i1 Sensortech, Inc.

Trademark Trial and Appeal Board

Nov 9, 2018

No. 87249539 (T.T.A.B. Nov. 9, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re i1 Sensortech, Inc.
_____

Serial No. 87249539
_____

Matthew Moersfelder of Davis Wright Tremaine LLP,
for i1 Sensortech, Inc.
Andrew Leaser, Trademark Examining Attorney, Law Office 117,
Travis Wheatley, Managing Attorney.
_____

Before Wellington, Ritchie and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
i1 Sensortech, Inc. (“Applicant”) has filed an application to register the mark
ATHLETE INTELLIGENCE in standard characters on the Principal Register for
goods ultimately identified as:
Monitoring device and system, worn by a person for non-
medical purposes, namely, a wearable device comprised of
electronic sensors for measuring the magnitude and effects
of physical impacts, biometric data, positioning and speed
data, and general physiological data; software for
measuring the magnitude and effects of physical impacts
and general physiological data; data analytic software; in
International Class 9, and
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Monitoring device and system, worn by a person for
medical purposes, namely, a wearable device comprised of
electronic sensors for measuring the magnitude and effects
of physical impacts, biometric data, positioning and speed
data, and general physiological data, in International
Class 10.1
The Trademark Examining Attorney has refused registration 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 Applicant’s identified goods in both classes. When the refusal
was made final, Applicant appealed and filed a request for reconsideration, which
was denied. The appeal is now fully briefed.
For the reasons set forth below, we affirm the refusal to register as to both classes.
I. Evidentiary Issues
Before discussing the merits of the refusal, we address the following evidentiary
matters.
A. Applicant’s Request for Judicial Notice
In its reply brief, Applicant requests that the Board take judicial notice of
Certificate of Registration No. 016520471 issued by the European Union Intellectual
Property Office (“EUIPO”) for the same mark and identical goods in International
Class 9 to Applicant. It is the Board’s practice not to take judicial notice of third-party
registrations, whether issued in the United States or by foreign countries or their
agencies, such as EUIPO. See In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998)
(request in reply brief that Board take judicial notice of “thousands of registered

1 Application Serial No. 87249539, filed November 28, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
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marks incorporating the term NEW YORK for products and services that do not
originate in New York state or city” denied), aff’d, 194 F.3d 1297, 52 USPQ2d 1539
(Fed. Cir. 1999). Cf. In re House Beer, LLC, 114 USPQ2d 1073, 1075 (TTAB 2015)
(Board does not take judicial notice of files of applications or registrations residing in
the Office, including entries in file of cited registration). While the registration in
question is not owned by a third-party but by Applicant, the same underlying
rationale applies – “to encourage applicants (and examining attorneys) to fully raise
their arguments during prosecution, where they can be more efficiently resolved, and
to avoid unnecessary or inefficient appeals.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) § 1208.04 (2018) (“Judicial Notice”). In view of the
foregoing, Applicant’s request is denied.2
B. Examining Attorney’s Objection to Hyperlinks to News Articles
Next we address the Examining Attorney’s objection to Applicant’s inclusion of
hyperlinks to news articles in its appeal brief3 on the ground of untimeliness.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides in relevant part “[t]he record
in the application should be complete prior to the filing of an appeal. Evidence should
not be filed with the Board after the filing of a notice of appeal.” While technically not
“filed” with the Board, the hyperlinks constitute an improper attempt to augment the
record. As such, the objection is sustained; the hyperlinks to the articles have been
given no consideration. See, e.g., In re Fiat Grp. Mktg. & Corporate Commc’ns S.p.A.,

2 Even if we had granted Applicant’s request, the outcome of this case would have remained
the same.
3 Applicant’s Brief, p. 17, 7 TTABVUE 18.
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109 USPQ2d 1593, 1596 (TTAB 2014); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB
2013).4
II. Descriptiveness Refusal
We now turn to the substantive refusal before us. In the absence of acquired
distinctiveness, Section 2(e)(1) of the Trademark Act prohibits registration of a mark
on the Principal Register that, when used in connection with an applicant’s goods, 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 goods.” In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1009 (Fed. Cir. 1987). Suggestive marks, unlike merely descriptive terms, are
registrable on the Principal Register without proof of secondary meaning. See
Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173,
1180 (Fed. Cir. 2004).

