Cooperative Educational Service Agency No. 6Download PDFTrademark Trial and Appeal BoardMar 18, 2015No. 85919183 (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. 85919183 _____ 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 CURRICULUM4SCHOOLS (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. 85919183 was filed on April 30, 2013, under Section 1(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a), based upon Applicant’s claimed use of its mark anywhere and in commerce since 2009. Serial No. 85919183 - 2 - the ground that Applicant’s mark CURRICULUM4SCHOOLS merely describes the nature, purpose, function and intended users of Applicant’s software, namely, applications for managing, mapping, accessing and working on curriculum for schools.2 The Trademark Examining Attorney also refused to register Applicant’s mark on the ground that the original specimen of use and the substitute specimens of use do not show Applicant’s mark in use in commerce as a trademark. Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127; 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a). 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 merely descriptive refusal to register, and reverse the refusal grounded on the insufficiency of the specimens. A. Whether Applicant’s Mark Is Merely Descriptive? 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, 2 Trademark Examining Attorney’s Brief, p. 3 [unnumbered]. Serial No. 85919183 - 3 - 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 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). Serial No. 85919183 - 4 - 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 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”). Serial No. 85919183 - 5 - “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 word “Curriculum” is defined as “all the courses of study offered by an educational institution” and “a group of related courses, often in a special field of study.”3 Applicant submitted a document it identified as a “website page offering the product” as its original specimen of use. The web page is displayed below: 3 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2011). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85919183 - 6 - Applicant submitted a substitute specimen comprising an excerpt from its 2011- 2012 Products and Services Book as shown below:4 Applicant submitted a second substitute specimen comprising “website screen shots.” An excerpt from the first screen shot is displayed below:5 4 February 7, 2014 Response to Office Action. 5 August 28, 2014 Response to Office Action. Serial No. 85919183 - 7 - At the outset, we must 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.6 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 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 specimens of use and 2011-2012 Products and Services Book, the mark is displayed in upper and lower case letters as Curriculum4Schools creating a visual separation between the terms, it is clear from our precedents that when a mark is 6 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. 85919183 - 8 - presented in standard character form, the Board must consider all manners in which Applicant could depict its mark.7 Thus, Applicant’s mark CURRICULUM4SCHOOLS is a compressed version of CURRICULUM 4 SCHOOLS without a space between the terms. It is clear from the way Applicant displays its mark CURRICULUM4SCHOOLS that Applicant intends to engender the commercial impression that its mark refers to a curriculum software application used by schools. The combination of the terms “CURRICULUM,” “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 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). In this case, Applicant has telescoped three terms instead of two, but the legal analysis remains the same. 7 In addition, the webpages feature screen shots that display the word “Curriculum” in a different color than the term “4Schools” further differentiating the terms. Serial No. 85919183 - 9 - 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). In view of the foregoing, we find that Applicant’s mark CURRICULUM4SCHOOLS used in connection with “computer software that provides web-based access to applications and services through a web operating system or portal interface” directly conveys to potential purchasers the nature of Applicant’s web-based curriculum content software application and the users for whom it is intended (schools). 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, Serial No. 85919183 - 10 - (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) 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 its mark is suggestive because the composite mark CURRICULUM4SCHOOLS does not have a precise connotation and does not immediately describe with particularity the goods.8 In the present case, the meaning of the terms “CURRICULUM” and “SCHOOLS” are general enough that an ordinary consumer would not generate the immediate and direct idea of the nature of the goods which is necessary to cast the mark as merely descriptive.9 Applicant’s argument is based on the false premise that its mark is CURRICULUM SCHOOLS rather than CURRICULUM4SCHOOLS. When used in connection with “computer software that provides web-based access to applications and services through a web operating system or portal interface,” the mark engenders the commercial impression of a curriculum software application used by schools. This is corroborated by Applicant’s substitute specimen of use which states 8 Applicant’s Brief, p. 4. 9 Applicant’s Brief, p. 4. Serial No. 85919183 - 11 - that “Curriculum4Schools is a “web-based curriculum mapping and unit planning application centered on the needs of 21st century teachers.” Applicant also argues that the mark is suggestive, not descriptive, because upon encountering the mark, a consumer would not know anything about the nature of the goods. At best, the 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, who would use it, who would benefit by its use, what lessons it encompasses, what grade levels it may apply to and why someone would use it and to what result. In short, the mark is still suggestive because the goods, i.e., computer software, are still unknown to the person seeing only the mark. Once knowing that the mark has something to do with software, there are still too many questions that must be answered in order to determine that the mark is merely descriptive of the goods with which the mark is used. That is, the impression given by the mark requires the exercise of some imagination on the part of a person perceiving the mark. Thus, because some imagination is required, the mark is not "merely descriptive."10 First, a mark may be found to be merely descriptive if it describes a feature, function, purpose or use of the goods. The mark CURRICULUM4SCHOOLS directly imparts to potential consumer and users that the product is a curriculum software application for use by schools. 