Gust, Inc.

Trademark Trial and Appeal Board

Oct 25, 2018

No. 87312334 (T.T.A.B. Oct. 25, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Gust, Inc.
_____

Serial Nos. 87312334 and 87312341
(Consolidated)
_____

Randy M. Friedberg and Jacqueline C. Hatherill of White and Williams LLP
for Gust, Inc.
Kimberly M. Ray, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____

Before Wellington, Kuczma, and Lynch,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Gust, Inc. (“Applicant”) filed applications to register the following standard
character marks:1 CaaS and COMPANY AS A SERVICE, both for registration on the
Principal Register for the following services:
Compilation of business directories, namely, providing online directory
information on attorney, accountant and other professional listings;
Attorney referral and matching services; Financial referral services,
namely, referrals in the field of finance; Providing an on-line marketplace

1 Application Serial Nos. 87312334 (CaaS) and 87312341 (COMPANY AS A SERVICE) were
filed on January 24, 2017, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) based
on an allegation of first use anywhere and in commerce on January 24, 2017.
Serial Nos. 87312334 and 87312341
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for companies to list investment opportunities, sell securities to investors,
and facilitate the purchase and sale of company securities in International
Class 35;

Venture capital funding services to emerging and start-up companies;
Venture capital services, namely, providing financing to emerging and
other privately held companies; Venture capital services, namely,
providing working capital financing to emerging and start-up companies;
Providing an on-line computer database in the field of stock and securities
market information, namely, providing a website for companies to list
investment opportunities, sell securities to investors, and facilitate the
purchase and sale of company securities; Crowdfunding services in the
nature of providing financing from money collected from individuals;
Management of a capital investment fund in International Class 36;

Providing on-line training courses, seminars, and workshops in the field of
business startups and entrepreneurship in International Class 41; and

Software as a service (SAAS) services featuring software for accounting
services; Hosting a web platform for facilitating set-up and management of
a company’s financial statements and accounting; Providing temporary use
of on-line non-downloadable software for enabling users to create, share,
customize, negotiate and sign legal documents, contracts and forms,
namely, providing a secured access database via the Internet through
which documents and images can be viewed, copied, and printed for
purposes of conducting corporate transactions; Legal document
preparation services and providing general legal information via a website
on global computer networks in International Class 42.

The Trademark Examining Attorney refused registration with respect to each
mark and all classes of services under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that the mark is merely descriptive of the identified
services. The Examining Attorney also argues that registration should be refused
because certain services in Class 42 (“legal document preparation services and
providing general legal information via a website on global computer networks
services”) are classified incorrectly.
Applicant appealed the refusals. The appeals have been consolidated and briefed.
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I. Preliminary Matter – Improper Classification
During the prosecution of the involved applications, Applicant was informed by
the Examining Attorney that the listed “Legal document preparation services and
providing general legal information via a website on global computer networks”
should not be in Class 42, but are properly classified in Class 45. Applicant refused
to amend the application accordingly. Applicant and the Examining Attorney have
argued this issue on appeal.
The Board will not review a requirement for amendment of the classification of
goods because it is not a substantive issue within the Board’s jurisdiction, and
Applicant’s option for review would have been a timely petition to the Director. In re
Faucher Indus. Inc., 107 USPQ2d 1355, 1357-58 (TTAB 2013); In re Tee-Pak, Inc.,
164 USPQ 88, 89 (TTAB 1969) (“It is apparent that the question of proper
classification is not a substantive one and therefore not a matter for appeal.”); see also
Trademark Manual of Examining Procedure (TMEP) § 1704 (October 2017) (“a
requirement for amendment of the classification is a procedural matter that may only
be reviewed on petition” to the Director). Classification is within the sole discretion
of the Office, and Examining Attorneys are authorized to reclassify goods or services
recited in an application without an applicant’s approval. Groening v. Missouri
Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r Pat. 1999); see also TMEP
§ 1401.03(b) (“The examining attorney may amend or correct classification through
an examiner’s amendment, without prior authorization by the applicant.”).
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Accordingly, we do not address the classification issue.2
II. Mere Descriptiveness of the Marks COMPANY AS A SERVICE and CaaS
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
used in connection with the applicant’s services, is merely descriptive of them. 15
U.S.C. § 1052(e)(1). “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 Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 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). By contrast, a mark is suggestive if it “requires
imagination, thought, and perception to arrive at the qualities or characteristics of
the [services].” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
The determination of whether a mark is merely descriptive must be made in
relation to the services for which registration is sought, not in the abstract. In re
Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831. This
requires consideration of the context in which the mark is used or intended to be used
in connection with those services, and the possible significance that the mark would
have to the average purchaser of the services in the marketplace. In re Chamber of
Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). In other words, the question

