DABPO LLC

Trademark Trial and Appeal Board

Jul 29, 2020

88387007 (T.T.A.B. Jul. 29, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re DABPO LLC
_____

Serial No. 88387007
_____

DABPO LLC, pro se.
Kim L. Parks, Trademark Examining Attorney, Law Office 112,
Renee Servance, Managing Attorney.
_____

Before Wellington, Greenbaum and Heasley,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
DABPO LLC (“Applicant”) seeks registration on the Principal Register of the mark
EXEMPTAX (in standard characters) for the following services:
“Electronic storage of resale certificates for sales tax; Providing on-line
non-downloadable software for tax compliance services, namely, validation
and record-keeping of resale certificates for sales tax; Software as a service
(SAAS) services featuring software for tax compliance services, namely,
validation and record-keeping of resale certificates for sales tax”

in International Class 42.1

1 Application Serial No. 88387007 filed on April 15, 2019, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use of the mark anywhere and
in commerce on April 15, 2019.
Serial No. 88387007
- 2 -
The Trademark Examining Attorney refused registration 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 of the services identified in the application.
When the refusal was made final, Applicant appealed to this Board. The appeal
has been fully briefed, including a reply brief filed by Applicant.
We affirm the refusal to register.
I. Merely Descriptive -- Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, … when used on or in connection with the goods [or
services] of the applicant is merely descriptive … of them,” unless the mark has
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).2
A term is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or
services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). 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 the goods [or services].” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513

2 Applicant does not claim the proposed mark is registrable because it has acquired
distinctiveness. Thus, Section 2(f) is not pertinent to our decision.
Serial No. 88387007
- 3 -
(TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987)).
“Descriptiveness must be evaluated ‘in relation to the particular goods or services
for which registration is sought, the context in which the mark is used, and the
possible significance the term would have to the average consumer because of the
manner of its use or intended use,’” In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 82 USPQ2d
at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys Water
Sports, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978)). “In other words, we evaluate whether someone who knows
what the goods [or services] are will understand the mark to convey information
about them.” Id. at 1515 (citing DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. If each
component retains its merely descriptive significance in relation to the goods or
services, the combination is itself merely descriptive. In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing Estate of P.D. Beckwith,
Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also In re Tower Tech, Inc., 64 USPQ2d
1314, 1318 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and
industrial cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087
Serial No. 88387007
- 4 -
(TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in
developing and deploying application programs).
II. Argument and Analysis
At the outset, we agree with the Examining Attorney’s contention that consumers
will perceive proposed mark, EXEMPTAX, as simply the telescoped combination of
the words “exempt” and “tax.” Upon encountering the mark in connection with the
Applicant’s services in the field of tax compliance, there is no doubt that consumers
will immediately understand the term as comprising the two words. We further point
out that, when spoken, there is little or no aural distinction between the proposed
mark and the two words.
Applicant posits that its proposed mark is a ‘double entendre’ because it will also
be interpreted as a combination of “exempt” and “ax.”3 Applicant contends its
proposed mark is “suggestive of using a powerful tool, namely an ax, to help ‘clear’
through the complexity and meticulousness of the compliance process regarding
resale and exemption certificates.”4 Applicant asserts that this interpretation “is
clearly shown throughout Applicant’s marketing material.”5 We disagree and find no
likely alternative interpretation of Applicant’s mark other than the combined words
“exempt” and “tax.” Indeed, Applicant’s own marketing materials reinforce our
finding that its proposed mark will be viewed and understood as merely the

3 4 TTABVUE 16.
4 Id. at 17.
55 Id., referring to materials attached by Applicant to its response filed November 27, 2019.
Serial No. 88387007
- 5 -
combination of the terms “exempt” and “tax.” To wit, the words “exempt[ion]” and
“tax” are used often and descriptively in connection with Applicant’s services, and we
find no mention or suggestion of an ax(e) tool:
.6
Given our finding that the proposed mark will have the same meaning and
commercial impression as the term “exempt tax,” the question is whether the
proposed mark, when viewed and understood as the combination of the words, is
merely descriptive of Applicant’s services.
In articulating why the proposed mark is merely descriptive, the Examining
Attorney relies on the following dictionary definitions of EXEMPT and TAX:7
EXEMPT (adj.): 1. Freed from an obligation, duty, or liability to which others
are subject; . . . income exempt from taxation.

