DesignYour-Course.com, LLC d/b/a Syllabi Solutions

Trademark Trial and Appeal Board

Sep 18, 2017

No. 86748430 (T.T.A.B. Sep. 18, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 18, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re DesignYourCourse.com, LLC d/b/a Syllabi Solutions
_____

Serial No. 86748430
_____

Claire Zopf of Z IP Law PLLC for
DesignYourCourse.com, LLC d/b/a Syllabi Solutions.

Sandra Snabb, Trademark Examining Attorney, Law Office 120
(David Miller, Managing Attorney).
_____

Before Cataldo, Adlin and Pologeorgis, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
DesignYourCourse.com, LLC d/b/a Syllabi Solutions (“Applicant”) seeks a
Principal Register registration for the proposed mark SYLLABI SOLUTIONS, in
standard characters, for:
Design, development, and implementation of software for
the development of educational courses that align course
outcomes and course learning objectives with core and
specialized course competencies and the development of
course summaries and compliance reports used for course
approval and accreditation of any type of educational
institution or training within an organization; Software as
a service (SAAS) services featuring software for the
development of educational courses that align course
outcomes and course learning objectives with core and
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specialized course competencies and the development of
course summaries and compliance reports used for course
approval and accreditation of any type of educational
institution or training within an organization.1

The Examining Attorney refused registration on the ground that Applicant’s
proposed mark is merely descriptive of the identified services under Section 2(e)(1) of
the Act. After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. Applicant and the Examining Attorney filed
briefs.
A mark is merely descriptive, within the meaning of Section 2(e)(1), if it
immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the services for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009)); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark need not immediately convey an idea of each and every specific
feature of the services in order to be considered merely descriptive; rather, it is
sufficient that the mark describes one significant attribute, function or property of
the services. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark
is merely descriptive is determined not in the abstract, but in relation to the services

1 Application Serial No. 86748430, filed September 4, 2015 under Section 1(b) of the
Trademark Act, based on Applicant’s alleged bona fide intent to use the mark in commerce.
The evidence reveals that the mark is currently in use, but Applicant has not filed an
allegation of use.
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for which registration is sought, the context in which it is being used on or in
connection with the services, and the possible significance that the mark would have
to the average purchaser of the services because of the manner of its use. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not
whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods or
services are will understand the mark to convey information about them.” In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the
services, the combination results in a composite that is itself merely descriptive. See
e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004)
(PATENTS.COM merely descriptive of computer software for managing a database
of records that could include patents, and for tracking the status of the records by
means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); In re Carlson, 91
USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services); In re Tower Tech,
64 USPQ2d at 1314 (SMARTTOWER merely descriptive of commercial and industrial
cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
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(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).
Here, the Examining Attorney relies on the following dictionary definitions of the
proposed mark’s constituent terms:
SYLLABUS (plural syllabi)—“a summary or outline,
esp. of a course of study”2

SOLUTION (plural solutions)—

“an action or process of solving a problem”3

“products or services designed to meet a particular need”4

“Cataloging a vendor’s hardware and software offerings by
industry or application. ‘Solutions’ has become such a
marketing buzzword that many vendors tout only solutions
on their Web sites, having eliminated reference to their
products and services ….”5

Office Actions of January 4 and July 22, 2016. These definitions establish that
SYLLABI SOLUTIONS conveys a process, product or service, perhaps hardware or
software-based, which is intended to meet needs or solve problems associated with
summaries or outlines of courses of study.

2 http://www.yourdictionary.com/syllabus
3 http://www.merriam-webster.com/dictionary/solution
4 http://www.oxforddictionaries.com/us/definition/american_english/solution?q=solutions
5 http://encyclopedia2.thefreedictionary.com/solutions
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The Examining Attorney also relies on Applicant’s “Syllabi Solutions Fact Sheet,”
which Applicant provided in response to a request for information under Trademark
Rule 2.61(b). According to the Fact Sheet:
Syllabi Solutions places all universities and colleges in the
United States on a level playing field by serving as their in-
house specialized curriculum development team
which assists administrators, department chairs,
college professors and others to build the course
curriculum.

Syllabi Solutions efficiently makes each professor an
accomplished competency based course developer,
capable of developing a course that will meet the
demands of accrediting agencies as if they had their
own specialized in house or out-sourced
development group.

Syllabi Solutions is a user-friendly computer-based
platform for the higher education industry including
research and comprehensive universities, liberal arts
colleges, and community colleges.