4 In addition, as the Examining Attorney correctly points out, the provision of a hyperlink is
not a proper way to make the “linked” materials of record. See, e.g., In re Olin, 124 USPQ2d
1327, 1331 n.15 (TTAB 2017); In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274
(TTAB 2012)). For instructions on how to properly introduce Internet articles and other types
of Internet evidence into the record, see TBMP § 1208.03 and TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 710.01(b) (Oct. 2018).
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The determination of whether a mark is merely descriptive must be made in
relation to the goods 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 goods, and the possible significance that the mark would
have to the average purchaser of the goods 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
is not whether someone presented only with the mark could guess the goods listed in
the identification. Rather, the question is whether someone who knows what the
goods 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)).
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 goods.” In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978). It may also be obtained from websites and publications,
and, in the case of a use-based application, an applicant’s own 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,
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1565 (Fed. Cir. 2001). In this particular case, the involved application has been filed
under the intent-to-use provisions pursuant to Trademark Act Section 1(b).
Nonetheless, the Examining Attorney is not precluded from introducing excerpts
from Applicant’s own website as evidence of public perception of the mark. See In re
Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (examining attorney may introduce
evidence that applicant’s own literature supports descriptiveness of term despite the
fact that application based on intent-to-use; fact that applicant has filed an intent-to-
use application does not limit the examining attorney’s evidentiary options or shield
an applicant from producing evidence that it may have in its possession).
In support of the refusal, the Examining Attorney made of record the following
dictionary definitions:
athlete
a person trained in exercises, games, or contests
requiring physical strength, skill stamina, speed,
etc.5
intelligence
2. news or information6
As noted above, one of the dictionary definitions of “intelligence” is “information.” The
record also contains evidence that competitors in the field use the term “intelligence”
to describe biometric data or information collection products for athletes:

5 WEBSTER’S NEW WORLD COLLEGE DICTIONARY (2010) accessed via YourDictionary.com
at http://www.yourdictionary.com/ and attached to March 7, 2017 Office Action, p. 6.
Citations to the prosecution history in the USPTO’s TSDR database are to the downloadable
.pdf version. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB
2018).
6 Id. at 7.
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The results of NeuroTracker tests represent a vanguard for
cognitive assessment of athletes, as the data provides a
direct indicator of perceptual-cognitive performance
capabilities. This new form of intelligence on athletes can
complement other assessments for a fuller understanding
of each player’s overall skill-set.7
“We are extremely excited to be NC State’s chosen
technology partner for their athletic department,” said
Kinduct’s CEO, Travis McDonough. “Our software
platform is the perfect option for NCAA schools looking to
gain intelligence on athletes across multiple varsity teams.
Our Athlete Management System is highly versatile,
ensures consistency of data management, and can enhance
the institution’s workflows.”8
Within the context of Applicant’s Class 9 and Class 10 goods, purchasers will
immediately recognize that the word ATHLETE in Applicant’s mark designates the
person wearing Applicant’s “monitoring device and system … comprised of electronic
sensors”, and that INTELLIGENCE refers to the gathering of information measuring
an individual athlete’s biometrics, positioning and speed, physiology as well as the
magnitude and effects of any physical impacts. Taken together, this evidence shows
that Applicant’s mark ATHELTE INTELLIGENCE, when considered as a whole,
immediately conveys a feature and purpose of the identified goods, namely that
Applicant’s wearable devices and software are designed to collect intelligence from
athletes, such as information and data, regarding the performance, health and

