Deutsche Telekom AG

Trademark Trial and Appeal Board

Mar 27, 2006

No. 79000707 (T.T.A.B. Mar. 27, 2006)

Mailed:
27 March 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Deutsche Telekom AG
________

Serial No. 79000707
_______

Joan L. Long of Mayer, Brown, Rowe & Maw, LLP for Deutsche
Telekom AG.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

The refusal in this Section 66(a) (15 U.S.C. § 1141f)
application has now been appealed to this board to
determine if applicant Deutsche Telekom AG’s mark, ,
in standard character form is merely descriptive under
Section 2(e)(1) of the Trademark Act (15 U.S.C.
§ 1052(e)(1)) for the following goods1 and services:

1 As explained further, we understand that the examining
attorney’s refusal is only directed to the highlighted words in
Classes 9 and 16. The Class 36 services are discussed
separately.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 79000707
2
Computer software for financial accounting, for the
provision of online information services in the field
of news, sports, entertainment, culture, business and
finance, weather and travel [and] audio and video
recordings in the field of news, sports,
entertainment, culture, business and finance, weather
and travel in Class 9;2

Printed instructional and teaching materials, all in
the fields of telecommunications, information
technology, safety, news, sports, entertainment,
culture, business and finance, weather and travel in
Class 16;3 and

Insurance services, namely, insurance brokerage,
insurance claims processing; financial services,
namely, clearing of secure financial transactions
through online services; financial analysis and
consultation; financial information provided by
electronic means; financial information processing;
financial portfolio management; financial services,
namely, securities consulting and safe keeping;
financial sponsorship of sports, educational and
entertainment programs and events; commercial lending
services; monetary exchange; credit card services;
electronic commerce services, namely, electronic debit
and credit card transaction processing services, funds
transfer and bill payment-processing services;
discount brokerage services; security brokerage;
brokerage in the field of insurance, stocks,
commodities; custom brokerage for third parties in the
field of insurance, stocks, commodities; brokerage of
shares and venture capital funding services to start-
up companies; brokerage of fund shares; brokerage of
productive investment of funds; providing information
and brokerage of insurances in the filed of home
insurance, accident insurance and health insurance;
consulting services relating to bank services;
providing information via telephone and the global

2 To be more specific, the examining attorney described her
refusal (Brief at 1) as being directed to “computer software for
financial accounting, for the provision of online information
services in the field of finance and audio and video recordings
in the field of finance” in Class 9.
3 Again, to be specific, the examining attorney (Brief at 1)
limited her Class 16 refusal to “printed instructional and
teaching materials, all in the fields of finance.”
Ser No. 79000707
3
communication networks in the field of finance in
Class 36.

The examining attorney concluded her description of
the refusal by stating that the “refusal applies to the
goods and services listed only. The refusal is withdrawn
for the remaining goods and services and it is respectfully
requested that this refusal to register be affirmed.”
Brief at 2.4
At this point, we believe further comment on the goods
and services and the refusal are appropriate. Applicant
originally applied for registration of its mark, ,
for a variety of goods and services in Classes 9, 16, 35,
36, 38, and 42. The examining attorney required
clarification of the goods and services in these classes,
and applicant responded by submitting an amendment that
consisted of almost five single-spaced typed pages of goods
and services, which the examining attorney generally
accepted.5 Because we do not find it necessary to list all