2 The improperly classified services (“Legal document preparation services and providing
general legal information via a website on global computer networks”) are deleted from Class
42, in accordance with the Examining Attorney’s determination.
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is not whether someone presented only with the mark could guess the services listed
in the identification. Rather, the question is whether someone who knows what the
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)). See also In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB
1998); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990);
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). If a mark is
descriptive of any of the services in a class for which registration is sought, it is proper
to refuse registration as to the entire class. In re Chamber of Commerce, 102 USPQ2d
at 1219.
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,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in
advertising material directed to the [services].” In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978). It may also be obtained from an applicant’s own
website and specimen of use and any explanatory text included therein. In re N.C.
Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001).
The Examining Attorney relies on the plain meanings of the individual words in
the mark COMPANY AS A SERVICE and contends that, as a composite, the phrase
“is a purely descriptive one” because it “immediately and directly tells consumers that
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applicant is a company providing services.”3 She argues the phrase has no alternative
“unique, incongruous, or nondescriptive meaning in relation to the services.”4
The Examining Attorney further asserts that the involved marks are “based on
the very commonly used and understood ‘as a Service’ and ‘aaS’ model for identifying
and describing services, [with] which consumers are very familiar.”5 Specifically, she
contends that there is widespread use of “a word for a generic service concept”
followed by the phrase “as a service,” and that these types of phrases, i.e., “[X] as a
service,” are “commonly used to give a generic name for a type of service offering.”6
As to the initialism, in particular, she states that “[t]hese ‘as a Service’ phrases are
also nearly always shortened to ‘XaaS’-type abbreviations, wherein the ‘X’ represents
the first initial in the ‘as a service’ construct.”7 In support, she relies on printouts
from the following third-party websites and online articles showing use of the phrase
“company as a service” and “CaaS”:8
1. VirtualEmployee.com (www.virtualemployee.com)

“The cloud is all the rage today in the IT landscape. However,
VirtualEmployee.com has been offering cloud services as early as 2012 and has
been the pioneer of the ‘Company as a Service’ (CaaS) concept. We also coined
the phrases ‘cloud employee,’ ‘cloud office,’ ‘cloud company’, and ‘Employee as
a Service’ (EaaS). Now, we are announcing a grand re-launch of
VirtualEmployee.com as your Cloud Company, which you can access from
anywhere, anytime.

3 8 TTABVUE 8.
4 Id. at 7.
5 Id. at 8.
6 Id.
7 Id. at 9.
8 Attached to Office Actions issued on March 7, 2017 and September 13, 2017.
Serial Nos. 87312334 and 87312341
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We provide Company as a Service (CaaS) or a Cloud Company for clients all
over the world. With us, any small or medium company from anywhere in the
world can set up their own ‘office’ in the ‘cloud.’ This is a pay-as-you-consume
service, just like any other cloud service. The only difference is that instead of
only software or infrastructure or platform, we provide an entire office, staff
and employees in the cloud.”9

2. Aiira LinkedIn page (www.linkedin.com/company/aiiria)

“Specialties: Cloud Service Brokering, Cloud Transformation, SaaS, Cloud
Consultancy, IaaS, PaaS, Company as a Service, CaaS, Cloud Technologies,
DevOps, DBaaS, Cloud Management Platforms, Hosted Microsoft Exchange,
Hosted Microsoft Sharepoint, Cloud Backup & Data Storage, CRM.”10

3. Inc. website article (www.inc.com)

“Welcome to the ‘Company as a Service’ Paradigm … Your product is not a
product. It is a means to deliver services to a new kind of consumer. …
1. Transform your company into a service.”11

4. Jeremiah Owyang “web strategist” blog (www.web-strategist.com/blog) article

“In the Collaborative Economy, Your Company Becomes a Service”

9 March 7, 2017 Office Action, at TSDR p. 12.
10 Id. at p. 13. In its brief, Applicant notes that Aiiria is a self-described “UK technology
company” and argues that “there is no likelihood that U.S. consumers will” encounter these
services. 4 TTABVUE 12. However, we note that Aiiria offers its services “internationally”
and the Linkedin website hosting this information is available to US consumers as well. Still,
we agree with Applicant this printout has less probative value to the extent that it involves
a non-US company.
11 Id. at pp. 2-4.
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“Four Phases of Maturity in Company as a Service Model (with real world
examples). In each of these examples, the company doesn’t own the products.
Instead, they are providing customers with access many times over, generating
repeated sales. I’ve listed them out in a maturation order, so folks can activate
in a systematic method.”

