Georgia Dept. of Administrative Services

Trademark Trial and Appeal Board

Nov 21, 2011

No. 77792242 (T.T.A.B. Nov. 21, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: November 21, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Georgia Department of Administrative Svcs.
________

Serial No. 77792242
_______

Peter J. Pawlak Jr. of The Pawlak Law Firm for Georgia
Department of Administrative Svcs.

Jessica A. Powers, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Holtzman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Georgia Department of Administrative Svcs.,
has filed an application to register as a trademark on the
Principal Register the standard character mark TEAM GEORGIA
MARKETPLACE for the following services, as amended:
Ordering and procurement services, namely,
procuring of contracts for others for the
purchase of goods and labor contracting services,
and managing budgets, creating and managing bid
activity, collecting and centralizing purchasing
information, providing data on purchasing habits,
and integrating processes with other parties,
namely, business assistance, advisory services
and consultancy all offered via the Internet;
Ser. No. 77792242
2
business services, namely, registering,
screening, credentialing and organizing third-
party vendors, suppliers, and contractors, and
documentation and information on behalf of
others; assisting with the management of
government contracts with public sector entities

in International Class 35.1 In response to the examining
attorney’s requirement for a disclaimer of GEORGIA
MARKETPLACE, applicant submitted a disclaimer of GEORGIA.
The examining attorney refused registration pursuant
to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a),
based on applicant’s failure to comply with the requirement
to disclaim the word MARKETPLACE on the ground that it is
merely descriptive of applicant’s services within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). When the refusal was made final, applicant
appealed.2 Applicant and the examining attorney have filed

1 Application Serial No. 77792242, filed on July 29, 2009, based
on an allegation of January 1, 2009 as a date of first use of the
mark in commerce under Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a). Applicant divided additional services in Class 42
into a “child” application with a disclaimer of GEORGIA.
2 In its brief on appeal, applicant cites to TBMP § 1204 (3d ed.
2011) in support of its argument that because it did not address
the disclaimer issue in its request for reconsideration, the
examining attorney’s arguments and evidence on the issue
submitted with her denial thereof should be inadmissible.
However, none of the authorities cited in § 1204 support
applicant’s apparent position that it may prevent the examining
attorney from presenting arguments and evidence on an outstanding
issue on final refusal by declining to address that issue in its
request for reconsideration. Nor has applicant cited any
additional authority for its position. Accordingly, applicant’s
request to strike the examining attorney’s arguments and evidence
directed toward the disclaimer of MARKETPLACE in her denial of
applicant’s request for reconsideration is denied.
Ser. No. 77792242
3
briefs on the issue under appeal.
We affirm the refusal of registration in the absence
of a disclaimer in the application.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK
Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re
Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
Ser. No. 77792242
4
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
The examining attorney argues that
…the wording GEORGIA MARKETPLACE is merely
geographically descriptive in relation to the
applicant’s ordering, procurement and business
services taking place in or specifically
targeting businesses that operate in the state of
Georgia and further that the term MARKETPLACE is
itself descriptive of a characteristic of those
services, namely, buying, selling and general
economic activity.3

In support of the refusal, the examining attorney made of
record with her Office actions a number of dictionary
definitions for the word MARKETPLACE. According to these
definitions, MARKETPLACE may be defined as follows:
sphere of trading: the commercial sphere where
buying and selling takes place and the laws of
supply and demand operate
Encarta World English Dictionary
(encarta.msn.com);

a competitive or commercial arena
Compact Oxford English Dictionary
(askoxford.com);

a set of trading conditions or the business
environment

3 Examining attorney’s brief, p. 4.

Ser. No. 77792242
5
Cambridge Advanced Learners Dictionary
(dictionary.cambridge.org);

the world of trade and commerce
Wordsmyth
(wordsmyth.net); and

the world of trade, business, economic affairs,
etc., often used figuratively
Your Dictionary
(yourdictionary.com).