The Syllabi Solutions web portal allows stakeholders
to collaborate and comment on the course
development process in real time saving time and
money in an era where many higher education institutions
are struggling with budget deficits.

Syllabi Solutions vision of Your Curriculum/Out
Technology frees the college professor from the need
to acquire specialized computer skills to
consistently and efficiently prepare course
curriculum which are aligned with the educational
institution’s core and specialized competencies.

The college professor no longer needs a high level of
computer skills to produce quality curriculum for
their students. Syllabi Solutions delivers the technology
leaving the college professor with more time to teach their
students.

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Office Action response of July 2, 2016 (emphasis added). Thus, the Fact Sheet
corroborates the dictionary evidence, in that it specifically confirms that Applicant’s
services assist professors and others in creating course syllabi, via a “computer-based
platform,” including a “web portal.” Applicant’s services “free” professors “from the
need to acquire specialized computer skills to consistently and efficiently prepare
course curriculum.” In other words, SYLLABI SOLUTIONS describes Applicant’s
computer-related services, including software as a service, which help professors and
institutions develop and manage syllabi and related issues, such as “the demands of
accrediting agencies.”
The nature and purpose of Applicant’s software development and implementation
services, and software as a service activities, is further explained in its U.S. Patent
No. 62046194 entitled “Method and Apparatus for the Development of Competency
Based Educational Courses and Curriculum.” Office Action of July 22, 2016. The
patent’s abstract indicates that course and curriculum development is accomplished
“using a secure web based server computer platform and software application … The
course development software program provides a course syllabus ….” Id.
(emphasis added). The claims include:
8. The competency based educational course development
system implemented as a software application on a
computer system of claim 1 comprising a module design
interface that transforms, integrates and modularizes
transactional data from the course development
software application to develop, display, and modify
a course syllabus.

9. The competency based educational course development
system implemented as a software application on a
Serial No. 86748430

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computer system of claim 8 wherein the course
development software application transforms
transactional data to integrate the course
information and course syllabus with a learning
management system of an educational institution.

Id. (emphasis added). The patent’s “Background of the Invention” section states:
For the majority of universities and colleges in the United
States, educational course development remains a
challenging, expensive and time-consuming process often
requiring repetitive hands-on involvement by college
professors, department chairs, deans, and administrators.
Only a fortunate number of educational institutions can
afford to have specialized in-house curriculum
development groups work with college professors and
handle much of the development process … While
appropriate course development is critical for an
educational institution to demonstrate with evidence that
it meets the requirements of accreditation, the process of
substantiating this can be a huge task for an educator with
each professor required to substantiate and document their
course work in order to provide the necessary work product
of the accreditation process ….

Id. And according to the patent’s “field of the invention” description:
The present invention is a method and apparatus for the
development of educational courses and curriculum using
a secure web based server computer platform and software
application that aligns course outcomes and course
learning objectives with core and specialized course
competencies and uniquely develops course summary and
compliance reports that may be used for course approval
and accreditation of any type of educational institution or
training within an organization. The course development
software program further provides a course syllabus that
includes presentation summaries, textbook information,
video, test and other course materials and assignments for
a teacher to easily organize and present daily activities for
the classroom.

Id.
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In other words, according to Applicant’s descriptions in its patent, its services
include delivering and implementing a computer-based solution to syllabi-related
problems. In fact, Applicant itself uses the term “solution” in the patent’s Detailed
Description of the Invention, stating “[i]n each context, the invention may stand alone
or may be a component of a larger system solution,” and that the system performs
functions “that support an integrated educational system solution that aligns
competencies with the desired student outcomes and learning objectives.” Id.
(emphasis added). See In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006)
(“applicant’s own use of the term ERGONOMIC … highlights the descriptive nature
of this term …”).
Applicant’s third party competitors use the term SOLUTIONS similarly.
Specifically, a syllabus-related computer program called CONCOURSE “allows you
to upload existing syllabi to your custom-themed syllabus solution. Simply put, it’s
(sic) complete syllabus management in way less time, money, and technology.
Generate comprehensive reports based on syllabus content in your department or
even your entire institution.” Office Action of July 22, 2016 (printout from
“intellidemia.com”) (emphasis added).
In fact, SOLUTIONS appears to have a well-understood meaning when used by
software as a service providers. The Examining Attorney has introduced more than
50 registrations containing the term SOLUTIONS for software as a service services
such as Applicant’s, or closely analogous services, albeit usually in fields unrelated to
syllabi, in which the term is disclaimed, registered on the Principal Register with a
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claim of acquired distinctiveness or registered on the Supplemental Register,
including:
Mark Registration
No.
Relevant
Goods/Services
Disclaimer/
2(f)Claim/
Supplemental
Register
MIPS
SOLUTIONS
5134804 Providing online, non-
downloadable software
that enables users to
upload data and reports to
be used in connection with
data analytics related to
the provision of medical
and healthcare services …
Supplemental
WAITING
ROOM
SOLUTIONS
3896025 Providing web-based
Software as a Service
application for creating,
maintaining and accessing
medical records …
2(f) entire mark