4 Because the refusal is expressly limited to only certain goods
and services, regardless of the outcome of the specified goods
and services at issue in this appeal, applicant’s mark may be
published for opposition for at least the remaining goods and
services in the application. 37 CFR § 2.65(a) (“If the refusal
or requirement is expressly limited to only certain goods and/or
services, the application will be abandoned only as to those
particular goods and/or services”). See also TMEP § 1904.03(d)
(4th ed. April 2005).
5 The list of goods in Classes 9 and 16 required approximately
three typed pages.
Ser No. 79000707
4
the goods and services that are not in dispute, we have
chosen to refer only to the goods and services that are at
issue. It is clear that there is no longer a refusal
pending regarding the services in Classes 35, 38, and 42.6
Regarding the goods in Classes 9 and 16, the examining
attorney applied the refusal to “computer software for
financial accounting, for the provision of online
information services in the field of finance, and audio and
video recordings in the field of finance in class 009 [and]
printed instructional and teaching materials all in the
fields of finance in class 016.” Brief at 1. Applicant,
in its Reply Brief at 2, points out that in “further
correspondence with the Examiner, Applicant agreed to
remove the direct reference to ‘finance’ in Classes 9 and
16. Thus, while the Examiner has maintained her objection
to those goods in Classes 9 and 16 in her response, it is
only Applicant’s services in Class 36 that remain in

6 In her denial of the request for reconsideration (p.3), the
examining attorney added that the “terminology
‘telecommunications software for use in the telecommunications
industry’ is unacceptable in class 42 because ‘software is in
class 9 unless it is ‘non-downloadable computer software.’”
These specific services are not further discussed in the appeal
briefs, but the examining attorney indicated (Brief at 2 n.1)
that the ”remaining classes 016, 035, 038, 042 were not amended.”
However, the examining attorney has not argued that there is any
refusal pending regarding the requirement for an amendment to the
identification of goods. Before this case proceeds to
publication, this discrepancy should be addressed.
Ser No. 79000707
5
dispute.” In her appeal brief (p.2, n.1), the examining
attorney argues that:
A further review of the Request for Reconsideration
dated April 11, 2005 does not offer an amendment to
delete all financial services and in fact the amended
identification of goods and services contained
financially related goods and services, such as audio
and visual recordings in the field of news, sports,
entertainment, culture, business and finance, weather
and travel and computer software for financial
accounting for the provision of online information
services in the field of news, sports, entertainment,
culture, business and finance, weather and travel in
class 009.

There does not appear to be any dispute that the examining
attorney has limited her refusal to only the following
goods in Classes 9 and 16: “computer software for
financial accounting, for the provision of online
information services in the field of finance, and audio and
video recordings in the field of finance in class 009 [and]
printed instructional and teaching materials all in the
fields of finance in class 016.” Furthermore, applicant
has made it clear that it has agreed to delete the term
“finance” from the identification of goods in Classes 9 and

Ser No. 79000707
6
16.7 With these deletions from the identification of goods
in Class 16, we understand that there is no longer a
dispute regarding the descriptiveness of the goods in that
class. Similarly, with the class 9 goods, there no longer
is a dispute regarding the computer software for the
“provision of online information services in the field of
finance, and audio and video recordings in the field of
finance” because applicant has agreed to delete the term
“finance” to which the examining attorney directed her
refusal. Therefore, because “on finance” would describe
audio and video services, printed instructional and
teaching materials and computer software for the provision
of online information services all “about or concerning
finance,” we affirm the refusal to register these goods on
the ground that the mark as applied to these goods is
merely descriptive in the event that applicant has not
formally deleted these goods from the application.