[with “Screenshots of the Phases of Maturity of Company as a Service:”]12

5. “in SlideShare” website page providing access to Jeremiah Owyang’s
“Company as a Service” presentation (www.slideshare.net)

6. StartUS Magazine -- “Why Renting a Company is Becoming the New Sharing
Economy Trend”
(article by Augustin Jarak at www.magazine.startus.cc)

“Slavko, how would you describe the new trend company sharing?
Company sharing, or as we also call it ‘Rent a Company’, is basically a
Company as a Service where many users share an existing company in order
to reduce or completely eliminate fixed costs of running their own company.”13

7. Wired.Com – “The Ultra-Flexible Workforce Model: Talent as a Service”
(www.wired.com)

“He’s describing a new workforce/workplace model that I’ll call Talent as a
Service, which is, of course, a play on Software-as-a-Service or (SaaS), the de
facto packaged delivery model for businesses and consumer software. It’s also
a play on what Wladawsky-Berger calls ‘Company as a Service’ which he uses
to describe services from Netflix, Amazon.com, Salesforce.com and others
offered through the cloud instead of through a product you can touch, feel and
carry out of a brick and mortar operation. … That’s why I say the next wave
hitting out talent pool will be increased demand for ‘Talent-as-a-Service’ or
(TaaS). One ‘flavor’ of the TaaS model, business process crowdsourcing,
satisfies these changing demands quite well. It is the seamless delivery of
highly-qualified, on demand expertise.”14

12 Id. at pp. 5-7.
13 Office Action issued September 13, 2017; TSDR p. 28.
14 Id. at p.
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The Examining Attorney also points to screenshots from Applicant’s website,
including those submitted by Applicant with the applications as specimens of use,
and argues these show the mark “being used to describe a feature of the identified
services.”15 For example, Applicant touts itself as “the world’s first Company as a
Service (CaaS) platform, built specifically for high-growth start-ups.”16 Applicant also
describes its services in the following manner:
• “the global SaaS platform that delivers the only Company as a Service
infrastructure for high-growth startups.”17

• “a Company as a Service (CaaS) platform. We call it that because any startup
founder armed with just a business idea can join, and in just a few short days
have a Delaware C-Corporation that’s ready to issue stock, raise capital, hire
employees and sell a product or services. We’ve simplified and streamlined this
process, which traditionally takes a lot of your time and costs a lot of money
consulting with legal counsel.”18

Applicant argues that its mark is “merely suggestive” and it is a juxtaposition of
words that “create an incongruous phrase that requires prospective purchasers to
engage in thought, perception or imagination, and plays on a well-known phrase,
Software as a Service [or] SaaS.”19 Applicant explains that “[t]ypically, a company
provides a service, but is not itself a service.”20 Applicant also takes issue with the

15 8 TTABVUE 14.
16 Submitted by Applicant, as specimens of use, with its applications filed on January 24,
2017, at TSDR p. 3.
17 Office Action issued September 13, 2017; TSDR p. 12.
18 Id. at p. 16.
19 4 TTABVUE 9.
20 Id. at 10.
Serial Nos. 87312334 and 87312341
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Examining Attorney’s evidence, arguing “those third party companies do not provide
similar services to those provided by the Applicant.”21
The record demonstrates that consumers will recognize and understand the
meaning of “Company as a Service” and its initialism, CaaS. At a high level, the
record shows that these terms refer to companies providing services that might
encompass or relate to traditionally tangible goods or brick-and-mortar
establishments, in the same way that “software as a service,” also known as “SaaS,”
replaces traditional software as a tangible good. Applicant’s services, such as
providing online directories and databases, online training and workshops, and
hosting a web platform to manage financial statements and accounting, fall within
these types of “Company as a Service” or “CaaS” services. We agree with the
Examining Attorney that the evidence shows that the applied-for marks are “used by
a wide variety of businesses in various fields to describe a general feature or ethos of
those companies and their services” and these terms can be “simply another way to
refer to the ‘service economy’ or a ‘service provider’—which applicant and its services
certainly fits into.”22
We are not persuaded by Applicant’s argument that the third-party evidence
should be disregarded because it does not involve “similar services to those provided
by Applicant.”23 While the evidence may not refer specifically to Applicant’s recited