SOLUTIONS
disclaimed
E EQUATOR
FINANCIAL
SOLUTIONS &
Design
3839212 Software as a service
(SAAS) services featuring
software for use in
automating and
optimizing workflow
operations, transactional
data processing …
FINANCIAL
SOLUTIONS
disclaimed
HEALTH
ACCESS
SOLUTIONS &
Design
3866701 Software as a service
(SAAS) services, namely,
hosting software for use by
others for use by medical
practitioners, healthcare
providers …
2(f) entire mark
KÖRBER HITEC
SOLUTIONS
4953374 Software as a service
(SAAS), namely, software
for use in gathering,
recording, storing,
analyzing and evaluating
data relating to tobacco
processing and cigarette
manufacturing and
packaging …
SOLUTIONS
disclaimed
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OMNIVIEW
SOLUTIONS &
Design
3957784 Software as a service
(SAAS) services featuring
software for monitoring
workflow, performance,
and compliance with a
dashboard providing
business intelligence to
businesses in the
deathcare and healthcare
fields
SOLUTIONS
disclaimed
TRUST
SOLUTIONS
4777369 Software as a service
(SAAS) services featuring
software for secure
electronic transactions
and authentication of
digital signatures in
electronic transactions
and communications
SOLUTIONS
disclaimed
INFORMATION
TRANSPORT
SOLUTIONS
4255976 computer service, namely,
acting as an application
service provider in the
field of information
management to host
computer application
software for the purpose of
education and
management
SOLUTIONS
disclaimed
APERIA
SOLUTIONS &
Design
4076784 SAAS, namely, hosting
software for use by others
for online analytical
processing, data and text
mining …
SOLUTIONS
disclaimed

Office Action of February 8, 2017. Where a term is disclaimed, registered on the
Supplemental Register or registered with a claim of acquired distinctiveness, that is
evidence that the term has been found descriptive. See Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013), aff’d, 565 Fed.
Appx. 900 (Fed. Cir. 2014) and Bass Pro Trademarks LLC v. Sportsman’s Warehouse
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Inc. 89 USPQ2d 1844, 1851 (TTAB 2008) (disclaimers); Cold War Museum, Inc. v.
Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)
(where “an applicant seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive”); Otter Products LLC v.
BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB 2012); Perma Ceram
Enterprises Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992)
(Supplemental Register registrations).
In fact, we have previously relied on third-party registrations such as those in
this case to find SOLUTIONS merely descriptive, stating “in the context of computer
goods, SOLUTIONS is a term that is used to describe the purpose of the computer to
resolve a problem.” In re Box Solutions Corp., 79 USPQ2d 1953, 1956 (TTAB 2006).
The same is true of Applicant’s computer services, especially because the services
involve software, such as Applicant’s software as a service services.
The third-party registrations “show the meaning of a mark in the same way that
dictionaries are used.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694-95; see also, The Institut National des Appellations D’Origine v. Vintners
International Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (“third
party registrations show the sense in which the word is used in ordinary parlance
and may show that a particular term has descriptive significance as applied to certain
goods or services”) and Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USQ2d 1458, 1471 (TTAB 2014). Here, the third-party uses and registrations show
Serial No. 86748430