7 Invaluable Intelligence, COGNISENS ATHLETICS,
https://www.slideshare.net/zoneperformance/cogni-sens-athletics-neurotracker-introduction
attached to March 29, 2018 Denial of Request for Reconsideration, pp. 5-6.
8 The Wolfpack Runs with Kinduct to Improve Team’s Performance, NC STATE UNIV.,
http://gopack.com/news/2017/9/13/general-the-wolfpack-runs-with-kinduct-to-improve-
teams-performance.aspx attached to March 29, 2018 Denial of Request for Reconsideration,
pp. 10-11.
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medical safety of athletes. Applicant’s website touting the features and advantages
of its products supports this finding:9
The new Athlete Intelligence platform exposes the
invisible data that surrounds every athlete, giving coaches
and athletic trainers the ability to translate what happens
on the field into a competitive advantage where and when
it matters….
The Athlete Intelligence platform goes beyond cryptic data
points and isolated measurements. It empowers coaches
and athletic trainers to access useful insights that create
coachable opportunities, and in turn maximize long term
player potential. …
The core functionality of the Athlete Intelligence platform
pairs with our state of the art Vector™ MouthGuard Cue™
Sport Sensor and ShockBox® Helmet Sensor to deliver a
comprehensive solution for more than just hit detection
and athlete safety. It helps coaches and athletic trainers
build strategies around the tactics that win games. …
… Athlete Intelligence is revolutionary in its ability to
gather and disseminate highly-accurate intracranial
impact data, providing real-time information and
actionable insights that coaches and athletes can use.
… Athlete Intelligence doesn’t just dump data on coaches.
We make it usable. We give you the ability to detect when
a player’s taken a hit just a little too hard. With our
powerful flexible impact system, we can help identify
potential safety issues whenever they’re on the field.
These excerpts make clear that the purpose of Applicant’s wearable monitoring device
and systems is to collect information for individual athletes in order to maximize
athletic performance (Class 9) and to monitor potential medical issues incurred upon
physical impacts (Class 10).

9 Excerpts from https://athleteintelligence.com attached to September 15, 2017 Office
Action, pp. 6-10.
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Applicant counters that its proposed mark ATHLETE INTELLIGENCE is
suggestive in relation to the identified goods because the juxtaposition of the two
words requires the consumer to engage in multistep reasoning.10 Applicant proffers
various other meanings of its mark such as,
the mental capacity or ability of a person engaged in
athletic activity; measuring, analyzing, or improving the
mental capacity or ability of an athlete or their aptitude for
a given sport; a product or service related to psychological
evaluation and analysis of athletes; a product or service to
help improve a person’s understanding of how to play a
given sport; a product or service for scouting an opposing
team, other athletes, or prospects for professional or
collegiate sports.11
Given that the goods are comprised of wearable electronic sensors designed to collect
biometric data, we are skeptical that prospective consumers would attribute any of
these meanings to Applicant’s mark. “That a term may have other meanings in
different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104
USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979)). Again, the question of whether a proposed mark is merely descriptive
is not determined by asking whether one can guess, from the mark itself, what the
goods are, but rather by asking, when the mark is seen on or in connection with the

