Dialpad, Inc.Download PDFTrademark Trial and Appeal BoardDec 19, 2017No. 86916206 (T.T.A.B. Dec. 19, 2017) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: December 19, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Dialpad, Inc.1 _____ Serial No. 86916206 _____ Julia Spoor Gard and Caitlin R. Byczko of Barnes & Thornburg, LLP, for Dialpad, Inc. Katina S. Jackson, Trademark Examining Attorney, Law Office 104, Dayna Browne, Managing Attorney. _____ Before Zervas, Adlin and Pologeorgis, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Dialpad, Inc. (“Applicant”) seeks registration on the Principal Register of the proposed standard character mark DIALPAD for: “downloadable computer telephony software featuring software applications for unified communications, telephony, messaging, conferencing, and voicemail services for enterprise and consumer users over a global computer network; downloadable computer software for unified communications, telephony, messaging, conferencing, and 1 On June 15, 2016, the USPTO recorded a change of name of Applicant from Switch Communications, Inc. to Dialpad, Inc. See USPTO Assignment Branch Records at Reel/Frame 5814/0532. Serial No. 86916206 - 2 - voicemail services for enterprise and consumer users over a global computer network; downloadable computer software for capturing, indexing, searching, organizing, managing, sharing, and displaying digital and electronic contacts, contact information, messages, information and digital files” in International Class 9; and “telephony software as a service (SAAS) services featuring software applications for telephony, messaging, conferencing, and voicemail services for enterprise and consumer users over a global computer network; providing on-line non-downloadable software for telephony, messaging, conferencing, and voicemail services for enterprise and consumer users over a global computer network; providing online non-downloadable software for capturing, indexing, searching, organizing, managing, sharing, and displaying digital and electronic contacts, contact information, messages, information and digital files” in International Class 42.2 The Examining Attorney determined in her final Office Action that DIALPAD is merely descriptive of a feature of Applicant’s identified services, and refused registration of Applicant’s proposed mark for such services pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). In her appeal brief, the Examining Attorney limited her refusal, stating: The refusal does not apply to the following goods and services in the same classes: “downloadable computer software for capturing, indexing, searching, organizing, managing, sharing, and displaying digital and electronic contacts, contact information, messages, information and digital files” in International Class 9 and “providing online non-downloadable software for capturing, indexing, searching, organizing, managing, sharing, and displaying digital and electronic contacts, contact information, 2 Application Serial No. 86916206 was filed on February 23, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), asserting first use and first use in commerce on March 7, 2016 for both the International Class 9 goods and the International Class 42 services. Serial No. 86916206 - 3 - messages, information and digital files” in International Class 42.3 Thus, the goods and services shown above in italics are the goods and services subject to the Examining Attorney’s refusal. After the Examining Attorney made the refusal final, Applicant appealed to this Board and requested reconsideration. The Examining Attorney denied the request for reconsideration. The appeal resumed and both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. Mere Descriptiveness Section 2(e)(1) of the Trademark Act prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the [goods or services] of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” 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, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark ‘need not recite each feature of the relevant goods or services in detail to be descriptive,’ it need only describe a single feature or attribute.” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219, (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001)); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982). “On the other hand, 3 9 TTABVUE 3. Serial No. 86916206 - 4 - if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). Whether a mark is merely descriptive is determined in relation to the services for which registration is sought, not in the abstract or on the basis of guesswork. Descriptiveness must be evaluated “in relation to the particular goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use.” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219. In other words, we evaluate whether someone who knows what the goods or services 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); In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). The Examining Attorney maintains: [The proposed mark] merely describes a feature of the proposed goods and services. In particular, the feature of the software and the software as a service (SAAS) that the mark describes is that of a virtual “dial pad” which appears on the screen of a computer or digital device. The “dial pad” allows the user to dial characters/letters or numbers when accessing the downloadable software or the software as a service for the purpose of performing its unified Serial No. 86916206 - 5 - communications, telephony, messaging, conferencing, and voicemail services functions.4 The Examining Attorney relies on the following evidence: 1. (from https://support.skype.com).5 4 9 TTABVUE 4-5. 5 June 17, 2016 Office Action, TSDR 7 (all citations to TSDR are to the .pdf format). Serial No. 86916206 - 6 - 2. (from Applicant’s website, showing a key pad by the term “Dial.”).6 3. Images of key pads from a Google Images search for the term “dialpad”:.7 6 October 21, 2016 Office Action, TSDR 2-3. 