Gary R. Johnson

Trademark Trial and Appeal Board

Feb 13, 2002

No. 75464801 (T.T.A.B. Feb. 13, 2002)

2/13/02
Paper No. 18
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gary R. Johnson
________

Serial No. 75/464,801
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Steven R. Ormiston and Jack H. McKinney of Ormiston &
McKinney for Gary R. Johnson.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Hanak, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
We hold these truths to be self-evident, that all men are
Creator their by endowed are they that ,equal created
with certain inalienable rights, that among these are
.happiness of pursuit the and ,liberty ,life
-- Preamble to the Declaration of Independence
GlideText in

Gary R. Johnson, a United States citizen, resident of
Boise, Idaho, and on April 9, 1998, as a pro se applicant,
sought registration of the mark GLIDETEXT for goods
identified in that initial application as “Printed and
Electronic Text structured in Gliding format. That is
THIS DISPOSITION IS
CITABLE AS
PRECEDENT OF THE
TTAB
Serial No. 75/464,801
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words on every other line of text are sequenced in reverse
order. Patent Pending.” During the Office’s pre-
examination phase, drawing on the identification of goods
as listed above, the United States Patent and Trademark
Office initially placed the goods identified in this
intent-to-use application in International Classes 9
(software, etc.) and 16 (publications, printed matter).
Upon retaining counsel, Mr. Johnson submitted a
preliminary amendment to change the identification of goods
to simply “printed and electronic text.” Nonetheless, the
Trademark Examining Attorney found the identification of
goods to be indefinite.
Counsel then submitted an amendment that read as
follows: “printed text that may be used in all types of
printed materials,” in International Class 16, and
“electronic text that may be used in all types of
electronic publications,” in International Class 9. With
its response to the final Office action and request for
reconsideration, applicant also sought to add services in
International Class 35, recited as “licensing of computer
software.” The Trademark Examining Attorney rejected this
amendment as being outside the scope of the earlier
identification of goods under 37 C.F.R. §2.71(a). Because
Serial No. 75/464,801
- 3 -
applicant later withdrew this amendment, this particular
issue is no longer before us.
Applicant then offered to amend its identification of
goods and recitation of services to the following
formulation: “Printed text for use as a component of a
book, magazine, newsletter, manual or newspaper,” in
International Class 16; “electronic text for use as a
component of an electronic book, magazine, newsletter,
manual or newspaper,” in International Class 9; and
“licensing of the Glidetext concept,” in International
Class 35. For the reasons stated in earlier actions (i.e.,
indefinite as to the identification of goods, and the
proposed service mark recital exceeding the scope of the
goods in the original identification), the Trademark
Examining Attorney refused this latest attempt by applicant
to salvage this application, and in her final action, held
the identification of goods to be unacceptable.
Both the applicant and the Trademark Examining
Attorney have fully briefed this case for appeal,1 and
applicant did not request an oral hearing before the Board.
We affirm the refusal to register.

1 Although applicant included in the heading of this appeal a
second trademark application for the mark “GT,” Office records
indicate that application Ser. No. 75/562,563 is not ripe for
appeal and is not currently before the Board.

Serial No. 75/464,801
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Applicant argues that he intends to use the mark to
identify the specific presentations of text as a component
part of printed and electronic products. Consistently
throughout the prosecution of this application, applicant
has attempted to identify his goods as “text.” In its
brief, applicant appears to argue that the problem with the
prosecution of this application, leading to the instant
appeal, is the rigidity of the Trademark Examining Attorney
or the inflexibility of the trademark identification and
classification system.
By contrast, the Trademark Examining Attorney argues
that applicant has been unable to provide an acceptable
identification of goods because he has failed to identify
any definite goods in trade to which applicant would apply
its purported trademark.
According to a copy of parts of applicant’s patent
that has been made of record, what is claimed in the patent
is a method of formatting horizontally structured printed
and electronic text. The methodology reverses the word
sequence on the second line of the text and every other
line thereafter so that the reader, when finished reading a
first line from left to right (as is traditional among
English-language readers), drops his/her eyes directly
below to begin reading the second line from right to left,
Serial No. 75/464,801
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continuing in this alternating fashion until finished
reading all lines of the paragraph or text.
We pass no judgment on the underlying invention from
the standpoint of linguistics or cognitive psychology, but
admit that a thorough reading of the patent claims leaves
us unsure exactly what goods or service this invention
involves. However, it does seem clear from the examples
that applicant has proffered that any text currently
printed on a written page, or electronic text (e.g.,
displayed on a computer monitor), could have the sequencing
of words restructured in this serpentine fashion.
Presumably this could be accomplished with text already
committed to writing by employing optical character
recognition software and then integrating a software module
modifying the word processing and re-printing functions.
With electronic text, the display of the sequencing of the
words (as well as any subsequent printing thereof) would
necessarily be altered using the appropriate software.2

