Douglas Cutting

Trademark Trial and Appeal Board

Jun 26, 2018

No. 87109861 (T.T.A.B. Jun. 26, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Cutting
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Serial No. 87109861
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Jason S. Smith of Hellman Yates & Tisdale, PA,
for Douglas Cutting.
April A. Hesik, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Taylor, Lykos, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Douglas Cutting (“Applicant”) seeks registration on the Principal Register of the
proposed mark BUYER ENGINE in standard characters for “real estate marketing
services,” in International Class 35.1
The Trademark Examining Attorney refused registration of Applicant’s proposed
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the

1 Application Serial No. 87109861 was filed on July 20, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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ground that the proposed mark is merely descriptive of the services identified in the
application. After the Examining Attorney made the refusal final, Applicant
appealed. Applicant and the Examining Attorney have filed briefs. We affirm the
refusal to register.
I. Record on Appeal
The record on appeal consists of the following materials, all of which were made
of record by the Examining Attorney:
1. Definitions of “buyer” and “engine” from BUSINESSDICTIONARY.COM, and
definitions of “engine” from the AMERICAN HERITAGE DICTIONARY and the
FREE ONLINE DICTIONARY OF COMPUTING;2
2. Pages from Applicant’s published application for a method patent;3
3. Internet webpages of companies in the real estate business showing the use
of search engines to collect information regarding real estate buyers;4 and
4. Third-party registrations from the Patent and Trademark Office’s
Trademark Status & Document Retrieval (“TSDR”) database for marks
covering various services in which the words “buyer” and “engine” have
been disclaimed.5

2 November 8, 2016 Office Action at 2-4; May 29, 2017 Office Action at 2-6.
3 November 8, 2016 Office Action at 5-8.
4 Id. at 9-13; May 29, 2017 Office Action at 57-91.
5 May 29, 2017 Office Action at 7-56.
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II. Analysis of Mere Descriptiveness Refusal
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 of the
applicant is merely descriptive . . . of them,” unless the mark has acquired
distinctiveness under § 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). A mark 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 Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). “A mark 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
(TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987)).
Whether a mark is merely descriptive is “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 Bayer, 82
USPQ2d at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys,
118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
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(CCPA 1978)); see also Bayer, 82 USPQ2d at 1831. “In other words, we evaluate
whether someone who knows what the [services] are will understand the mark to
convey information about them.” Fat Boys, 118 USPQ2d at 1515 (citing DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012)).6
To determine whether Applicant’s proposed mark BUYER ENGINE is merely
descriptive, we are “required to examine the meaning of each component individually,
and then [to] determine whether the mark as is whole is merely descriptive.”
DuoProSS, 103 USPQ2d at 1758. If BUYER and ENGINE are each individually
descriptive of the services identified in the application, we must determine whether
their combination in “Applicant’s mark ‘conveys any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.’” Fat Boys, 118
USPQ2d at 1515-16 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1372 (Fed. Cir. 2003)). If each word instead “retains its merely
descriptive significance in relation to the [services], the combination results in a
composite that is itself merely descriptive.” Id. (citing In re Tower Tech., Inc., 64
USPQ2d 1314, 1317-18 (TTAB 2002)); see also In re Mecca Grade Growers, LLC, 125
USPQ2d 1950, 1953-55 (TTAB 2018).
Evidence that a term is merely descriptive to the relevant purchasing public may
be obtained from any competent source, such as dictionaries, newspapers, surveys,