10 In this regard, Applicant relies on three non-precedential decisions: In re Driven
Innovations, 674 Fed. Appx. 996 (Fed. Cir. Jan. 4, 2017); In re Armadahealth, LLC, Ser. Nos.
86713902 and 86802355 (TTAB June 28, 2017); and In re Caleb Suresh Motuapalli, Ser. No.
86573858 (TTAB Oct. 2, 2017). Although parties may cite to non-precedential decisions, they
are not binding on the Board. In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011).
See also Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011)
(although parties may cite to non-precedential cases, the Board does not encourage the
practice).
11 Applicant’s Brief, p. 11, 7 TTABVUE 12.
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goods, whether it immediately conveys information about their nature. In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re
Tower Tech, 64 USPQ2d at 1316-17; In re Patent & Trademark Serv. Inc., 49 USPQ2d
1537, 1539 (TTAB 1998). No imagination or thought is required by prospective
consumers to discern the nature of Applicant’s goods. To the contrary, to purchasers
encountering Applicant’s Class 9 and 10 goods, Applicant’s proposed mark
immediately conveys, without conjecture or speculation, an attribute of Applicant’s
goods.
Applicant, relying on articles discussing degenerative brain disease suffered by
athletes who have sustained multiple concussions,12 also argues that consumers are
likely to perceive its mark as a double entendre. As Applicant asserts:
Given today’s sports culture where athlete concussions are
at the forefront of news and conversations (especially in
contact sports), the phrase ATHLETE INTELLIGENCE
could readily be perceived as a reference to or “play” on the
idea of preserving the intelligence of an athlete engaged in
contact sports. … For example, when a football player
suffers a hard hit, Applicant’s goods measure and transmit
data about the time, place, and significance of that hit and
enable “real-time assessments of a player’s ability to
remain on the field after a collision or hit.”13
In evaluating whether a mark is a double entendre and therefore not merely
descriptive, we note the Board’s guidance in In re The Place Inc., 76 USPQ2d 1467,
1470 (TTAB 2005):
“Double entendre” is defined as “ambiguity of meaning
arising from language that lends itself to more than one

12 See March 15, 2018 Request for Reconsideration, Ex. B.
13 Applicant’s Brief, p. 14, 7 TTABVUE 15.
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interpretation.” Webster’s Third New International
Dictionary (1993) at p. 678. As stated in TMEP
§ 1213.05(c), “A ‘double entendre’ is a word or expression
capable of more than one interpretation. For trademark
purposes, a ‘double entendre’ is an expression that has a
double connotation or significance as applied to the goods
or services. … The multiple interpretations that make an
expression a ‘double entendre’ must be associations that
the public would make fairly readily.”
A mark thus is deemed to be a double entendre only if both
meanings are readily apparent from the mark itself. If the
alleged second meaning of the mark is apparent to
purchasers only after they view the mark in the context of
the applicant’s trade dress, advertising materials or other
matter separate from the mark itself, then the mark is not
a double entendre. See In re Wells Fargo & Company, 231
USPQ 95 (TTAB 1986).
…
A mark is not a double entendre if the second meaning is
grasped by purchasers only when the mark is used with
“other indicia,” even if that other indicia is itself not merely
descriptive.
(Emphasis in original). The record does not support a finding that this alternative
meaning of a “play” on an athlete’s intelligence is well-known or readily apparent
such that this alternative meaning might be called to mind. Compare In re Colonial
Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (SUGAR & SPICE not
merely descriptive for bakery products; “[t]he immediate impression evoked by the
mark may well be to stimulate an association of “sugar and spice” with [the nursery
rhyme] “everything nice”) with In re The Place, Inc., 76 USPQ2d at 1470 (holding
THE GREATEST BAR laudatory and merely descriptive of restaurant and bar
services; “[i]f the alleged second meaning of the mark is apparent to purchasers only
after they view the mark in the context of the applicant’s trade dress, advertising
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materials or other matter separate from the mark itself, then the mark is not a double
entendre”). Thus, when considered as a whole, the mark does not have a separate
non-descriptive meaning.14
In sum, upon consideration of the entirety of the record and arguments, including
those not specifically discussed in our opinion, we find Applicant’s proposed standard
character mark ATHLETE INTELLIGENCE to be merely descriptive of the
identified goods in both International Classes 9 and 10 and therefore ineligible for
registration on the Principal Register in the absence of a showing of acquired
distinctiveness.
Decision: The refusal to register is affirmed.

14 We note that Applicant and the Examining Attorney submitted dueling sets of third-party
registrations for marks comprised of the word “intelligence” to support their respective
position. See September 6, 2017 Response to Office Action and September 15, 2017 Final
Office Action. While some of Applicant’s third-party registrations showing a disclaimer of
INTELLIGENCE are for computer software and computer services, none of the registrations
are for goods identical or even similar to the goods at issue here. Also, to be clear, for the
same reason, we have not relied on any of the third-party registrations submitted by the
Examining Attorney in finding Applicant’s mark merely descriptive.