No. 85824571 (T.T.A.B. Feb. 26, 2016)

IABCN, Inc.

Trademark Trial and Appeal BoardFeb 26, 2016

No. 85824571 (T.T.A.B. Feb. 26, 2016)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: February 26, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re IABCN, Inc. _____ Serial No. 85824571 _____ John J. O’Malley of Volpe and Koenig, P.C. for IABCN, Inc. John Dwyer, Trademark Examining Attorney, Law Office 116 (Christine Cooper, Managing Attorney). _____ Before Kuhlke, Lykos, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: IABCN, Inc. (“Applicant”) filed an application for registration on the Principal Register of the mark shown below:1 1 Application Serial No. 85824571 was filed on January 16, 2013 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), stating January 1, 2000 as the date of first use and first use in commerce. Serial No. 85824571 2 Applicant has disclaimed the exclusive right to use IRISH AMERICAN apart from the mark as shown. The colors green, blue, and white are claimed as a feature of the mark. The services identified in the application (as amended) are: Chamber of commerce services, namely, promoting the business interests of Irish and American individuals and commercial entities in the Greater Philadelphia Area; business networking services; business advice and information, in International Class 35. The Examining Attorney required, as a condition of registration, that Applicant disclaim the exclusive right to use IRISH AMERICAN BUSINESS CHAMBER & NETWORK apart from the mark as shown, on the ground that this wording is merely descriptive of Applicant’s services and, therefore, an unregistrable component of the mark under Trademark Act Section 6, 15 U.S.C. § 1056. Applicant argued that the wording of its mark was not merely descriptive and claimed, in the alternative, that BUSINESS CHAMBER & NETWORK had acquired distinctiveness and was entitled to registration under Section 2(f), 15 U.S.C. § 1052(f). The Examining Attorney maintained his requirement of a disclaimer on the ground that all of the wording of the mark is merely descriptive of Applicant’s services and that Applicant’s evidence was inadequate to demonstrate that BUSINESS CHAMBER & NETWORK had acquired distinctiveness. When the Examining Attorney made his refusal final, Applicant appealed to this Board and simultaneously requested reconsideration. The Examining Attorney denied the request for reconsideration and this appeal proceeded. Serial No. 85824571 3 The Director of the USPTO “may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Trademark Act Section 6(a). The USPTO may require a disclaimer as a condition of registration if the term at issue is merely descriptive of any of the identified goods or services. In re Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is merely descriptive of 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 services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a term is merely descriptive is determined in relation to the 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, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the services are will understand the term to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A term need not immediately convey an idea of each and every specific feature of the services in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the services. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The determination that a term is merely descriptive is a finding of Serial No. 85824571 4 fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). It is the Examining Attorney’s burden to show, prima facie, that a term is merely descriptive of an applicant’s goods or services. In re Gyulay, 3 USPQ2d at 1010; In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). If such a showing is made, the burden of rebuttal shifts to Applicant. In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003). The Board resolves doubts as to the mere descriptiveness of a mark in favor of Applicant. In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994). 1. Is the wording of Applicant’s mark merely descriptive? First we consider whether all of the wording of Applicant’s mark, in its entirety, is merely descriptive and, therefore, an “unregistrable component” of Applicant’s mark, as the Examining Attorney contends. Applicant has acknowledged in its brief “that the term ‘Irish American’ is descriptive and unregisterable.”2 Applicant has disclaimed the exclusive right to use IRISH AMERICAN.3 The Examining Attorney has made of record the following relevant dictionary definitions: business noun 1. one’s work, occupation, or profession … 5. the buying and selling of commodities and services; commerce; trade 2 Applicant’s brief at 4, 13 TTABVUE 9. 3 Applicant’s response of November 4, 2013 at 2. Serial No. 85824571 5 … 8. commercial practice or policy … Adjective 1. of or for business.4 ***** noun … 2. Commercial, industrial, or professional dealings: new systems now being used in business. 3. A commercial enterprise or establishment: bought his uncle’s business.5 ***** chamber noun … 6. A council or board: a chamber of commerce.6 ***** ampersand noun The character or sign (&) representing the word and.7 ***** 4 WEBSTER’S NEW WORLD COLLEGE DICTIONARY (2010), at , Office Action of November 27, 2013 at 6-7. 5 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2010), at , Office Action of November 27, 2013 at 7. 6 WEBSTER’S NEW WORLD COLLEGE DICTIONARY (2010), at , Office Action of November 27, 2013 at 14. 