6 A mark is suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach a
conclusion about their nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515.
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labels, packaging, or advertising materials. Mecca Grade Growers, 125 USPQ2d at
1953 (citing Bayer, 82 USPQ2d at 1831 and Abcor Dev. Co., 200 USPQ at 218). “It
may also be obtained from Applicant’s own specimen of use and any explanatory text
included therein,” id. (citing N.C. Lottery, 123 USPQ2d at 1710), as well as from
information provided by an applicant during prosecution. In re Calphalon Corp., 122
USPQ2d 1153 (TTAB 2017).
A. The Examining Attorney’s Arguments and Evidence
The Examining Attorney first argues that the record shows that a feature of the
services identified in the application as “real estate marketing services” is the use of
“search engines pertaining to information about real estate buyers.” 6 TTABVUE 5.
Because the involved application is an intent-to-use application and there is no record
evidence of any use of the applied-for mark,7 the Examining Attorney does not rely
on explanatory text in a specimen of use, as in N.C. Lottery, 123 USPQ2d at 1709-10
(holding that the Board properly relied on the applicant’s specimen in finding that
FIRST TUESDAY was merely descriptive of “lottery cards; scratch cards for playing
lottery games,” and “lottery services,” where the specimen showed that the lottery
games were introduced on the first Tuesday of each month), or on advertising
materials, as in Abcor Dev., 200 USPQ at 218 (holding that the Board properly relied
on the applicant’s advertising materials in determining that GASBADGE was merely
descriptive of a “[d]evice to determine and monitor personal exposure to gaseous

7 In response to the Examining Attorney’s information request during prosecution, discussed
below, Applicant stated that he “has not yet used any of the requested materials and
documents in interstate commerce.” May 4, 2017 Response to Office Action at 6.
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pollutants,” where those materials “clearly identifie[d] the gaseous pollutants
collection function of [the applicant’s] device and its use in determining personal
exposure to such pollutants”). Instead, the Examining Attorney relies on information
provided by Applicant in response to a request for information made by the
Examining Attorney pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61, regarding
the services identified in the application, including specifically whether the services
“include a search engine” and, if so, whether “the search engine pertain[s] to
information about buyers.”8
Applicant’s response stated that his services “will include a search engine and the
search engine will pertain to information about real estate buyers.”9 Applicant
further claimed that the “services [he] intends to provide are unique” and provided
the following “detailed description of such services”:
A novel method for generating real estate leads comprising:
a. registering participating buyers and buyers’ agents in an
online computer system by requiring them to input
information comprising: desired property specifications; b.
registering participating sellers and sellers’ agents in the
online computer system by requiring them to input
information comprising: reciprocal specifications of
interest; c. running a comparison algorithm in the online
computer system every time any new information is input
into the online computer system, to determine whether
there is a new match between any of the desired property
specifications and the reciprocal specifications of interest;
d. notifying, by an electronic communication generated in
the online computer system, the registered participating
buyers and buyers’ agents and the registered participating
sellers and sellers’ agents of any new match relating to
their respective specifications; e. publishing the desired

8 November 8, 2016 Office Action at 1.
9 May 4, 2017 Response to Office Action at 6.
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property specifications in the online computer system, such
that they are accessible and searchable by any interested
member the public; and f. connecting, by an electronic
communication generated in the online computer system,
any interested member of the public to the registered
participating buyers and buyers’ agents.10
We agree with the Examining Attorney that the record shows that a feature of
Applicant’s real estate marketing services is the use of a search engine pertaining to
information about real estate buyers.
The Examining Attorney next argues that “the mark BUYER ENGINE is merely
descriptive of this feature of applicant’s real estate marketing services . . . .” 6
TTABVUE 5. She contends that “the individual words ‘BUYER’ and ‘ENGINE’ are
descriptive of search engines that feature information pertaining to potential buyers
of real estate.” Id. With respect to BUYER, the Examining Attorney relies on a
dictionary definition of the word as “a party which acquires, or agrees to acquire,
ownership (in case of goods), or benefit or usage (in case of services), in exchange for
money or other consideration under contract of sale.” Id. at 6.11 She also relies on six
third-party registrations of marks for various real estate services in which “buyer” is
disclaimed, id. at 6-7,12 citing In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB
2006) and In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB
2014), in which the Board held that third-party registrations “‘show the sense in