The examining attorney further made of record copies of
pages from commercial and informational Internet websites
in which the term GEORGIA MARKETPLACE is used in connection
with various business-related services. The following
examples are illustrative:
There are many reputable residential lenders in
the Georgia marketplace. However, there appears
to be enough fraud and predatory mortgage
originations to make both Congress and state
legislators pass anti-predatory mortgage laws.
Predatory brokers and lenders can, and do, cause
problems for reputable brokers and lenders, as
well as consumers.
(hansonmortgagecompany.com);

Community Publications
Middle Georgia Guidebook - The Middle Georgia
Guidebook is The Telegraph’s comprehensive guide
to life in middle Georgia. The Guidebook
contains information on community, work, religion
and sports.
Forecast – Get the new year off to a great start
by utilizing the power of Forecast. This annual
business and industry guide features eight themed
sections from automotive to health to the middle
Georgia marketplace.
(mcclatchy.com);

Ser. No. 77792242
6
WestGEORGIA MARKETPLACE
SHOP. SAVE. SMILE.
Home/Douglas County Sentinel/Times-
Georgian/Advertiser A-Z/Stores/Special
Sections/E-mail Alert/View Saved Ads
(print2webcorp.com);

Countdown To Buy Now Features Foreclosed Homes in
Georgia With Prices That Reduce 1% Per Day.
Countdown to Buy, a next generation online real
estate marketplace that offers fair and effective
solutions to buy and sell properties, announced
today that it has entered the Georgia marketplace
and will be featuring recently foreclosed
properties in 17 communities to potential home
buyers.
(kansascity.dbusines.com); and

… An especially significant accomplishment for
the Company was our entry into the Georgia
marketplace with the opening of ‘Seasons at
Laurel Canyon.’ ‘Seasons at Laurel Canyon’ is an
active adult community located just outside
Atlanta in Canton and will offer 766 single-
family one-story homes.
(webcache.googleuserscontent.com).

Finally, the examining attorney made of record copies of
third-party registrations in which the term MARKETPLACE is
disclaimed in marks on the Principal Register or registered
on the Supplemental Register as used in connection with
services similar to those recited in the involved
application. The following examples are illustrative:
Registration No. 3097056 on the Principal Register for the
mark MY FLORIDA MARKET PLACE and design with FLORIDA
MARKETPLACE disclaimed for services including
Ser. No. 77792242
7
promoting the sale of goods and services to the
State of Florida by providing information on
State of Florida procurement practices;
information in the field of government affairs;

Registration No. 3374897 on the Principal Register for the
mark G GENCO MARKETPLACE with MARKETPLACE disclaimed for
On-line, multichannel inventory disposition
services, namely, inventorying merchandise,
ordering and inventory monitoring of electronics,
apparel, toys, hardware, jewelry, baby goods,
general merchandise, furniture, sporting goods,
shoes, food, auto goods, computer/IT goods,
domestic/home goods, marketing of merchandise for
others, infomediary services, namely,
facilitating transactions between buyers and
sellers through providing buyers with information
about sellers, goods and/or services with respect
to liquidated, returned, discontinued and
overstocked inventories, and operating on-line
marketplaces for sellers of goods and/or
services; and

Registration No. 3034422 on the Principal Register under
Section 2(f) for the mark EMARYLAND MARKETPLACE with
MARKETPLACE disclaimed for
On-line procurement, namely purchasing of
computer equipment and supplies, sanitary
supplies, office equipment, office supplies,
food, personal hygiene supplies, and homeland
security purchases for first responders, lawn and
garden tools, hand tools, and the like, and
services namely maintenance of State owned and
leased properties including guard, janitorial,
snow removal and trash removal services,
architectural and other professional services,
public improvements including any construction,
maintenance, or repair of any building, structure
or other public work, for local governmental
entities and independent contractors doing
Ser. No. 77792242
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business with the State of Maryland, all in
accordance and in compliance with applicable laws
and regulation.

