Eli Aizenstat DBA BeatShare

Trademark Trial and Appeal Board

Aug 14, 2015

No. 86157325 (T.T.A.B. Aug. 14, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: August 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Eli Aizenstat DBA BeatShare
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Serial No. 86157325
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Roger N. Behle, Jr. of Foley Bezek Behle & Curtis, LLP,
for Eli Aizenstat DBA BeatShare.
Jennifer D. Richardson, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Cataldo, Taylor, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Eli Aizenstat DBA BeatShare (“Applicant”) seeks registration on the Principal
Register of the mark BEATSHARE (in standard characters) for
Computer application software for mobile phones, namely,
software for messaging; Computer application software
for mobile phones, portable media players, handheld
computers, and tablets, namely, software for messaging;
Downloadable mobile applications for messaging,
in International Class 9.1

1 Application Serial No. 86157325 was filed on January 3, 2014, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 86157325
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that Applicant’s mark is merely descriptive of his goods.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
A term is merely descriptive if it immediately conveys knowledge of a quality,
ingredient, characteristic, function, purpose, or use of the goods or services it
identifies. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012). Descriptiveness determinations are made in
relation to an applicant’s identified goods or services, the context in which the mark
is being used, and the possible significance the mark 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).
Applicant’s goods are software applications for messaging. Applicant states that
he “cannot disclose specific details concerning the functionality of the software at
this time” because he has filed a patent application covering certain systems and
methods contained in the software.2 “Rather, broadly construed, the software will
enable users to exchange messages with various sounds of limited duration.”3

2 Appeal Brief at 3, 4 TTABVUE 4 (footnote omitted).
3 Id. Similarly, in response to an inquiry from the Examining Attorney, Applicant stated:
“The software allows users to exchange messages with sounds of limited duration.” October
10, 2014 Response to Office Action at 7.
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Elsewhere in his brief, Applicant states that his product “is a software application
that allows the messaging of short duration sound files.”4
Applicant’s mark may be viewed as a concatenation of the two common words
BEAT and SHARE. The Examining Attorney submitted evidence demonstrating
that “beat” has meanings and uses that are descriptive in association with sound,
and specifically with digital sound files. Definitions of the noun “beat” include:
1. A stroke or blow, especially one that produces a sound or serves as a
signal.
2. A pulsation or throb.
. . .
4. Music
a. A steady succession of units of rhythm.5
In screen shots of several third-party websites of record, the word “beat” is used to
refer to the sound or musical content of a digital file. For example, the site
Killatune.com offers instant MP3 downloads of “beats,” stating:
If you [sic] serious about the music then you’ll understand
how big of an impact a good beat can have on your
listeners. Killatune.com provides rap instrumentals that
you can use for your promotional music projects. You can
use these instrumentals to make songs for mixtapes and
digital downloads.6
Similarly, the website Openmindsentertainment.com offers the download of
“beats,” including an “Orchestral beat with trap style drums and tempo” and an
“Anthemic beat that features powerful horns, very catchy synths, and live guitar

4 Appeal Brief at 9, 4 TTABVUE 10.
5 April 10, 2014 Office Action at 12, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (4th ed. 2009) (from www.thefreedictionary.com).
6 November 1, 2014 final Office action at 9.
Serial No. 86157325
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elements.”7 Other sites offering opportunities to download, and listen online to, a
“beat” include Flocabulary.com8 and Shadowville.com.9
In addition, the Examining Attorney submitted use-based third-party
registrations demonstrating descriptive uses of the word “beat” in association with
software, including the following:
• BEAT RE:EDIT, with “BEAT” disclaimed, for use in connection with
software related to working with sound and music10
• , with “BEAT” disclaimed, for use in connection with
a music and drumbeat production machine and software11
• BEAT PRODUCTION MACHINE, registered on the Supplemental
Register for computer software for digital and audio sound synthesis,
production, editing and playback12
Such third-party registrations, featuring the same or similar goods as an applicant’s
goods, are probative evidence on the issue of descriptiveness where the relevant
word or term is disclaimed, or the mark is registered on the Supplemental Register.
See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006), aff’d, 223 F. App’x
984 (Fed. Cir. 2007). See also Clubagile.org (third-party website providing reviews
of “beat making software”).13