10 May 4, 2017 Response to Office Action at 6. Applicant’s description of his services
reproduces his description of his claimed invention in his published application for a method
patent. November 8, 2016 Office Action at 6.
11 Id. at 2-3 (businessdictionary.com).
12 May 29, 2017 Office Action at 8-21, 24-47, 51-56.
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which [a] word is used in ordinary parlance and may show that a particular term has
descriptive significance as applied to certain goods or services.’” (quoting Institut
National Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d
1190, 1196 (Fed. Cir. 1992)). The dictionary definitions and third-party registrations
show that the word BUYER in Applicant’s mark is descriptive of a feature of
Applicant’s services, which he acknowledges “pertain to information about real estate
buyers.”13
The Examining Attorney argues that the word ENGINE is “simply a synonym for
‘search engine.’” Id. at 7. She points to dictionary definitions of “engine” as
“Computers: A search engine,”14 and as “Computing: Central piece of software (core)
around or to which other features and functions are built or added, such as a search
engine,”15 and 10 third-party registrations “for goods or services featuring search
engines in which ‘ENGINE’ is disclaimed, including in marks registered on the
Supplemental Register.” 6 TTABVUE 7.16
The dictionary definitions of “engine” and the third-party registrations in which
the word has been disclaimed establish that “engine” is at least descriptive when it
is used in marks for computer software-related goods and services such as “providing
search engine software and commercial information by way of a search engine,”17 and

13 May 4, 2017 Response to Office Action at 6.
14 May 29, 2017 Office Action at 2 (AMERICAN HERITAGE DICTIONARY (ahdictionary.com)).
15 November 8, 2016 Office Action at 4 (BUSINESS DICTIONARY (businessdictionary.com)).
16 May 29, 2017 Office Action at 10-12, 16-21, 27-32, 35-36, 40-45, 51-56.
17 Registration No. 3311216 for the mark DISCOVERY ENGINE (May 29, 2017 Office Action
at 10-12).
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the “design and development of computer software.”18 Applicant’s “real estate
marketing services” do not involve designing or providing software per se, but
Applicant acknowledges that his services “will include a search engine and the search
engine will pertain to information about real estate buyers.”19 The third-party
registrations of marks containing disclaimers of “ENGINE” involve services that are
similar in nature to Applicant’s services, including “providing information regarding
the goods and services of others obtained from multiple sources to users based on
perceived and known user interests; providing information obtained from search
engines regarding the goods and services of others to users of mobile devices;
searching various sources for information regarding the goods and services of others,
filtering search results based on collected user preference data, and providing the
filtered search results regarding the goods and services of others to users via their
computers or mobile devices;”20 “providing an on-line database featuring advertising
and marketing information;”21 and “providing an on-line computer database
featuring information regarding vehicle valuation data.”22 These registrations

18 Registration No. 3948812 for the mark ERASMUS ENGINE (May 29, 2017 Office Action
at 16-18).
19 May 4, 2017 Response to Office Action at 6.
20 Registration No. 4005440 for the mark AWARENESS ENGINE (May 29, 2017 Office Action
at 30-32).
21 Registration No. 3943502 for the mark CONNECTION ENGINE (May 29, 2017 Office
Action at 27-29).
22 Registration No. 4744611 for the mark COLLATERAL INSIGHT ENGINE (May 29, 2017
Office Action at 35-36).
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therefore are probative of the descriptiveness of “ENGINE” in the context of
Applicant’s services, which he acknowledges involve the use of a search engine in
registering participating buyers [and sellers] and buyers’
[and sellers’] agents in an online computer system by
requiring them to input information . . . notifying, by an
electronic communication generated in the online
computer system, the registered participating buyers and
buyers’ agents and the registered participating sellers and
sellers’ agents of any new match relating to their respective
specifications . . . and connecting, by an electronic
communication generated in the online computer system,
any interested member of the public to the registered
participating buyers and buyers’ agents.23
On the basis of the dictionary definitions of “engine,” the third-party registrations of
marks for similar information-related services in which “ENGINE” has been
disclaimed, and Applicant’s response to the information request during prosecution,
we find that ENGINE is descriptive of the search engine feature of Applicant’s
services.
The Examining Attorney next argues that “[n]ot only are [the] individual words
‘BUYER’ and ‘ENGINE’ merely descriptive of the search engine feature of the
services, but the combination of the terms as ‘BUYER ENGINE’ results in a
composite mark that is itself merely descriptive.” 6 TTABVUE 8. She relies on
“excerpts from real estate marketing websites [that] show that search engines are
commonly use [sic] to collect information for or about buyers, and that the terms
‘BUYER’ and ‘ENGINE’ are commonly used together to describe such services.” Id. at
9. She argues that “because consumers are accustomed to encountering the words