7 In Classes 9 and 16, we assume that applicant has agreed to
delete the word “finance” from the following language in bold in
the identification of goods: “… provision of online information
services in the field of news, sports, entertainment, culture,
business and finance, weather and travel [and] audio and video
recordings in the field of news, sports, entertainment, culture,
business and finance, weather and travel;” and in class 16:
“printed instructional and teaching materials, all in the fields
of telecommunications, information technology, safety, news,
sports, entertainment, culture, business and finance, weather and
travel.”
Ser No. 79000707
7
However, the deletion of the term “finance” does not
resolve the question of whether the term “on finance” is
merely descriptive when used on “software for financial
accounting.” While we assume that applicant has offered to
delete the words “and finance,” we are unsure what change,
if any, applicant intended with the identification of goods
for “computer software for financial accounting.”
Therefore, we will assume that this item has not been
amended and that the examining attorney’s refusal is still
viable for these goods in Class 9.
We now look at the services in Class 36. Again,
applicant has proposed to delete numerous services from the
list of the Class 36 services. The examining attorney
refused to register applicant’s mark for the services
listed below (Brief at 1-2) in Class 36 and applicant has
made it clear that it “offered to amend its description by
deleting the [highlighted] services from Class 36.” Reply
Brief at 2-3.
Insurance services, namely, insurance brokerage,
insurance claims processing; financial services,
namely, clearing of secure financial transactions
through online services; financial analysis and
consultation; financial information provided by
electronic means; financial information processing;
financial portfolio management; financial services,
namely, securities consulting and safe keeping;
financial sponsorship of sports, educational and
entertainment programs and events; commercial lending
services; monetary exchange; credit card services;
Ser No. 79000707
8
electronic commerce services, namely, electronic debit
and credit card transaction processing services, funds
transfer and bill payment-processing services;
discount brokerage services; security brokerage;
brokerage in the field of insurance, stocks,
commodities; custom brokerage for third parties in the
field of insurance, stocks, commodities; brokerage of
shares and venture capital funding services to start-
up companies; brokerage of fund shares; brokerage of
productive investment of funds; providing information
and brokerage of insurances in the filed of home
insurance, accident insurance and health insurance;
consulting services relating to bank services;
providing information via telephone and the global
communication networks in the field of finance.

We assume that this amendment is acceptable and the
following Class 36 services remain at issue:
Insurance services, namely, insurance brokerage,
insurance claims processing; financial services,
namely, clearing of secure financial transactions
through online services; financial services, namely,
securities consulting and safe keeping; commercial
lending services; monetary exchange; credit card
services; electronic commerce services, namely,
electronic debit and credit card transaction
processing services, funds transfer and bill payment-
processing services; discount brokerage services;
security brokerage; brokerage in the field of
insurance, stocks, commodities; custom brokerage for
third parties in the field of insurance, stocks,
commodities; brokerage of shares and venture capital
funding services to start-up companies; brokerage of
fund shares; brokerage of productive investment of
funds.

Additionally, we point out that in its response (p.6)
to a requirement in the first Office action, applicant
submitted a disclaimer of the term “finance.”
Ser No. 79000707
9
Next, we note that the application, Serial No.
79000707, has been filed under the provision of Section 66,
15 U.S.C. § 1141f, of the Trademark Act, which provides:
(a) Requirement for Request for Extension of
Protection. — A request for extension of protection of
an international registration to the United States
that the International Bureau [IB] transmits to the
United States Patent and Trademark Office shall be
deemed to be properly filed in the United States if
such request, when received by the International
Bureau, has attached to it a declaration of bona fide
intention to use the mark in commerce that is verified
by the applicant for, or holder of, the international
registration.

The United States application was filed on 07 November
2003. Because the application (request for extension of
protection) was filed under the provision of Section 66(a),
it is entitled to an earlier priority date. Section 66, 15
U.S.C. § 1141f, provides the following:
(b) Effect of Proper Filing. — Unless extension of
protection is refused under section 68, the proper
filing of the request for extension of protection under
subsection (a) shall constitute constructive use of the
mark, conferring the same rights as those specified in
section 7(c), as of the earliest of the following:
(1) The international registration date, if the request
for extension of protection was filed in the
international application.
(2) The date of recordal of the request for extension
of protection, if the request for extension of
protection was made after the international
registration date.
(3) The date of priority claimed pursuant to section
67.
Ser No. 79000707
10
Section 67 of the Trademark Act sets out how an
applicant can obtain priority in the United States under
these circumstances:
The holder of an international registration with a
request for an extension of protection to the United
States shall be entitled to claim a date of priority
based on a right of priority within the meaning of
Article 4 of the Paris Convention for the Protection
of Industrial Property if —
(1) the request for extension of protection contains a
claim of priority; and
(2) the date of international registration or the date
of the recordal of the request for extension of
protection to the United States is not later than 6
months after the date of the first regular national
filing (within the meaning of Article 4(A)(3) of the
Paris Convention for the Protection of Industrial
Property) or a subsequent application (within the
meaning of Article 4(C)(4) of the Paris Convention for
the Protection of Industrial Property).