7 Id. at 8.
8 Id. at 5.
9 Id. at 7.
10 Id. at 10-12, Registration No. 4519575.
11 Id. at 16-18, Registration No. 4042544.
12 Id. at 19-20, Registration No. 3952803.
13 April 10, 2014 Office action at 30-34.
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Turning to the second portion of Applicant’s mark, the Examining Attorney
submitted evidence that the definitions of the verb “share” include, among others:
• “Computers To make (a digital file) accessible to other users on a network,
as for copying and downloading.”
• “To participate in, use, enjoy, or experience jointly or in turns . . . .”
• “To relate (a secret or experience, for example) to another or others.”14
These definitions of “share” are consistent with the purpose of Applicant’s
messaging software application, which enables users to exchange messages. The
Examining Attorney also submitted a screenshot of a third-party website,
Soundcloud.com, using the words “beat(s)” and “share” together to describe digital
music and audio files (“Get or share free hip-hop, dubstep, grime, etc. beats”).15
Thus, the record establishes that the terms BEAT and SHARE immediately
convey knowledge of the function, purpose, or use of Applicant’s goods: that they
enable users to exchange messages with music and other sounds or, in other words,
to share beats. We find that these terms retain their descriptive meanings when
combined in Applicant’s mark BEATSHARE.
Applicant contends that his mark is suggestive rather than merely descriptive,
comparing BEATSHARE to other coined compound marks. As the Board has held in
numerous cases, however, combining two words which as a whole are merely

14 We grant the Examining Attorney’s request to take judicial notice of the definition of
“share” in THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2014)
(from www.ahdictionary.com), which was attached to the Examining Attorney’s brief,
6 TTABVUE 16. The Board may take judicial notice of dictionary definitions. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); In re Piano Factory Group Inc.,
85 USPQ2d 1522, 1525 n.6 (TTAB 2006); see also Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 1208.04 (2015).
15 November 1, 2014 final Office action at 3.
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descriptive of the goods into a single term does not avoid a finding of mere
descriptiveness for the combined term. See, e.g., In re Carlson, 91 USPQ2d 1198,
1200 (TTAB 2009) (finding URBANHOUZING merely descriptive); In re Cox Enters.
Inc., 82 USPQ2d 1040, 1044 (TTAB 2007) (finding THEATL merely descriptive); In
re Planalytics Inc., 70 USPQ2d 1453, 1455 (TTAB 2004) (finding GASBUYER
merely descriptive); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB
2001) (finding RUSSIANART merely descriptive). Applicant’s mark as a whole is
not ambiguous or incongruous; nor does it “present a double entendre such that the
merely descriptive significance of the term [ ] is lost in the mark as a whole.” In re
RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012) (quotation omitted). Cf., e.g.,
In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR &
SPICE a double entendre for bakery products); In re Nat’l Tea Co., 144 USPQ 286
(TTAB 1965) (NO BONES ABOUT IT a double entendre for fresh pre-cooked ham).
In addition, Applicant argues that the purpose of his software is not to share
music in terms of complete musical compositions, but instead enables the exchange
of messages with sounds of limited duration: “Given these restrictions, complete
musical compositions cannot be ‘messaged’ to other individuals – that is, the
software does not allow ‘music sharing’ as one of its qualities, characteristics,
features, functions, purposes, or uses.”16 Based on the record evidence, however, we
find that “beat” is descriptive in association with the “various sounds of limited
duration” and “short duration sound files” Applicant’s software is used to exchange.

16 Appeal Brief at 3, 4 TTABVUE 4.
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Record definitions of “music” prove the obvious point that music is composed of
sounds:
1. The art of arranging sounds in time so as to produce a continuous, unified,
and evocative composition, as through melody, harmony, rhythm, and
timbre.
2. Vocal or instrumental sounds possessing a degree of melody, harmony, or
rhythm.
. . .
6. An aesthetically pleasing or harmonious sound or combination of sounds:
the music of the wind in the pines.17
Applicant’s explanation of the purpose of its goods and its identification of those
goods are broad enough to subsume software for messaging that permits users to
share music of limited duration and short duration music files. Although
Applicant’s software does not permit messaging of complete musical compositions,
the mark BEATSHARE is nonetheless descriptive of Applicant’s goods because the
goods allow users to share short duration sound files that may include beats.
Applicant also argues that both BEAT and SHARE have multiple meanings, and
when combined, “purchasers necessarily have to consider all possible definitions
before understanding what the mark represents.”18 Descriptiveness, however, is not
considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007). “‘The 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 and services are will understand the

17 November 1, 2014 final Office action at 39, THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE (4th ed. 2000) (from www.thefreedictionary.com).
18 Appeal Brief at 7, 4 TTABVUE 8.
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mark to convey information about them.”’ DuoProSS Meditech Corp., 103 USPQ2d
at 1757 (quoting In re Tower Tech. Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
That the terms may have other meanings in different contexts is not controlling. In
re Franklin County Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012).
Based on the evidence discussed herein, we find that a consumer of Applicant’s
goods would immediately recognize BEATSHARE to convey information about
them. Because the proposed mark as a whole immediately and directly informs
purchasers of the function, purpose, or use of Applicant’s goods, it is merely
descriptive under Section 2(e)(1).
Decision: The refusal to register Applicant’s mark BEATSHARE is affirmed.