23 May 4, 2017 Response to Office Action at 6.
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‘BUYER’ and ‘ENGINE’ used in proximity to describe search engines pertaining to
potential buyers of real estate, the mark ‘BUYER ENGINE’ is not incongruous when
considered in connection [with] applicant’s search engines that provide information
pertaining to buyers.” Id. at 10.
The Examining Attorney’s Internet evidence shows that search engines are
commonly used in the marketing of real estate. Excerpts from pertinent websites are
reproduced below.

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24

24 May 29, 2017 Office Action at 57-59. This website contains six additional “Real Estate
Search Engine Sites.” Id. at 60-61.
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The realtor.com website discussed above is described elsewhere in the record as
“the #1 Buyer Search Engine,”25 while the trulia.com website discussed above is
described elsewhere in the record as having “a well-designed search engine (allowing
you, for example, to limit your search to foreclosures, price-reduced homes, or
upcoming open houses, and to receive email updates).”26
27
The common use by third parties of search engines to provide information to or about
buyers of real estate is probative of the likely understanding of the term BUYER
ENGINE by purchasers of real estate marketing services involving a “search engine

25 Id. at 80.
26 November 8, 2016 Office Action at 13.
27 Id. at 9.
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. . . pertain[ing] to information about real estate buyers.”28 Cf. In re Mueller Sports
Medicine, Inc., 126 USPQ2d 1584, 1589-90 (TTAB 2018).
On the basis of the record evidence of the descriptive significance of the words
BUYER and ENGINE, and the common use of search engines pertaining to buyers of
real estate in connection with real estate marketing services, we find that “the
combination of the terms as ‘BUYER ENGINE’ results in a composite mark that is
itself merely descriptive.” 6 TTABVUE 8.
B. Applicant’s Arguments
As noted above, Applicant made no evidence of record during prosecution. Instead,
his appeal brief is confined to suggesting that words would need to be added to his
proposed mark to “truly render it merely descriptive,” criticizing some of the
Examining Attorney’s evidence and analysis, and discussing three Board cases
involving marks found to have been suggestive.
Applicant initially acknowledges that the words BUYER and ENGINE in his
proposed mark are not arbitrary because “[t]hey each have meanings that are
suggestively related to the nature of the services.” 4 TTABVUE 2. He nonetheless
argues that “their use and combination is incongruous and unique, and the
suggestion they impart requires imagination, thought, mental pause, and
perception.” Id. According to Applicant, the incongruity and suggestiveness of his
proposed mark are

28 May 4, 2017 Response to Office Action at 6.
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exemplified by considering the descriptive words that
would need to be added to the mark to truly render it
merely descriptive: REAL ESTATE BUYER SEARCH
ENGINE. The meaning of such a mark would immediately
be understood by a consumer. Removing those words,
however, leaves a consumer puzzled and guessing. A buyer
of what? What type of engine? And, viewing the words
combined, what is a buyer engine?
Id. at 2-3.
Applicant’s argument that a consumer exposed to the proposed mark BUYER
ENGINE would be left “puzzled and guessing” in response to the questions “A buyer
of what? What type of engine? [and] [W]hat is a buyer engine?” reflects a fundamental
misunderstanding of the test for mere descriptiveness. “[T]he question is not whether
someone presented only with the mark could guess the goods and services listed in
the identification. Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey information about them.”
Mecca Grade Growers, 125 USPQ2d at 1953 (citing DuoProSS, 103 USPQ2d at 1757).
Applicant never addresses, much less answers, the pertinent question of whether
someone who knows that Applicant’s services are real estate marketing services
involving, by Applicant’s admission, a “search engine . . . pertain[ing] to information
about real estate buyers,”29 will understand the proposed mark BUYER ENGINE to
describe that feature of Applicant’s services. Cf. N.C. Lottery, 123 USPQ2d at 1710
(given the applicant’s explanation that its lottery goods and services were offered on
the first Tuesday of each month, “a consumer would immediately understand the