7 Id., TSDR 12. Serial No. 86916206 - 7 - 4. (from softpedia.com).8 The Examining Attorney also submitted webpages from (i) itunes.apple.com/us (“DialPad creates the same touch-tone noises as a telephone pad”)9; and (ii) download.cnet.com (“Dialpad for iPhone” and “Dialpad is a smart dialer. It makes [it] easy to search your contacts and make phone calls from your iPhone.”).10 Applicant challenges their probative value because they demonstrate trademark use of “Dialpad” rather than descriptive use, and do not involve software-as-a-service services. It appears that the intent of the website owners is to use “Dialpad,” a term 8 May 10, 2017 Req. for Recon., TSDR 2-3. 9 Id., TSDR 9. 10 Id., TSDR 5. Serial No. 86916206 - 8 - which describes a feature of the goods discussed therein, as a trademark. They do, however, concern goods which have a function similar to one of the features of Applicant’s International Class 42 services. Their probative value as far as descriptive use may be somewhat limited, but they support the other evidence about the function of keypads, often referred to as “dial pads” or “dialpads,” in the context of telephony products and services. We now turn to Applicant’s principal arguments regarding the merits of the refusal. First, Applicant argues that “there is no evidence to support the finding that the average consumer is familiar with the obscure term ‘dialpad’ as it relates to a keypad or numeric pad”; and submitted a page from merriamwebster.com showing that there is no entry for “dialpad.”11 As for the Google Images webpage submitted by the Examining Attorney, Applicant maintains that it references Applicant and Applicant’s mark, and that the results for “dialpad” from a search on the Google database12 all refer to Applicant. The online version of Oxford English Dictionary (Oxford University Press 2017) defines “dial pad” as “a telephone keypad.”13 This definition, along with the Google Images search results for “dialpad” depicting telephone keypads, including keypads 11 Applicant’s brief at 6, 7 TTABVUE 9; September 20, 2016 Resp., Exh. A, TSDR 64. 12 Sept. 20, 2016 Resp., TSDR 64. 13 http://www.oed.com/view/Entry/51872?redirectedFrom=dial+pad#eid320040904 (accessed December 12, 2017). We take judicial notice of this definition; 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, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 86916206 - 9 - with no identifiable link to Applicant (and probably third-party keypads) and keypads from desk phones and older-model telephones, persuades us that “dialpad” is not an obscure term and that consumers, which comprise businesses as well as members of the general public, would recognize and understand the term. As for the space between “dial” and “pad” and the lack of a space between these terms in Applicant’s proposed mark, we find that the space, or lack of a space, has no effect on the commercial impression or meaning of the term. See In re 3Com Corp., 56 USPQ2d 1060, 1062 (TTAB 2000) (“the mere deletion of a space between the words ATM and LINK does not transform this otherwise generic term into a source indicator or change the commonly understood meaning of the term.”). With regard to the Google search results for “dialpad,” because we have no information on how Google’s algorithm organized the search results for this particular search, and because there are only about ten search results, they have limited probative value. Next, Applicant argues: The relevant consumer is required to exercise her imagination in order to understand what exactly the software does, how it is done, and for whom it is done. An ordinary consumer simply could not infer that the goods or services are computer software merely by looking at the mark itself. Even upon knowing that the goods and services are software for unified communications, telephony, messaging, conferencing, and voicemail services, the same consumer would not immediately and without question know the intended purpose, function, or use of the goods, the class of users of the goods or services, a desirable characteristic of the goods or services, the sound made by Serial No. 86916206 - 10 - an important feature of the goods, the nature of the goods or services, or the end effect upon the user.14 A mark need not identify the goods; the mark need only identify a “quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219. In addition, the evidence disproves Applicant’s argument. See, e.g.: ● Applicant depicts a keypad as one of its features of its goods and services on its website, under the term “dial”15 and even lists phone numbers for a user’s contact. ● softpedia.com states that “DialPad” software is “a simple software tool whose purpose is to aid people in connection through a modem to their phone line and start dialing,” and that “it is possible to save a huge list of contacts in this software solution, as well as manually dial all the phone numbers that interests you.”16 ● download.cnet.com states, “[t]o search for a contact, simply type the numbers that correspond to the characters in the keyword. For example, to search ‘Apple’, just type ‘27753’. The contacts that contain the character combinations will appear on the top of the screen”; and includes a user comment stating “I’d like to use this dial pad for my Hangouts voip phone calls on my Mac.”17 ● Carter, R., Enterprise Features Added to Microsoft Skype for Business (commstrader.com) states “[t]he auto- attendant system works to answer and route inbound calls, and callers can use the Skype for Business dial pad, or speech recognition to ask to be directed through to a specific person or department.”18 14 Applicant’s brief at 8, 7 TTABVUE 10. 15 October 21, 2016 Office Action, TSDR 2-3. 16 May 10, 2017 Office Action, TSDR 2. 17 Id., TSDR 5. 18 May 21, 2017 Req. for Recon. 