Applicant’s International Registration No. 0817799
issued 07 November 2003. The International Registration is
based on an underlying German application (No. 303 23
195.5/38) filed 08 May 2003, which issued on 27 May 2003,
as German Registration No. 303 23 195.5/38. As a result,
applicant is entitled to a priority date of 08 May 2003.
Because this application was filed under Section
66(a), TMEP 1904.03(d) (4th ed. April 2005) provides that
refusals that do not encompass all the goods and services
must specify the goods and services covered by the refusal.
If a notification of refusal in a §66(a) application
does not pertain to all the goods/services, the mark
Ser No. 79000707
11
is protected for the remaining goods/services, even if
the holder does not respond to the notification of
refusal. Sections 68(c) and 69(a) of the Trademark
Act, 15 U.S.C. §§1141h(c) and 1141i(a), provide that
an application under §66(a) of the Trademark Act is
automatically protected with respect to any goods or
services for which the USPTO has not timely notified
the IB of a refusal.

However, when the Section 66(a) application is
examined, “a request for extension of protection will be
examined under the same standards as any other application
for registration on the Principal Register.” TMEP
§ 1904.02(a) (4th ed. April 2005).
In cases involving descriptiveness refusals applied to
a class of goods or services containing numerous items, the
board has held that:
While some of the products enumerated in applicant's
recitation of goods may not include devices in this
category or class, at least some of the goods, such as
analog to digital and digital to analog converters,
analog computational circuits and analog
multipliers/dividers would, in our view, fall within
the category of analog devices. In this regard, it is
a well settled legal principle that where a mark may
be merely descriptive of one or more items of goods in
an application but may be suggestive or even arbitrary
as applied to other items, registration is properly
refused if the subject matter for registration is
descriptive of any of the goods for which registration
is sought.

In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988),
aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed.
Cir. 1989). See also In re CyberFinancial.Net Inc., 65
USPQ2d 1789, 1791 (TTAB 2002) (“[I]f applicant’s mark
Ser No. 79000707
12
BONDS.COM is generic as to part of the services applicant
offers under its mark, the mark is unregistrable”).
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987;
Meehanite Metal Corp. v. International Nickel Co., 262 F.2d
806, 120 USPQ 293, 294 (CCPA 1959). Descriptiveness of a
mark is not considered in the abstract, but in relation to
the particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978).
We must consider whether the mark in its entirety is
merely descriptive. P.D. Beckwith, Inc. v. Commissioner,
252 U.S. 538, 545-46 (1920). However, “[i]t is perfectly
acceptable to separate a compound mark and discuss the
implications of each part thereof … provided that the
ultimate determination is made on the basis of the mark in
Ser No. 79000707
13
its entirety.” In re Hester Industries, Inc., 230 USPQ
797, 798 n.5 (TTAB 1986).
The examining attorney argues that in “this case, the
mark ‘on-finance’ describes that the goods and services
relate to finance or are about the science of the
management of money and other assets and therefore, the
mark must be held descriptive.” Brief at 4. The examining
attorney also argues (Brief at 5) that “the use of the
preposition ‘on’ with the word ‘finance’ describes that the
goods and services are about finance or financially related
goods and services. The examining attorney has attached a
definition of ‘on’ … showing that one of the definitions of
‘on’ is ‘concerning or about.’”8
Applicant maintains (Brief at 4) that a “degree of
thought or imagination is required to mentally connect the
broad term ‘on-finance’ with applicant’s specialized
services. Furthermore, Applicant’s insurance services,
while tangentially related to the field of finance, cannot
be though[t] of as being merely described by the mark ON-
FINANCE.”