29 May 4, 2017 Response to Office Action at 6.
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intended meaning of FIRST TUESDAY,” making the claimed mark “less an identifier
of the source of goods or services and more a description of a feature or characteristic
of those goods and services”).
Applicant acknowledges the dictionary definitions of “engine” as a search engine,
but argues that “the phrase ‘search engine’ is commonly used and constitutes a
descriptive definition, while the word ‘engine’ by itself is not and does not.” 4
TTABVUE 3. This argument appears to be a corollary to Applicant’s misdirected
argument that a consumer cannot determine the services provided under the BUYER
ENGINE mark from the mark itself. We agree with Applicant that the record shows
that it is more common to use “search engine,” rather than “engine” alone, to refer to
goods and services involving search engines.30 We are not persuaded, however, that
this would cause someone who knows what Applicant’s services are to understand
the word ENGINE in Applicant’s proposed mark to mean anything other than a
search engine.
Applicant next argues that the “fact that the examiner’s search revealed no
similar or conflicting marks . . . further demonstrates that BUYER and ENGINE are
not a common or natural pairing of words to appear side by side. Again, they require
additional words between them to impart any clear meaning.” 4 TTABVUE 3. This
argument is equally unavailing. Even if the record establishes that “BUYER and
ENGINE are not a common or natural pairing of words to appear side by side,” “there

30 Applicant does not address the Examining Attorney’s evidence of third-party registrations
of composite marks in which ENGINE has been disclaimed, which, as discussed above,
suggest that ENGINE alone can be descriptive of goods and services involving search engines.
Serial No. 87109861
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is no requirement that the Examining Attorney prove that others have used the mark
at issue or that they need to use it,” Fat Boys, 118 USPQ2d at 1514, and the fact “that
Applicant may be the first or only user of a term does not render that term distinctive,
if it otherwise meets the standard [for descriptiveness] set forth in In re Gyulay, In re
Chamber of Commerce, and DuoProSS.” Id. The Examining Attorney has shown that
BUYER ENGINE meets that standard, and Applicant’s argument that the
combination of BUYER and ENGINE in his proposed mark is unique to him does not
rebut that showing.
Finally, Applicant cites three cases that he claims “are particularly analogous and
illustrative here.” 4 TTABVUE 3. They are In re Vienna Sausage Co., 156 USPQ 155
(TTAB 1967) (FRANKWURST found not to be merely descriptive of wieners); In re
John H. Breck, Inc., 150 USPQ 397 (TTAB 1966) (TINT TONE found not to be merely
descriptive of hair coloring); and In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972)
(DRI-FOOT found not to be merely descriptive of anti-perspirant deodorant for feet).
It is, of course, well-settled that neither the Examining Attorney nor the Board is
bound by prior registration determinations of the Patent and Trademark Office in
cases involving different marks, different goods and services, and different records.
See, e.g., In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB
2017). In any event, we agree with the Examining Attorney that the cases cited by
Applicant are readily distinguishable because “in both Vienna Sausage and Breck,
the Board found that the combination of the descriptive terms was incongruous given
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the similarity in meaning of the words that were combined,” 6 TTABVUE 13, and
that the descriptive terms were redundant, characteristics that are not present in the
combination of BUYER and ENGINE here, and because in Pennwalt, “the Board held
that the mark DRI-FOOT was suggestive of antiperspirant deodorant for feet because
it was not the usual or normal manner in which the purpose of the goods would be
described,” id. at 14, while “the mark BUYER ENGINE does not refer in an
incongruous manner to the desired end-result of applicant’s services [but] rather . . .
to a significant feature of the services themselves, and in a manner that is not
incongruous when applied to search engines featuring potential buyers of real estate.”
Id.
In sum, the evidence of record clearly demonstrates that BUYER ENGINE
immediately describes a feature of Applicant’s real estate marketing services,
namely, that they involve the use of a search engine pertaining to information about
real estate buyers. Applicant’s proposed mark is thus merely descriptive of the
services within the meaning of Section 2(e)(1) of the Trademark Act, and is ineligible
for registration on the Principal Register in the absence of a showing of acquired
distinctiveness.
Decision: The refusal to register is affirmed.