2 “… With the advent of word processing capability,
personal computers, and character-recognition computer
technology, restructuring of traditionally structured
text for smoother reading becomes technically and
economically feasible as well as culturally
imperative… ”
Patent No. 6,113,147, REFORMATTING PRINTED AND ELECTRONIC TEXT FOR
SMOOTHER READING, p. 2, ¶3 under “BRIEF SUMMARY OF THE INVENTION.”

Serial No. 75/464,801
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The sole issue before us is whether applicant has
provided an acceptable identification of goods. We agree
with the Trademark Examining Attorney that applicant has
failed to identify any definite goods in trade to which
applicant would apply its purported trademark.
As argued by the Trademark Examining Attorney, even if
this GLIDETEXT concept were universally and unquestionably
identified in some way with Mr. Johnson, that does not mean
the term GLIDETEXT functions as a trademark for the alleged
goods that applicant has attempted to identify (or for any
goods, for that matter). No matter how much applicant
wishes it were so, a moniker given to an idea, a concept, a
process or an invention does not magically become a source
identifier. See In re Port-A-Hut, Inc., 183 USPQ 680, 682
(TTAB 1974).
As argued by the Trademark Examining Attorney, it is
still not clear what the goods in trade may be to which
applicant intends to apply its mark. Even a thorough
review of applicant’s patent (i.e., all the portions that
have been made of record) does not make it clear whether
applicant’s invention involves any computerized methodology
for print or electronic publishers to achieve this result.
For example, an acceptable identification of goods in trade
for specialized software could well be something like “text
Serial No. 75/464,801
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restructuring software utilities for altering the
presentation of printed and electronic text,” in
International Class 9.
Applicant’s tardy attempt at pursuing a registration
for a mark used in connection with alleged services
(“licensing of computer software” or “licensing of the
Glidetext concept”) is reminiscent of reported decisions of
this Board and our principal reviewing Court, dealing with
the designation for a process or method where an earlier
applicant also thought the name of its process or invention
functioned as a service mark. A concept, or a process,
however, is only a way of doing something, and by itself is
not an activity for the benefit of others. A term that
merely designates a process, or is used only as the name of
a process, is not registrable as a service mark. See In re
Universal Oil Products Co., 167 USPQ 245 (TTAB 1970),
aff'd, 177 USPQ 456 (CCPA 1973) [alleged marks used only in
the context of a process and not in association with
provision of the services]; In re Griffin Pollution Control
Corp., 517 F.2d 1356, 186 USPQ 166 (CCPA 1975) [Alleged
mark identifies a water treatment process but is not used
as a mark]; In re Hughes Aircraft Co., 222 USPQ 263 (TTAB
1984) [proposed mark used only in connection with a
photochemical method, and there was no association between
Serial No. 75/464,801
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the applicant’s offer of services and the proposed mark];
In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979)
[proposed mark used only to identify liquefaction process,
and not used in association with design and construction
services].
As noted earlier, the Trademark Examining Attorney
correctly refused to permit applicant to broaden its
original identification of goods to include a recital of
services. However, to the extent that applicant may take
the printed or electronic texts of others and change them
consistent with its invention, such a “text reformatting
service” (whether done manually or electronically) may be
analogized to “language translation services” in
International Class 42. While provided only as possible
examples, if any such wording comports with applicant’s
intentions for applying his mark to such products or
services, such an identification of goods or recitation of
services could be deemed acceptable. However, we cannot
determine whether applicant has adopted a valid trademark
or service mark as this record fails to capture the essence
of the goods and/or services on which the GLIDETEXT mark
will be used.3

3 We have offered these specific hypotheticals to help in
clarifying our position. However, we hasten to add that none of
Serial No. 75/464,801
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Decision: The refusal to register based upon
applicant’s failure to adopt an acceptable identification
of goods is hereby affirmed.

the above examples should be taken as an indication that in the
event applicant herein had correctly amended to some such
identification (or certainly a recitation of services), that the
proposed amendment would or should have been deemed to be within
the scope of the original identification of goods. See 37 C.F.R.
§2.71(a):
“The applicant may amend the application during the
course of examination, when required by the Office or
for other reasons.
(a) The applicant may amend the application to
clarify or limit, but not to broaden, the
identification of goods and/or services.”