8 We grant the examining attorney’s request to take judicial
notice of this definition. University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 79000707
14
The examining attorney’s evidence to support her
argument that the mark, , is merely descriptive
consists of numerous registrations in which the term “on
finance” is used in the identification of goods and/or
services. Some examples are set out below:
Registration No. 1,262,328 – “Reports on finance and
industry” in Class 16

Registration No. 1,481,545 – “Newsletters, manuals and
periodically published books on finance and investing”
in Class 16

Registration No. 1,828,225 – “Books and pamphlets on
finance and securities law” in Class 16

Registration No. 2,250,716 – “Pre-recorded compact
disks and diskettes featuring information on finance
and investing” in Class 9

Registration No. 2,134,207 – “Educational services,
namely, offering on-site employee education on finance
and financial planning” in Class 41

Registration No. 2,388,086 – “Providing information on
finance, financial portfolio statements, securities…”
in Class 36

Registration No. 2,847,706 – “Providing information on
finance, stocks and investments by way of a global
computer network” in Class 36

Registration No. 2,533,707 – “Provision information
and advice on finance, investment and value via
television, cable television, radio, print, broadband
and the Internet” in Class 36

Registration No. 2,824,498 – “Providing information on
finance and personal finance” in Class 36

The examining attorney, in her first Office action,
also included a definition of “finance” as “the science of
Ser No. 79000707
15
the management of money and other assets.” We also take
judicial notice that “finance” can be defined as simply
“the management of revenues” and “the conduct or
transaction of money matters generally, esp. those
affecting the public, as in the field of banking and
investment.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987).
In light of this evidence, we now focus our discussion
on the services in Class 36 that have been refused
registration on the ground that, when the mark is used with
these services, the term is merely descriptive. Under the
Analog Devices and CyberFinancial.Net cases, if the term
“on-finance” is merely descriptive for any of the services
in Class 36, the examining attorney’s refusal will be
sustained.
Based on the dictionary definitions, we find that the
term “on finance” would generally mean “concerning or about
the management of revenues.” There are two points we must
keep in mind. First, when the term is applied to the goods
and services, it must immediately describe them. Second,
as indicated in the first point, we look at the mark in
relationship to the goods and services and not the words
alone. Abcor Dev., 200 USPQ at 218 (“Appellant’s abstract
test is deficient – not only in denying consideration of
Ser No. 79000707
16
evidence of the advertising materials directed to its
goods, but in failing to require consideration of its mark
‘when applied to the goods’ as required by statute”).
Therefore, we reject applicant’s argument (Brief at 8) that
a “consumer must know more than the fact that a company
falls within the enormous rubric of finance to know what
particular goods or services are provided.” Instead, we
must consider whether prospective purchasers view the mark
in the context of the specific goods and services as
describing a characteristic or feature of those goods or
services. The prospective purchaser would understand what
the goods or services are in making this determination.
We now consider whether the term “on finance” would
describe applicant’s services in Class 36. Clearing
financial transactions, electronic commerce services,
brokerage and security consulting services are concerned
with or about managing revenue or other similar assets.
Therefore, we find that the term “on finance” would merely
describe these services inasmuch as they are “about” or
“concerning” finances or managing revenues. We also find
that monetary exchange services would similarly be services
that are concerned with or about the conduct or transaction
of money matters, which is what monetary exchange services
Ser No. 79000707
17
would involve. Therefore, the term “on finance” would
describe these services.
Regarding applicant’s commercial lending services, we
add that the term “finance” is also defined as “to raise
money or capital needed for financial operations.” The
Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). We again take judicial notice
of this definition and the term “on finance,” when applied
to commercial lending services, would merely describe these
services as concerning raising money or capital, in this
case by lending money, for commercial entities.
We must also address the goods in Class 9 that remain
in dispute, i.e., “computer software for financial
accounting.” We find that the definitions indicate that
