David P. Cooper

Trademark Trial and Appeal Board

Jun 10, 2013

No. 85346089 (T.T.A.B. Jun. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re David P. Cooper
________

Serial No. 85346089
_______

David P. Cooper of Kolisch Hartwell PC for David P. Cooper.

Mark A. Rademacher, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Cataldo, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, David P. Cooper, has applied to register in
standard characters on the Principal Register the mark
AUDIP for the following services: “legal services
involving auditing intellectual property assets,” in
International Class 45.1
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act on

1 Application Serial No. 85346089 was filed on June 14, 2011,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce.
Ex Parte Appeal No. 85346089

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the ground that applicant’s mark is merely descriptive of a
feature or quality of applicant’s services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs and
applicant filed a reply brief.
Issue on Appeal
As noted above, the issue on appeal in this case is
whether applicant’s mark, AUDIP, merely describes a
function, feature or characteristic of the services recited
in the involved application.
The examining attorney maintains that the mark merely
describes a feature or quality of the services, namely,
that they provide an audit of intellectual property assets.
In support of the refusal, the examining attorney has made
of record entries from several online dictionaries
supporting the following definitions:
“aud” – “audit;”2
“IP” – “intellectual property.”3
The examining attorney also made of record screenshots from
internet webpages corroborating that “IP” is recognized as
an initialism for “intellectual property.”4

2 yourdictionary.com; dictionary.com; and infoplease.com.
3 nolo.com/dictionary
4 These include the websites of National Cancer Institute (NCI);
World Intellectual Property Organization (WIPO); and Intellectual
Property Law Server.
Ex Parte Appeal No. 85346089

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The examining attorney further made of record an entry from
en-wikipedia.org for “intellectual property (IP)” – “a
legal concept which refers to creations of the mind for
which exclusive rights are recognized. …”5
Finally, the examining attorney made of record screenshots
from internet websites utilizing the term “IP Audit.”6
Applicant argues that its mark is at least suggestive
of its recited services. Applicant further argues that
“consumers may think that the AUD or AUDI component refers
to sounds, as in the word audible.”7 Applicant argues in
addition that “consumers may also think that the mark has
something to do with an audible IP address.”8 Applicant
asserts, without evidentiary support, that when his
“attorney ran a Google search of the IP acronym, the first
choice was to search the phrase ‘IP address,’ where IP
stands for Internet Protocol.”9
A mark is merely descriptive if “it forthwith conveys
an immediate idea of the ingredients, qualities or

5 We have considered this Wikipedia evidence because it
essentially is cumulative of and is corroborated by the other
evidence of record, and because it was made of record early
enough to give applicant the opportunity to challenge or rebut
it. See In re IP Carrier Consulting Group, 84 USPQ2d 1032, (TTAB
2007).
6 Pipers Patent Attorneys; and Intellectual Property Explorer.
7 Applicant’s brief, p. 3.
8 Id.
9 Id.

Ex Parte Appeal No. 85346089

4
characteristics of the goods [or services].” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976) (emphasis added). See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); and In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
The question is not whether someone presented only with the
mark could guess the products listed in the description of
goods. Rather, the issue is whether someone who knows what
the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v.
Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); and In re Patent &
Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
If, however, when goods or services are encountered
under a mark, a multistage reasoning process, or resort to
imagination, is required in order to determine the
attributes or characteristics of the product or services,
the mark is suggestive rather than merely descriptive. See
In re Abcor Development Corp., 200 USPQ at 218; and In re
Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992). To the extent
that there is any doubt in drawing the line of demarcation
between a suggestive mark and a merely descriptive mark,
such doubt is resolved in applicant’s favor. In re Atavio,
Ex Parte Appeal No. 85346089

5
25 USPQ2d at 136. The examining attorney bears the burden
of showing that a mark is merely descriptive of the
identified goods or services. See In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 21567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
In this case, we are not persuaded by the examining
attorney’s arguments that AUDIP is merely descriptive of
the identified services. First, we observe that the term
AUDIP as it appears in the involved mark is unitary, and it
is not clear on this record whether prospective consumers
will perceive that AUDIP consists of the component terms
AUD and IP, and that the combination of terms merely
describes applicant’s services. This is not to say that
the mere telescoping of the term AUDIP is sufficient to
overcome a refusal to register based upon mere
descriptiveness. See, e.g., In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987)
(FirsTier, the equivalent of “first
tier,” is merely descriptive of banking
services). Rather, there is no evidence of record to
support a finding that consumers will view the term AUDIP
as merely describing legal services, even those involving
auditing intellectual property assets.
That is to say, even if we accept that AUDIP is a
Ex Parte Appeal No. 85346089

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combination of the individual words AUD and IP, and that
these terms have descriptive significance inasmuch as
applicant’s legal services involve providing an audit – or
AUD - of intellectual property – or IP - assets, our
analysis does not end here. As the Board stated in In re
Wisconsin Tissue Mills, 173 USPQ 319, 320 (TTAB 1972):
It does not follow as a matter of law that
because component words of a mark may be
descriptive, the composite is unregistrable. The
established rule is that a composite must be
considered in its entirety and the question then
is whether the entirety is merely descriptive.
(citation omitted).

In this case, there is no evidence to indicate that the
relevant purchasers of applicant’s services would perceive
the term AUDIP as it appears in applicant’s mark to be a
descriptive term therefor. Simply put, the evidence of
record, while establishing that the term “IP audit” is
recognized in the field of intellectual property
management, does not establish that AUDIP merely describes
them, notwithstanding the dictionary meanings of AUD and IP
and the applicability of those individual terms to
applicant’s services.
We note that if the term in question was IP AUDIT, or
possibly IP AUD, we may come to a different result,
inasmuch as that combination of terms would immediately
describe a feature of applicant’s legal services involving
Ex Parte Appeal No. 85346089

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auditing intellectual property assets. We further note
that the mere reversal of those terms into AUDIP does not
necessarily avoid a finding of mere descriptiveness.
However, when we consider the term AUDIP in applicant’s
marks, we find on this ex parte record that it is only
suggestive of the identified services. We reach this
conclusion because some mental reasoning is required in
order to determine the nature of applicant’s services
therefrom.
This conclusion is buttressed by the fact that this
specific term does not appear to be needed by applicant’s
competitors in order to describe their products or services
as it has not been shown that any third party in the legal
or intellectual property field has used AUDIP in this
manner. See Minnesota Mining and Mfg. Co. v. Johnson &
Johnson, 454 F.2d 1179, 172 USPQ 491 (CCPA 1972)
[“SKINVISIBLE” for transparent medical adhesive tape is not
needed by competitors]; Sperry Rand Corp. v. Sunbeam Corp.,
442 F.2d 979, 170 USPQ 37 (CCPA 1971) [“LEKTRONIC” for
electric shavers not needed by competitors]; Aluminum
Fabricating Co. of Pittsburgh v. Season-All Window Corp.,
259 F.2d 314, 119 USPQ 61, 63 (2d Cir. 1958) [“SEASON-ALL,”
unlike the term “ALL-SEASON,” is not merely descriptive of
aluminum storm windows and doors]; and In re Reynolds
Ex Parte Appeal No. 85346089

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Metals Co., 480 F.2d 902, 178 USPQ 296 (CCPA 1973)
[registration of “BROWN-IN-BAG” for transparent plastic
bags is suggestive as it will not prevent competitors from
informing buyers that goods may be browned in their bags].
Finally, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubts in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Decision: The examining attorney’s refusal of
registration is reversed. Accordingly, the involved
application will be forwarded for publication for
opposition in due course.