7 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2010), at , Office Action of November 27, 2013 at 19. Serial No. 85824571 6 network noun 2. Something resembling an openwork fabric or structure in form or concept, especially: … c. An extended group of people with similar interests or concerns who interact and remain in informal contact for mutual assistance or support. verb, intransitive To interact or engage in informal communication with others for mutual assistance or support.8 That the individual words BUSINESS, CHAMBER, and NETWORK have meanings that describe aspects of Applicant’s services is manifest in the foregoing definitions. Indeed, Applicant admits in its brief, “Applicant also acknowledges that the terms ‘BUSINESS’, ‘CHAMBER’, and ‘NETWORK’ are descriptive.”9 The Examining Attorney has also made of record Internet evidence showing that third-party associations of businesses and business persons use the expression BUSINESS CHAMBER in their trade names. These organizations are similar, at least in part, to Applicant. Among these organizations are: Christian Business Chamber of Hampton Roads Delaware Small Business Chamber Green Business Chamber Small Business Chamber of Savannah Wilton & District Business Chamber Global Business Chamber German American Business Chamber of South Florida Hispanic Business Chamber 8 Id. at 25. 9 Applicant’s brief at 4, 13 TTABVUE 9. Serial No. 85824571 7 European-American Business Chamber.10 The use of such trade names by others in connection with chamber of commerce services suggests a perceived need on the part of Applicant’s competitors to use the term BUSINESS CHAMBER and at least suggests that this wording is descriptive of their services. The same evidence shows that many of these organizations refer specifically to the networking opportunities that they create for participating businesses: The Christian Business Chamber OF Hampton Roads (CBC) is the largest and most diverse network of influential Christian business leaders in the metro area.11 ***** December 10, 2013 After Hours Networking at Dom’s Pizza … December 16, 2013 After Hours Networking at Wild Quail Golf & Country Club … “From the well-attended special events to the innovative, monthly ‘6 Top Mingle’ networking, we have been able to build real relationships with other small business owners.”12 ***** MONTHLY BREAKFAST MEETING: Attendance averages 50+ business owners – so come out and meet 10 Office Action of November 27, 2013 at 31-51 and 56-64. We have given no consideration to evidence relating to “NSW Business Chamber” and “Armidale Business Chamber,” id. at 52-55, because they appear to be organizations located in Australia and not doing business in the United States. 11 Id. at 31. 12 Id. at 34. Serial No. 85824571 8 potential new clients, see old friends and keep your networking skills up to date …13 ***** Come along and join our first breakfast networking event for 2013 on Tuesday 8th January … Wilton Chamber Networking Breakfast Meeting on Friday 7th September at 8am-9:30am …14 ***** It is an official affiliate of the German American Chambers of Commerce South and is in the network of the German American Chambers of Commerce, which has more than 5,000 members in the United States.15 We note that Applicant’s own specimen of use refers to networking opportunities that it offers: Non-Partisan Business Networking The Irish American Business Chamber & Network, Inc. (IABCN) is a nonpartisan business organization promoting the interests of its members … … We provide growth opportunities through a series of networking forums for business executives, helping them to exchange information and ideas on doing business with one another. … Visit our events gallery … to gain a greater appreciation of the opportunity for networking created by the Irish American Business Chamber.16 13 Id. at 41. 14 Id. at 46. 15 Id. at 57. 16 Application at 7. Serial No. 85824571 9 The evidence submitted by the Examining Attorney demonstrates that the terms CHAMBER and BUSINESS CHAMBER are used to describe “chamber of commerce services,” as identified in Applicant’s recitation of services. The evidence also demonstrates that NETWORK describes a feature or purpose of Applicant’s services, in the sense that one purpose of Applicant’s services is to create “an extended group of [businesspersons and businesses] with similar interests or concerns who interact for mutual assistance or support.”17 Applicant argues that “[t]he Examining Attorney … has not shown any uses in any dictionary or online reference of the full phrase ‘business chamber & network.’”18 Applicant argues further that BUSINESS CHAMBER & NETWORK is “an incongruous word combination”; and that “[c]learly, Applicant is using ‘Business Chamber & Network’ with some degree of ingenuity in its phraseology”; says “something a little different from what might be expected to be said” about the services; and says “an expected thing in an unexpected way.”19 A determination that a phrase is merely descriptive under Section 2(e)(1) does not require a showing that the entire phrase appears in a dictionary or that it is used in its entirety by others. The correct test is whether the phrase forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the services. As the Federal Circuit has said: 17 See THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2010), at , Office Action of November 27, 2013 at 8. 18 Applicant’s brief at 5, 13 TTABVUE 10. 