the term “on finance” would be defined as concerning or
about the management of revenues. Financial accounting
software would assist in the management of revenues by
accounting for the revenues. Indeed, applicant has
specified that its software is specifically for “financial
accounting.” Consumers encountering the term “on finance”
for financial accounting software would immediately know
that the software is concerned with the management of
revenues. Applicant’s financial accounting software would
permit purchasers to manage their finances. Therefore, we
Ser No. 79000707
18
likewise find that the term “on finance” is merely
descriptive of this computer software.
We now address a few final points. First, while we
have relied on several definitions of “finance,” this is
entirely appropriate in this case in which applicant has
applied for the registration of its term on numerous goods
and services. It is not surprising that some goods or
services are more accurately described by one particular
definition than another. Second, the term “on finance” is
not “too broad and varied to describe Applicant’s goods and
services” as it argues. Brief at 8. A term can be at
least merely descriptive of the field in which applicant
operates. See In re A La Vieille Russie Inc., 60 USPQ2d
1895 (TTAB 2001) (RUSSIANART generic for art dealership
services); In re Harcourt Brace Jovanovich, Inc., 222 USPQ
820 (TTAB 1984) (LAW & BUSINESS held unregistrable on the
Supplemental Register). Inasmuch as applicant’s goods and
services that are relevant here are concerned with or about
finance, the term is not too broad to merely describe these
goods and services. Third, we also note that applicant has
applied to register the term, , in standard
character form with a hyphen. The presence of minor
spelling idiosyncrasies or punctuation marks does not
normally change merely descriptive terms into suggestive
Ser No. 79000707
19
terms. In re S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB
1984) (“Aside therefrom, we are not persuaded that the
design features of applicant's mark, namely, the filling in
of portions of some of the letters in the mark and the
separation of the two words of the mark with a conventional
punctuation mark, are so distinctive as to create a
commercial impression separate and apart from the
unregistrable components”). Fourth, applicant refers to
several other registrations that involve the term, “on.”
We note that the marks in these registrations share
virtually nothing in common with the mark here except that
they include the preposition “on.” The goods and services
are frequently quite different. We are also unaware of a
per se rule that requires marks beginning with the
preposition “on” to be treated the same. Rather we must
look at the specific mark for which applicant seeks
registration and view it in relation to the identified
goods and services. Therefore, these registrations have
little, if any, relevance. We add that “[e]ven if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO's allowance of such
prior registrations does not bind the Board or this court.”
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
Ser No. 79000707
20
Decision: We affirm the refusal to register
applicant’s mark on the ground that it is merely
descriptive for the following goods and services:
Computer software for financial accounting, for the
provision of online information services in the field
of finance, [and] and audio and video recordings in
the field of finance in Class 9;

Printed instructional and teaching materials, all in
the fields of finance in Class 16; and

Insurance services, namely, insurance brokerage,
insurance claims processing; financial services,
namely, clearing of secure financial transactions
through online services; financial analysis and
consultation; financial information provided by
electronic means; financial information processing;
financial portfolio management; financial services,
namely, securities consulting and safe keeping;
financial sponsorship of sports, educational and
entertainment programs and events; commercial lending
services; monetary exchange; credit card services;
electronic commerce services, namely, electronic debit
and credit card transaction processing services, funds
transfer and bill payment-processing services;
discount brokerage services; security brokerage;
brokerage in the field of insurance, stocks,
commodities; custom brokerage for third parties in the
field of insurance, stocks, commodities; brokerage of
shares and venture capital funding services to start-
up companies; brokerage of fund shares; brokerage of
productive investment of funds; providing information
and brokerage of insurances in the filed of home
insurance, accident insurance and health insurance;
consulting services relating to bank services;
providing information via telephone and the global
communication networks in the field of finance in
Class 36.