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that SOLUTIONS reveals something about computer-related services, specifically
that they enable users to resolve problems. In this case, the problems to be solved all
relate to SYLLABI.
Applicant argues that its proposed mark is not merely descriptive because it “uses
alliteration.” 9 TTABVUE 7. We are not persuaded. Applicant has “failed to cite any
evidence, and the record contains none, supporting its view that the alliteration in
[SYLLABI SOLUTIONS] creates a commercial impression that is more than merely
descriptive.” DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d
12147, 103 USPQ2d 1753, 1758-59 (Fed. Cir. 2012); see also In re Lean Line, Inc., 229
USPQ 781, 782-83 (TTAB 1986) (“there is nothing in the record to suggest that the
mere fact that both words which form the mark begin with the letter ‘L’ would cause
purchasers to miss the merely descriptive significance of the term ‘LEAN’ or consider
the entire mark to be a unitary expression”).
Applicant also argues that its proposed mark creates an “incongruity” because
“the term ‘solutions’ has no logical relationship whatsoever to educational courses or
to syllabi.” 9 TTABVUE 7. We disagree. There is no incongruity, because as the third-
party registrations and other evidence shows, SOLUTIONS has a logical, known
relationship to Applicant’s software as a service and other identified services. For
example, the third-party registrations in which SOLUTIONS was found to be merely
descriptive include WAITING ROOM SOLUTIONS and HEALTH ACCESS
SOLUTIONS for healthcare-related software services, INTEGRATED HOUSING
SOLUTIONS for housing-related software services, DRIVERS ED SOLUTIONS for
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drivers education-related software services, VOTENET SOLUTIONS for election-
related software services, WORKFORCE BENEFIT SOLUTIONS for employee
benefit-related software services and many others.
The evidence also shows that SOLUTIONS has been used in connection with
syllabi specifically, as promotional material indicates that the third-party Concourse
computer program “allows you to upload existing syllabi to your custom-themed
syllabus solution.” Office Action of July 22, 2016 (printout from “intellidemia.com”).
Other evidence reveals that Applicant’s competitors offer computer-related services
in the field of syllabi, so there is no incongruity in Applicant’s use of SOLUTIONS in
connection with syllabi:

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Office Action of July 22, 2016 (printouts from “onlinelearningconsortium.org” and
“creatixcampus.com”). These third-party registrations and uses belie Applicant’s
argument that multistage reasoning is required to determine the nature of
Applicant’s services.
In any event, Applicant itself essentially concedes that there is no incongruity,
because it concedes that SOLUTIONS should be disclaimed, i.e. that it is merely
descriptive of Applicant’s services. 9 TTABVUE 14-15. While Applicant also takes the
position that its proposed mark is entitled to registration on the Principal Register
with a disclaimer of SOLUTIONS, we disagree. In most of the third-party
registrations of record which are registered on the Principal Register with a
disclaimer of the word SOLUTIONS only, the word preceding SOLUTIONS is at
worst suggestive. Here, however, Applicant’s mark is more like the third-party
Serial No. 86748430

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registrations on the Supplemental Register, or those on the Principal Register which
include Section 2(f) claims with respect to the entire mark, such as WAITING ROOM
SOLUTIONS (Reg. No. 3896025), HEALTH ACCESS SOLUTIONS (Reg. No.
3866701), INTEGRATED HOUSING SOLUTIONS (Reg. No. 4554137),
DECISIONING SOLUTIONS (Reg. No. 4496408), DRIVERS ED SOLUTIONS (Reg.
No. 4496456), WORKFORCE BENEFIT SOLUTIONS (Reg. No. 4753609), WORK
TRUCK SOLUTIONS (Reg. No. 4938752) and VIRTUAL TICKET SOLUTIONS (Reg.
No. 4966665). Office Action of February 8, 2017.6
In short, when the terms “syllabi” and “solutions” are combined “the mark as a
whole, i.e., the combination of the individual parts,” does not convey “any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
In re Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective
of a prospective purchaser or user” of Applicant’s software services in the field of
educational courses, “because … the combination of the terms does not result in a
composite that alters the meaning of [any] of the elements … refusal on the ground
of descriptiveness is appropriate.” In re Petroglyph Games, 91 USPQ2d at 1341.

6 In any event, to the extent there are third-party marks on the Principal Register without
a Section 2(f) claim which are analogous to Applicant’s mark, and which have a disclaimer
only as to SOLUTIONS, that does not justify registration of Applicant’s merely descriptive
mark on the Principal Register without a Section 2(f) claim. In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own
merits … Even if some prior registrations had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations does not bind the Board or this
court.”) (internal citation omitted).

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Indeed, the evidence makes clear that consumers who know that Applicant’s
services involve educational course software and related services will understand the
proposed mark to convey information about them, specifically that they help resolve
issues and problems related to syllabi.

Decision: The refusal to register Applicant’s proposed mark under Section 2(e)(1) of
the Trademark Act is affirmed.