We find that the examining attorney has made a prima
facie case that the word MARKETPLACE used in connection
with applicant’s services is descriptive. In this case,
the word MARKETPLACE clearly and unambiguously describes a
significant feature of the services, namely, ordering and
procuring, business assistance, and assisting with
government contract management within a set of trading
conditions or business environment or commercial sphere.
We also find that the word MARKETPLACE when combined with
the word GEORGIA does not lose its descriptive
significance. To the contrary, the wording GEORGIA
MARKETPLACE merely describes the provision of ordering and
procuring, business assistance, and assisting with
government contract management within the business
environment or commercial sphere comprising the State of
Georgia.
Applicant argues “[w]ithout any specificity or even
mention of any good or service in the definitions, it will
surely take some imagination and reasoning to conclude that
‘MARKETPLACE’ is related to Applicant’s government-run
Ser. No. 77792242
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contract-management software services.”4 In short, it is
applicant’s position that MARKETPLACE is too vague to
describe applicant’s services. However, our determination
of whether MARKETPLACE, either alone or in connection with
GEORGIA, merely describes applicant’s services is based
upon the services recited in the involved application. See
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). The
evidence made of record by the examining attorney shows use
of MARKETPLACE as a descriptive term in connection with a
variety of business-related services of a type similar to
applicant’s recited services. In addition, the evidence
shows that GEORGIA MARKETPLACE is a geographically
descriptive term identifying the business or commercial
sphere comprising the State of Georgia in connection with
real estate mortgage lending, the provision of business and
industry information, and real estate sale and development.
Applicant provides, inter alia, contract procurement,
purchasing information, screening, credentialing and
organizing of vendors, business assistance and advice
directed to the Georgia commercial sphere or GEORGIA
MARKETPLACE. As a result, the term MARKETPLACE is not so
vague that consumers will not understand its meaning in
relation to applicant’s services.

4 Applicant’s brief, p. 8.
Ser. No. 77792242
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In addition, applicant contends that the word
MARKETPLACE “does not merely describe a feature of the
services, but rather at most suggests or alludes to a
characteristic or feature.”5 Applicant concludes that while
“the term ‘MARKETPLACE’ conveys some information to the
consuming public regarding a feature or characteristic of
Applicant’s services, the term does not merely describe the
nature of Applicant’s services.”6 In the context of
applicant’s services, contrary to applicant’s argument, we
find the term MARKETPLACE to be sufficiently specific as to
be descriptive rather than one step removed and suggestive.
The word MARKETPLACE in the mark simply describes a
significant feature of the services as discussed above,
namely, that they are directed toward a specific business
environment or commercial sphere. Because that commercial
sphere comprises the State of Georgia, the wording GEORGIA
MARKETPLACE is geographically descriptive of that feature
of applicant’s services.
With its response to the examining attorney’s Office
actions, applicant submitted lists of third-party
registrations and applications for various MARKETPLACE
formative marks. This is not the proper way to make such

5 Id. at 12.
6 Id. at 13.
Ser. No. 77792242
11
applications and registrations of record. See In re Volvo
Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998).
However, because the Examining Attorney did not advise
applicant that the listing was insufficient at a point
where applicant could have corrected the error, the
listings of applications and registrations are deemed to
have been stipulated into the record, to the extent that
the specific data provided by applicant has been
considered. See TBMP §1208.02 (3d ed. 2011). We also
point out, however, that the lists have no probative value
since they do not show the goods or services for which the
marks were registered. In addition, many of the listed
marks are for applications, rather than registrations.
Third-party applications have no evidentiary value other
than to show that they were filed. In re Juleigh Jeans
Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
Finally, applicant submitted a third-party
registration on the Principal Register for the mark TEXAS
MARKETPLACE with no disclaimer for services including
“business resource referral services”7 to show that the
USPTO has treated the word MARKETPLACE as not descriptive
by not requiring a disclaimer. The most that can be said

7 Registration No. 1788409.

Ser. No. 77792242
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of this evidence is that it is inconclusive. In fact, this
registration highlights why prior decisions in other
applications are not binding on the Board and underscore
the need to evaluate each case on its own record. In re
Nett Designs Inc., 57 USPQ2d 1564.
Decision: The refusal to register based on the
requirement for a disclaimer of MARKETPLACE is
affirmed. However, if applicant submits the required
disclaimer of MARKETPLACE to the Board within thirty
days, this decision will be set aside as to the
affirmance of the disclaimer requirement.8 See
Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

8 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use GEORGIA
MARKETPLACE is claimed apart from the mark as shown.” TMEP
§ 1213.08(a) (8th ed. 2011).