10 Applicant’s Brief, pp. 4-5. Serial No. 85919183 - 12 - Second, the test is not whether someone can guess the goods upon seeing the mark.11 Rather the question is whether someone who knows what the goods are will understand the mark to convey information about them. In this case the goods are “computer software that provides web-based access to applications and services through a web operating system or portal interface.” The mark directly conveys to potential customers and users that the software is used for monitoring and processing school curriculum. Applicant further contends that “[t]here are any number of ‘4-something’ marks that have not been deemed descriptive, including many in Int’l Class 9, which is the same class in which the Applicant’s CURRICULUM4SCHOOLS mark is applied for. Applicant's mark should not be treated differently than currently existing registrations.”12 Applicant’s mark is not being treated any differently than any other application pending before the USPTO. 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 something” formative, these registrations do 11 In this case, a potential consumer could identify the nature, purpose and intended use of the goods from the mark alone because, as indicated above, the mark CURRICULUM4SCHOOLS directly imparts to potential consumers that the product, whatever it may be, is a curriculum software application used by schools. 12 Applicant submitted copies of numerous registrations of “4-something” marks attached to its February 7, 2014 and August 28, 2014 Responses to Office Actions. Serial No. 85919183 - 13 - not conclusively prove that the mark CURRICLUM4SCHOOLS, in its entirety, is not merely descriptive. Thus we find that Applicant’s mark is merely descriptive of the applied-for goods. B. Whether Applicant’s Specimens Display Technical Trademark Use? Since Applicant did not submit traditional specimens of use comprising labels on DVDs or screen shots displaying Applicant’s mark, we have to determine whether Applicant’s webpages or excerpt from its 2011-2012 Products and Services Book, submitted as its specimen and substitute specimen of use, constitute displays used in association with the goods. According to the TRADEMARK MANUAL OF EXAMINING PROCEDURE: Displays associated with the goods essentially comprise point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices. These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must prominently display the trademark in question and associate it with, or relate it to, the goods. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Morganroth, 208 USPQ 284 (TTAB 1980) (purported mark was so obfuscated on the specimen that it was not likely to make any impression on the reader). The display must be related to the sale of the goods such that an association of the two is inevitable. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein. See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980). Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982). TMEP § 904.03(g) (January 2015). Serial No. 85919183 - 14 - The Trademark Examining Attorney argues that the web pages and Applicant’s 2011-2012 Products and Services Book do not include the means for ordering the goods and, therefore, the specimens are mere advertising and not displays associated with the goods capable of supporting technical trademark use.13 See TMEP § 904.03(h) (examining attorneys may accept catalogs or similar specimens as a display associated with the goods, if it includes, inter alia, information necessary to order the goods). Our primary reviewing court has instructed that the Trademark Act “specifies no particular requirements to demonstrate source or origin; for displays, the mark must simply be ‘associated’ with the goods.” In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1122 (Fed. Cir. 2009), citing In re Marriott, 459 F.2d 525, 173 USPQ 799 (CCPA 1972). However, the court, in the context of reviewing a Board determination that a webpage specimen did not qualify as a display associated with goods, also stated that a relevant consideration was whether the webpage specimen had “a ‘point of sale nature.’” Sones, 93 USPQ2d at 1124 (citing Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992)). The determination of whether a proffered catalog specimen or webpage specimen is merely advertising or serves the function of a display associated with the goods is a question of fact. In re Shipley Co., 230 USPQ 691, 694 (TTAB 1986). A display used in association with the goods is essentially a point-of-sale display designed to catch the attention of purchasers as an inducement to consummate a sale. Id. at 694 (“A 13 Trademark Examining Attorney’s Brief, p. 7 [unnumbered]. Serial No. 85919183 - 15 - crucial factor in the analysis is if the use of an alleged mark is at a point of sale location”). “Factually, we need to ask whether the purported point-of-sale display provides the potential purchaser with the information normally associated with ordering products of that kind.” In re Anpath Group Inc., 95 USPQ2d 1377, 1381 (TTAB 2010). In order to determine whether Applicant or the Trademark Examining Attorney is correct, we must turn to a consideration of the specimens. The original specimen, as set forth in the prior section of this decision, provides basic contact information but not a means or invitation to place an order. It does not constitute a display associated with the goods sufficient to demonstrate technical trademark use. The first substitute specimen, also set forth in the prior section of this decision, is an excerpt from Applicant’s 2011-2012 Products and Services Book. It provides the information necessary to calculate the cost of a software license (e.g., the size of the school district, the setup fee and the annual fee), as well as the contact information to obtain further information or place an order. The 2011-2012 Products and Services Book constitutes a display used in association with the goods and demonstrates technical trademark use. The second substitute specimen is a series of “website screen shots.” One webpage, shown below, provides pricing information. Serial No. 85919183 - 16 - Another webpage, shown below, provides contact information inviting potential consumers to call for more information. Serial No. 85919183 - 17 - In its entirety, Applicant’s webpage evidence constitutes a point-of-sale display providing the means for potential consumers to place an order. See In re Valenite, Inc., 84 USPQ2d 1346, 1348 (TTAB 2007) (webpage contains the information necessary to order the goods because it displays telephone numbers and links for customer service and technical resource center).14 Therefore, we find that the webpages submitted as Applicant’s second substitute specimen constitute a display in the association with the goods and demonstrate technical trademark use. The refusal to register Applicant’s mark on the ground that Applicant failed to submit acceptable specimens of use is reversed. Decision: The refusal to register Applicant’s mark CURRICULUM4SCHOOLS on the ground that Applicant’s specimens of use are not acceptable is reversed. The refusal to register Applicant’s mark CURRICULUM4SCHOOLS on the ground that the mark is merely descriptive is affirmed. 14 A shopping cart application or specific reference to a customer service link or phone number that the customer should “click here” or “call now” to place is not a requirement for finding that a webpage is a display used in association with the goods. Valenite, 84 USPQ2d at 1349. Copy with citationCopy as parenthetical citation