6 Printout attached to Applicant’s response filed November 27, 2019, at TSDR p. 17.
Highlighting in attachment provided by Applicant in the printout.
7 Printouts of definitions from “The American Heritage Dictionary of the English Language”
website (www.ahdictionary.com), attached to Office Action issued on July 1, 2019, at TSDR
pp. 2, 4-5. The website identifies the source of the definitions as THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE, 5th Ed. 2019, Houghton Mifflin Harcourt Publishing
Co.), with copyright notice given. In its brief, Applicant argues that “to the best of its
knowledge the dictionary evidence cited by the Examining Attorney does not exist in print
format, and therefore is of limited probative value.” 4 TTABVUE 13-14. Applicant did not
previously object or question the source of these definitions. In any event and as indicated
above, their publication information was contained in the printouts. Moreover, the provided
meanings for these terms in the printouts merely corroborate what is already common
knowledge.
Serial No. 88387007
- 6 -
TAX (noun): 1. a contribution for the support of a government required of
persons, groups, or businesses, within the domain of that government.

The Examining Attorney asserts that these words maintain their merely descriptive
meanings in the context of Applicant’s services because their combination, albeit
telescoped, “immediately describe[s] that applicant’s tax compliance software
features subject matter related to being free from a sales tax obligation (i.e. exempt
from tax).”8 Specifically, quoting Applicant’s website, the Examining Attorney points
out that Applicant’s services feature “a subscription-based tax exemption certificate
management platform.”9 In addition, the Examining Attorney relies on other Internet
evidence showing use of the term “exempt tax,” including:
“What is exempt from tax? – The company and/or the employee is not
subject to the tax, so wages are not reported and no tax is calculated for
the exempt tax . . . Note: It is good payroll practice to obtain a copy of the
company’s certificate of exemption and keep it on file should questions
arise as to why a tax was not calculated for a company.”10

“Exempt Tax Meaning – The IRS only allows you to claim that you're
exempt from income tax withholding if you meet two conditions. First, you
can’t have owed any income taxes for the prior year. Second, you must
expect not to owe any taxes for the current year. When the IRS says you
don’t owe any taxes, it doesn’t just mean that you received a refund – it
means that your tax liability, before counting any withholding, was $0.”11

8 6 TTABVUE 5.
9 Id. at 6, citing to language in screenshot printout of Applicant’s website attached to Office
Action issued on July 1, 2019, at TSDR p. 20.
10 From website www.sage.com; printouts attached to Office Action issued December 26,
2019, TSDR pp. 10-14.
11 From website www.pocketsense.com; id. at pp. 6-9.
Serial No. 88387007
- 7 -
Applicant, on the other hand, argues that the combined wording, “exempt tax,”
has “no definition [and] no well understood or recognized meaning” and relies on
evidence it submitted showing a lack of results for a search of the combined terms.12
The fact that the term “exempt tax,” itself, is not found in the dictionary or another
authoritative resource is not controlling on the question of whether it is merely
descriptive. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987) [SCREENWIPE held generic for wipes that clean computer and television
screens although not found in dictionary]; In re Gen’l Permanent Wave Corp., 118
F.2d 1020, 49 USPQ 184, 186 (CCPA 1941) (“Because appellant has combined two
common English words [VAPER MARCEL], which in combination are not found in
the dictionaries, is wholly immaterial.”); In re Planalytics, Inc., 70 USPQ2d 1453,
1456 (TTAB 2004) (GASBUYER held merely descriptive, even though no dictionary
definition of term); In re Tower Tech Inc., 64 USPQ2d 1314 (SMARTOWER merely
descriptive, even though no dictionary definition of term); see also TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1209.03(b) (October 2018).
Rather, we must decide whether the evidence shows that the proposed mark
immediately conveys information concerning a feature or characteristic of the
Applicant’s services, namely, tax compliance services and storage of resale
certificates for tax purposes. The fact that an applicant may be the first to use a term
does not mean the term is not merely descriptive. KP Permanent Make-Up, Inc. v.
Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not