21 Id. at 11.
22 8 TTABVUE 16.
23 4 TTABVUE 11.
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services, the terms “Company as a Service” or “CaaS” carry a meaning that is broad
enough to encompass Applicant’s services. As described above in the Virtual
Employee website, recipients of “Company as a Service” or CaaS services can “set up
their own ‘office’ … [and receive] pay-as-you-consume service[s], just like any other
cloud service.” The Start US Magazine article describes “Company as a Service where
many users share an existing company in order to reduce or completely eliminate
fixed costs of running their own company.”24 Likewise, Applicant advertises the cost
and time-saving features of its “Company as a Service” or CaaS services because its
customers avoid the overhead of undertaking and maintaining the actual services
themselves. Indeed, the act of rendering business infrastructure services to other
companies can be classified generally as “Company as a Service” or “CaaS” services,
as those terms are used in the aforementioned evidence, including Applicant’s own
materials. See Real Foods Pty Ltd. V. Frito-Lay N. Am., Inc., Nos. 2017-1959, 2017-
2009, 2018 U.S. App. LEXIS 28099 (Fed. Cir. Sept. 21, 2018) (“Indeed, Real Foods’
advertising materials use the word ‘thin’ to describe their products.”); In re N.C.
Lottery, 123 USPQ2d at 1710 (“the TTAB did not err by considering the explanatory
text of the specimens in the descriptiveness inquiry”).
Given the evidence of use of the terms “Company as a Service” and its initialism
“CaaS,” we find no incongruity in the concept of a company being a service to others.
Rather, the component terms used in the phrase retain their plain meanings that will
be understood by consumers and do not evoke a non-descriptive commercial

24 Office Action issued September 13, 2017; TSDR p. 28.
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impression; the combination of the terms results in a composite that is itself merely
descriptive in relation to the services. In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370 (Fed. Cir. 2004). See also Real Foods Pty, 2018 U.S. App. LEXIS
28099 at *8 (“the TTAB may not dissect the mark into isolated elements, with-out
ever consider[ing] . . . the entire mark but it may weigh the individual components of
the mark to determine the overall impression or the descriptiveness of the mark and
its various components.”) (internal quotations and citations omitted); In re Carlson,
91 USPQ2d 1198 (TTAB 2009); In re Putman Publ’g Co., 39 USPQ2d 2021 (TTAB
1996). The evidence rebuts Applicant’s argument that the phrase “company as a
service” is incongruous because a company generally provides a service and is not
regarded as a service. While companies, themselves, may traditionally have not been
referred to as “services,” this is clearly no longer true and as the evidence shows that
a company may now be regarded as a service and, more importantly, the phrase
“Company as a Service” (and its initialism) can be used to describe this activity.
Finally, with regard to the initialism mark, CaaS, it is a recognized abbreviation
for the merely descriptive phrase, “Company as a Service,” and thus it is merely
descriptive as well. In re Thomas Nelson Inc., 97 USPQ2d 1712, 1715 (TTAB
2011) (citing Foremost Dairies, Inc. v. The Borden Company, 156 USPQ 153,154
(TTAB 1967)). “[A]s a general rule, initials [or abbreviations] cannot be considered
descriptive unless they have become so generally understood as representing
descriptive words as to be accepted as substantially synonymous therewith.” Modern
Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956). Here,
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the record clearly shows that CaaS is an abbreviation for, and can be used
interchangeably with, the phrase. Applicant and several third parties use the
initialism and the relevant public would understand its descriptive significance when
it is used in the context of the involved listed services.
In sum, Applicant’s proposed marks immediately convey, without need for
conjecture or speculation, a feature or attribute of Applicant’s services. Accordingly,
we find the marks are merely descriptive of the identified services.
Decision: The refusal to register is affirmed.