Graphcast, Inc.

Trademark Trial and Appeal Board

Mar 29, 2013

No. 85392933 (T.T.A.B. Mar. 29, 2013)

Mailed:
March 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Graphcast, Inc.
________

Serial No. 85392933
_______

Olivia M. Fleming of Barnes & Thornburg, LLP for Graphcast,
Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Zervas, Wellington and Masiello, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On August 9, 2011, Graphcast, Inc. (“applicant”) filed
an intent-to-use application to register VISUALLY (in
standard character form) on the Principal Register for
“providing business intelligence services;
business data analysis; advertising and marketing
services” in International Class 35;

“financial advisory and consultancy services” in
International Class 36; and

“design of information graphics and data
visualization materials; design and development
of computer hardware and software; design for
THIS DECISION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 85392933
2
others in the field of entertainment[,] namely,
customized graphics, customized books, computer
hardware and computer software; graphic design
services; computer services, namely the design of
information graphics and data visualization
materials, and software application development”
in International Class 42.

The examining attorney issued a final refusal 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 in that it conveys significant information
about the services, “that they involve the presentation of
data and information visually.” Brief at 3-4.
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods or
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Remacle, 66
USPQ2d 1222 (TTAB 2002). In other words, the question is
not whether someone presented only with the mark could
guess the services listed in the recitation of services.
Rather, the question is whether someone who knows what the
Ser. No. 85392933
3
services are will understand the mark to convey information
about them. See In re Tower Tech, Inc., 64 USPQ2d 1314
(TTAB 2002); In re Patent & Trademark Services Inc., 49
USPQ2d 1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990). If, on the other
hand, a mark requires imagination, thought, and perception
to arrive at the qualities or characteristics of the goods
or services, then the mark is suggestive. In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir.
2003); see also In re Tennis in the Round, Inc., 199 USPQ
496 (TTAB 1978).
As background, we note that the record reflects that
applicant “owns and operates an online platform that
enables to explore and share Web-based infographics and
data visualizations.” “Data visualizations” are described
in the record as representations of “numerical data in a
visual format. They can be anything from a simple bar
chart to a complex three dimensional CAT Scan
representation.” According to one of applicant’s webpages
in the record:
Infographics and data visualizations are
shifting the way people find and experience
stories, creating a new way of seeing the world
of data. They help communicate complex ideas in
a clear, compact and beautiful way, taking deep
data and presenting it in visual shorthand.

Ser. No. 85392933
4
Another webpage in the record explains:
We use the term "data visualization" as the
overarching word for all this stuff. What
"stuff" are we talking about? We're talking
about any graphic that displays and explains
information, whether that be data or words. When
we use the term "data visualization," we're using
it as a general term used to describe data
presented in a visual way.

To us, infographics are different because
information graphics have a flow to them.
They're data visualizations that present complex
information quickly and clearly. Think of maps,
signs, and charts used by statisticians or
computer scientists: Wherever you have deep data
presented in visual shorthand, you've got an
infographic.

…

An easy-to-read illustration helps tell a
story and makes data points easier to understand.
And it doesn't hurt when infographics are not
only clear and straightforward but also beautiful
and engaging. The aesthetic design draws the
viewer in; the information helps the viewer
analyze and understand the data being presented.

…[W]hat are the elements that make up an
infographic? They are:

•visualizations that present complex
information quickly and clearly

•visualizations that integrate words and
graphics to reveal information, patterns or
trends

Further, applicant states that it “is working on data
visualizations tools to help everyone be able to
communicate visually.” “Visually” is defined in the
Ser. No. 85392933
5
dictionary.com1 definition in the record as “in a visual
manner; with respect to sight; by sight.”
International Class 35 and 36 Services
With respect to the International Class 35 and 36
services, applicant states that the only evidence bearing
on the examining attorney’s refusal is the dictionary
definition of “visually”; and that there is no evidence to
establish that the recited services in these classes are
related to this definition. Applicant concludes that
“visually” is unlikely to conjure in the mind of the
average consumer the image of business intelligence
service, business data analysis, advertising and marketing
services, or financial advisory ad consultancy service. We
agree. The basis for the examining attorney’s contention
that the mark is merely descriptive of a feature of the
services – that information will be presented visually in
rendering the services – is tenuous, requiring “mental
gymnastics.” Consumers of applicant’s International Class
35 and 36 services would not immediately and directly
recognize upon encountering the term “visually” that it
references a significant feature of applicant’s services.
The dictionary definition and applicant’s website do not
directly concern business intelligence services, business

1 Based on The Random House Dictionary (2011).
Ser. No. 85392933
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data analysis, advertising and marketing services,
financial advisory and consultancy services, and there is
no apparent connection between such services and the term
“visually.” The sample graphs depicted in applicant’s
website entitled “Are Stocks Bouncing Back” and
“Visualizing US China Trade Relationship” do not
demonstrate, e.g., providing business data or business
intelligence, or financial advisory services, as the
examining attorney maintains. Thus, the refusal to
register the mark in International Classes 35 and 36 is
reversed.
International Class 42 Services
Turning now to the International Class 42 services,
applicant maintains that its designation is suggestive. It
states:
[E]ven if consumers knew VISUALLY was used in
connection with Applicant’s Class 42 services,
consumers do not know (1) that Applicant[]
combines design, journalism, and analytics to
create graphics and designs; (2) that Applicant’s
software creates a profile that serves as a
business’s portfolio, allowing businesses to
track the popularity of their content; (3) that
Applicant’s software services communicate complex
ideas in a clear, compact way, taking deep data
and presenting it in visual shorthand; (5) how
Applicant’s software slows organizations to
create, host, share and manage their data to
create an illustration of that data, or any other
desirable characteristic of Applicant’s services.

Brief at 10.
Ser. No. 85392933
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Most of applicant’s International Class 42 services
focus on graphics and data visualization. The evidence in
the record reflects that the thrust of data visualization
is visual. Indeed, applicant states in its website that
“When we use the term ‘data visualization,’ we're using it
as a general term used to describe data presented in a
visual way.” The presentation of information visually
hence is a key feature of applicant’s services and
consumers would likely associate the term “visually,”
without thought or conjecture, as a significant feature of
such services.
Applicant, at pp. 12 – 14 of its brief, argues that
the evidence submitted by the examining attorney is not
consistent with the evidence submitted in three Board cases
cited by the examining attorney for the proposition that
material obtained from an applicant’s website is competent
evidence. Suffice it to say that we are not persuaded by
applicant’s argument, which goes to the weight to be
accorded to the examining attorney’s evidence, rather than
the question of whether an examining attorney may rely on
evidence of the type submitted by the examining attorney.
Decision: The refusal to register applicant’s mark for
the International Class 35 and 36 services is reversed.
Ser. No. 85392933
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The refusal to register applicant’s mark for the
International Class 42 services is affirmed.