS4SCHOOLS is affirmed. Copy with citationCopy as parenthetical citation