Gonsalves & Santucci, Inc.

Trademark Trial and Appeal Board

Aug 19, 2019

87538550 (T.T.A.B. Aug. 19, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gonsalves & Santucci, Inc.
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Serial No. 87538550
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Edward S. Wright of Law Offices of Edward S. Wright,
for Gonsalves & Santucci, Inc.

Allison Holtz, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Taylor, Lynch, and Hudis,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Gonsalves & Santucci, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark VIRTUAL FLEET LOGISTICS, in standard characters, for
“software for use by truckers, customers, and potential customers in arranging and
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managing the transportation and delivery of merchandise, freight, or other cargo” in
International Class 9.1
The Examining Attorney refused registration of Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the
identified goods. After the Examining Attorney made the refusal final, Applicant
appealed. Applicant and the Examining Attorney filed briefs. We affirm the refusal
to register.
II. Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods of the applicant is merely
descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive within
the meaning of the statute “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)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir.
2015).
Descriptiveness must be assessed “in relation to the goods 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 because of the manner of

1 Application Serial No. 87538550 has a filing date of July 21, 2017, and is based on
Applicant’s assertion of a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b).
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its use or intended use.” Bayer AG, 82 USPQ2d at 1831 (citing In re Abcor Dev., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). The descriptiveness analysis
concentrates on the identification of goods set forth in the application. See In re
Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting
Octocom Sys., Inc. v. Houston Comp. Servs., Inc., 918 F.2d 937, 16 USQP2d 1783,
1787 (Fed. Cir. 1990)). Evidence that a term is merely descriptive to the relevant
purchasing public “may be obtained from any competent source, such as
dictionaries, newspapers, or surveys.” Bayer AG, 82 USPQ2d at 1831.
The evidentiary record in this case consists solely of online dictionary entries for
the three words forming Applicant’s mark, including the following relevant
definitions:2
Virtual: …
Computers
a. Existing as or by means of digital media: a
virtual classroom.
b. Relating to or existing in virtual reality: a virtual
encounter in a chatroom.
c. Emulating the function of another system or
device.
Fleet: …

2 October 28, 2017 Office Action at 2-12. We grant the Examining Attorney’s request – to
which Applicant has not objected – that we take judicial notice of additional online
dictionary entries for these words from the AMERICAN HERITAGE DICTIONARY, the MERRIAM
WEBSTER DICTIONARY, and the MACMILLAN DICTIONARY. In re White Jasmine LLC, 106
USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of
online dictionaries that exist in printed format or have regular fixed editions). These
definitions are consistent with the dictionary entries already in the record. 6 TTABVUE 8-
50 (attachments to Examining Attorney’s Brief).
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A group of vehicles, such as taxicabs or airliners,
owned or operated as a unit.
Logistics: …
The management of the details of an operation.
The Examining Attorney contends that the terms in Applicant’s mark readily
convey the purpose of the software “that enables or assists in emulating scenarios
for the provision of delivery and transportation services via groups of vehicles.”3
Applicant counters that there are more common definitions of the terms in its mark
than the definitions relied on by the Examining Attorney. In addition, Applicant
claims that “[n]owhere in these definitions is there any suggestion or mention of the
transportation and/or delivery of merchandise, freight, or other cargo,”4 and the
wording therefore cannot be considered descriptive of Applicant’s goods.
Applying the appropriate standard whether someone familiar with the identified
software will understand the mark to describe features of it, Applicant’s mark is
merely descriptive of its software. See DuoProSS Meditech Corp. v. Inviro Med.
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); Abcor Dev.,
200 USPQ at 218; In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). The above
definitions of each word show that consumers would understand VIRTUAL FLEET
LOGISTICS to describe software (virtual -- digital media) to manage operational
details, such as the logistics set forth in the identification of “arranging and
managing the transportation and delivery,” of a fleet, perhaps the group of trucks

3 6 TTABVUE 5 (Examining Attorney’s Brief).
4 4 TTABVUE 6 (Applicant’s Brief).
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driven by the “truckers” also mentioned in the identification, or some other group of
vehicles involved in the “transportation” mentioned in the identification.
Applicant has not submitted any evidence or argument to suggest that the
combination of these individually descriptive words VIRTUAL FLEET LOGISTICS
takes on any different meaning, or a new and unique commercial impression. “In
considering a mark as a whole, the Board may weigh the individual components of
the mark to determine the overall impression or the descriptiveness of the mark
and its various components.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1372 (Fed. Cir. 2004). If the combination retains the descriptive
significance of the individual parts, as we find here, the mark as a whole must be
considered merely descriptive. In re Petroglyph Games Inc., 91 USPQ2d 1332, 1337
(TTAB 2009) (BATTLECAM merely descriptive for computer game software); see
also In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding
SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing
systems composed primarily of light-emitting diodes for industrial and commercial
applications).
We are not persuaded by Applicant’s argument about other potential definitions
of the words in its mark. The Board rejected this same type of multiple definitions
argument in In re Tower Tech, Inc. 64 USPQ2d 1314, 1316 (TTAB 2002), where the
applicant for the mark SMARTTOWER countered a descriptiveness refusal by
“arguing that the word ‘smart’ has many different meanings.” Given the nature of
the goods at issue, the Board held that “Applicant’s argument that the relevant
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purchasers would think of other possible meanings … would require considering the
applied-for mark in a vacuum.” As noted above, we consider descriptiveness in
relation to the identified goods in the Application, and it is therefore appropriate to
focus on the definitions most relevant to them.
We also find unavailing Applicant’s contention that VIRTUAL FLEET
LOGISTICS avoids a descriptiveness refusal because it does not refer to
transportation or delivery of merchandise, freight or cargo. First, we disagree with
Applicant’s characterization. The reference to FLEET involves a group of vehicles,
which are forms of transportation, and LOGISTICS can encompass managing
details for delivery or transportation operations. Second, “the mark need not recite
each feature of the relevant goods or services in detail to be descriptive.” In re Dial-
A-Mattress Op. Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). So
even if the mark describes some but not all of the features of Applicant’s goods, this
suffices to render the mark merely descriptive.
Decision: The refusal to register the mark on the ground that it is merely
descriptive of Applicant’s goods under Trademark Act Section 2(e)(1) is affirmed.