12 4 TTABVUE 9.
Serial No. 88387007
- 8 -
countenance someone obtaining “a complete monopoly on use of a descriptive term
simply by grabbing it first”) (citation omitted); Clairol, Inc. v. Roux Distrib. Co., 280
F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (Even novel ways of referring to a product
may nonetheless be merely descriptive.); In re Bailey Meter Co., 102 F. 2d 843, 41
USPQ 275, 276 (CCPA 1939) (“The fact that appellant may have been the first and
only one to adopt and use the mark sought to be registered does not prove that the
mark is not descriptive . . . .”).
Applicant also disputes the probative value of the Examining Attorney’s evidence.
For example, with regard to the excerpted language, supra, Applicant asserts the
given “Exempt Tax Meaning” is irrelevant because it is “in primary reference to IRS
form W-2, which would normally be filled out with an employee’s withheld tax, and
not with an ‘exempt tax.’ Undoubtedly, the author means not to define ‘exempt tax’
but rather to define ‘exempt from withholding tax.’”13 Although Applicant may be
correct that the use of “exempt tax” in that excerpt involves employee withholding
tax, this does not mean that the term’s meaning is irrelevant to Applicant’s services.
As Applicant posits, the term “exempt tax” will be understood by others as “exempt
from tax(ation).” Thus, in the context of Applicant’s services, “exempt tax” conveys
the same information, albeit in relation to resale certifications – specifically, there
are exemptions from sales taxes when the goods are for resale.
Applicant, in its reply brief, provides a helpful diagram that illustrates the nature
of its business:

13 Id. at 10.
Serial No. 88387007
- 9 -
.14
This helps show how Applicant’s purchasers, who are wholesalers or vendors of
goods that are intended for resale, are provided with resale certificates that help
substantiate the exemption from any sales tax for its transactions with the retail
stores. The wholesalers or vendors will immediately understand the proposed mark
as merely conveying information regarding the intended purpose or feature of
Applicant’s services, namely, to assist them in corroborating the sales tax exempt
status of their wholesale to retail transactions. Applicant’s own materials further
demonstrate the merely descriptive nature of its proposed mark in connection with
its services:

14 7 TTABVUE 5.
Serial No. 88387007
- 10 -
.15
Finally, we also disagree with Applicant’s contention that that the combination of
the terms EXEMPT and TAX is “incongruous and bizarre.”16 Specifically, Applicant
argues:17
[T]he only syntactically proper assignment in the English language of
EXEMPT TAX in its exact form (i.e., without use of conjugation,
pluralization, or insertion between EXEMPT and TAX of another word,
such as a conjunction, determiner, preposition, pronoun, or verb) would be
EXEMPT in the adjective form followed by TAX in the noun form, as in an
“exempt tax,” which is clearly bizarre, nonsensical, and incongruous, due
to the incompatibility of the meanings of the individual words. What
exactly is an “exempt tax” and how can a tax itself be exempt? Normally a
person may be exempt from a tax, in which case the phrase would be
modified to “exempt from tax” – the word “exempt” is not an adjective
describing the tax, but rather an adjective describing the person. Clearly,
the import of this word combination would require some measure of
imagination and mental pause to grasp. (Emphasis in italics in original.)

Here, despite any ‘syntactically improper’ quality of the proposed mark, there is
no incongruity, nor do we find the combination ‘bizarre’ so as to detract from its

15 Printout attached to Applicant’s response filed November 27, 2019, at TSDR p. 15.
16 4 TTABVUE 14.
17 Id.
Serial No. 88387007
- 11 -
merely descriptive nature. The evidence demonstrates that Applicant’s tax
compliance services are directed to wholesalers or vendors for purposes of assisting
them with sales transactions that are exempt from sales tax. These customers will
immediately understand that Applicant’s proposed mark, when viewed in proper
context and despite its syntax, conveys important information about Applicant’s
services. Put simply, Applicant’s proposed mark does not “evoke[] a non-descriptive
commercial impression,” and each component retains its merely descriptive
significance in relation to the services. In re Oppedahl & Larson LLP, 71 USPQ2d
1372.
III. Conclusion
We have carefully considered all arguments and evidence of record. We find that
the telescoped combination of the descriptive term “exempt” with the descriptive term
“tax” does not create a non-descriptive or incongruous meaning. Each component
retains its merely descriptive significance in relation to Applicant’s identified
services, so the combination is itself merely descriptive. We therefore conclude that
EXEMPTAX is merely descriptive of Applicant’s identified services, since the
proposed mark merely describes a primary purpose or nature of the tax compliance
services, namely, assisting its consumers with their exemptions from paying a sales
tax on certain transactions.
Decision: The refusal to register Applicant’s proposed mark EXEMPTAX under
Section 2(e)(1) of the Trademark Act is affirmed.