4 TTABVUE 92. Serial No. 86916206 - 11 - ● Boulton, C., Georgetown University calls on cloud phone service (networksasia.net) states, “Georgetown is piloting such a product from Dialpad, whose application is accessible on the desktop via Google's Chrome browser and iOS and Android devices. The app includes a software phone interface featuring call recording, mute, hold, add and dial pad buttons, as well as texting and video messaging.”19 ● Applicant identifies as one of the “features people love” the ability to “text reply instantly to calls as they come in,” which typically is done with a keypad.20 Further, as noted above, “dial pad” is a defined term in English. Thus, the evidence in the record demonstrates that imagination or thought is not needed to understand that “dialpad” refers to a feature of the goods and services. Applicant also argues that “[n]o reasonable consumer would view a key pad or numeric console as a significant feature of Applicant’s software. In fact, some may not use the numeric console at all. If, for example, all contacts were imported from an email address book or employee list, one may just scroll through to a name or photo in order to make a call”21 (emphasis in original); and that “even if the term ‘dial pad’ were readily understood to refer to this ‘function’ of the software, it is such an infinitesimal part of the software’s overall capabilities and purpose, that no consumer would pay any mind to this relationship. Certainly, no consumer would make a 19 Id., 4 TTABVUE 141. 20 October 21, 2016 Office Action, TSDR 6-8. 21 Applicant’s brief at 12, 7 TTABVUE 14. Serial No. 86916206 - 12 - purchasing decision based on the fact that Applicant’s software could display a numeric console to place calls.”22 Applicant has not cited any precedent indicating that mere descriptiveness depends on whether a prospective purchaser would base a purchasing decision on a descriptive term. Applicant’s identifications of goods and services allow for, but are not restricted to, allowing contacts to be imported from an email address book or employee list; Applicant’s identifications allow for the input and retention of numbers in a phone through a keypad. Third-party telephony systems in the record use the term to describe the same feature, reflecting a competitive need to use the term.23 This feature is significant because it is not limited to only those contacts which are in an email address book or employee list. Further, Applicant’s goods and services allow for electronic messaging, which may be performed with a keypad if messages are sent by a mobile phone. Finally, Applicant argues that because its proposed mark was registered for the following International Class 38 services which were divided out of the present application into a divisional application, it should be registered for the goods and services in the instant application: audio and video conferencing services; Cloud-based computer telephony services; internet telephony services; global computer network telephony services; computer telephony services; communication services, namely, the provision of unified communications, telephony, electronic 22 Id. at 11, 7 TTABVUE 13. 23 See download.cnet.com (“Dialpad for iPhone” and “Dialpad is a smart dialer. It makes easy [sic] to search your contacts and make phone calls from your iPhone.”), May 10, 2017 Req. for Recon., TSDR 5. Serial No. 86916206 - 13 - messaging, telephone conferencing, and voicemail services to enterprise and consumer users over a global computer network; provision of hosted and wireless PBX (private branch exchange) services The record includes two additional registrations for marks consisting of or containing DIALPAD for communication services. The Board is not bound by the decisions of examining attorneys and, moreover, the Board must decide each case on its own facts. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).24 Upon consideration of the foregoing, and all of the arguments and evidence in the record including arguments and evidence not specifically set forth in our opinion, we find that the proposed mark DIALPAD is merely descriptive of a feature of “downloadable computer telephony software featuring software applications for unified communications, telephony, messaging, conferencing, and voicemail services for enterprise and consumer users over a global computer network” in International Class 9 and “telephony software as a service (SAAS) services featuring software applications for telephony, messaging, conferencing, and voicemail services for enterprise and consumer users over a global computer network; providing on-line non-downloadable software for telephony, messaging, conferencing, and voicemail services for enterprise and consumer users over a global computer network” in International Class 42. Applicant urges us to resolve any doubt on the issue of mere 24 The Examining Attorney explains her reasoning for refusing the International Class 9 and 42 goods and services but not the International Class 38 services as follows in her June 17, 2016 Office Action, TSDR 1, “The term DIALPAD is a merely descriptive term when used as a source identifier for goods and services involving telephone usage, including virtual telephone usage.” Serial No. 86916206 - 14 - descriptiveness in its favor. We have no doubt that the proposed mark is merely descriptive of Applicant’s goods and services. Decision: The refusal to register Applicant’s proposed mark is affirmed for the goods and services in both International Classes 9 and 42 which are subject to the Examining Attorney’s refusal. The application will be moved forward for publication for the following goods and services: “downloadable computer software for capturing, indexing, searching, organizing, managing, sharing, and displaying digital and electronic contacts, contact information, messages, information and digital files” in International Class 9, and “providing online non-downloadable software for capturing, indexing, searching, organizing, managing, sharing, and displaying digital and electronic contacts, contact information, messages, information and digital files” in International Class 42. Copy with citationCopy as parenthetical citation