19 Id. at 6, 13 TTABVUE 11. Serial No. 85824571 10 A mark is merely descriptive if it “‘consists merely of words descriptive of the qualities, ingredients or characteristics of’ the goods or services related to the mark.” [Citing In re Oppedahl & Larson LLP, supra.] One articulation of that rule … is that a mark is merely descriptive if it “conveys information regarding a function, or purpose, or use of the goods.” [Citing In re Abcor Dev. Corp., supra.] DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 103 USPQ2d at 1755. In this case, we do not perceive any incongruity in the wording that the Examining Attorney requires to be disclaimed, namely, IRISH AMERICAN BUSINESS CHAMBER & NETWORK. Nor is it so ingenious or unexpected as to be “suggestive,” rather than merely descriptive. “[A] suggestive mark ‘requires imagination, thought and perception to reach a conclusion as to the nature of the goods,’ while a merely descriptive mark ‘forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.’” Id., quoting In re Abcor Dev. Corp., supra. Applicant has admitted that each component word of the mark is descriptive. The words are arranged in an order that is grammatically conventional, such that speakers of English would readily understand their meaning, without noting anything irregular about the way in which they are combined. The words IRISH AMERICAN and BUSINESS would readily be understood as modifiers for the nouns CHAMBER & NETWORK, and the words, when given their normal dictionary definitions, would immediately convey the idea that Applicant provides chamber of commerce services, including business networking opportunities, to businesses related in some way to the nations of Ireland and the United States. We find that IRISH AMERICAN BUSINESS CHAMBER & NETWORK is merely Serial No. 85824571 11 descriptive of Applicant’s services within the meaning of Section 2(e)(1) and must be disclaimed under Section 6, unless it is shown to have acquired distinctiveness within the meaning of Section 2(f). 2. Applicant’s claim of acquired distinctiveness. Applicant argues, in the alternative, that even if the wording of its mark is merely descriptive, part of the wording, namely, BUSINESS CHAMBER & NETWORK, has acquired distinctiveness under Section 2(f); and that, accordingly, the mark should be allowed to register without a disclaimer of this wording. Applicant’s burden is to show that, to the relevant consuming public, these words have come to mean that the services at issue are provided by Applicant. Applicant has made of record a verified statement of its Vice President that “BUSINESS CHAMBER & NETWORK has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”20 Applicant argues in its brief that it has used its mark exclusively “for over a decade.”21 However, while Applicant’s “five-year statement” is evidence of a five-year period of use, it does not serve to prove a longer period of use.22 The application does contain a verified statement that Applicant 20 Applicant’s response of November 4, 2013 at 2. 21 Applicant’s brief at 7, 13 TTABVUE 12. 22 The fact that the USPTO’s automated application forms provide a “check the box” function for adding a verified, boilerplate statement of five years of substantially exclusive and continuous use of a mark in commerce should not be taken as an indication that such a statement will prove that a mark has acquired distinctiveness. Applicants that are able to make more highly probative statements and to file more highly probative evidence should Serial No. 85824571 12 first used its mark in commerce on January 1, 2000; however, this statement is not evidence that the mark has been used continuously, nor exclusively, since that time. Applicant has filed the results of a search of the USPTO’s TESS database, showing that only a single other entity has applied to register a mark that includes all three of the words BUSINESS, CHAMBER, and NETWORK.23 The records of the USPTO tell us little about whether relevant customers in the marketplace perceive BUSINESS CHAMBER & NETWORK as a source indicator of Applicant. They are also not particularly probative of exclusivity of use in the real-world market. Applicant has also made of record a partial list of the results from a search for the term “business chamber and network” on the Google® search engine.24 Search engine “hit lists” generally have little probative value, because such lists usually show little of the context in which the term is used on the listed web pages. See In re Bayer AG, 82 USPQ2d at 1833 (deeming Google search results that provided very little context of the use of ASPIRINA to be “of little value in assessing the consumer public perception of the ASPIRINA mark”); In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (truncated search results were entitled to little probative weight without additional evidence of how the searched term is generally do so. The provision of Section 2(f) stating that “The Director may accept [a five- year statement] as prima facie evidence that the mark has become distinctive” is permissive, not mandatory. 23 Applicant’s response of December 24, 2014 at 6. The third-party mark is NEW JERSEY BUSINESS LEADERSHIP NETWORK AT THE NEW JERSEY CHAMBER OF COMMERCE. 24 Id. at 7-26. Serial No. 85824571 13 used). In this case, the “hit list” evidence at least demonstrates that Applicant has been mentioned in online materials. There are 101 items on the list. Of these, 24 are from a single online publication, the website at . This suggests that the exposure of Applicant’s mark may be rather limited. Another 31 of the items show that Applicant’s name has been mentioned in the biography or resume of persons associated with Applicant as members, officers, or contractors; the fact that persons with a direct official relationship to Applicant are aware of Applicant’s mark reveals little about the exposure of Applicant’s mark among the general public of relevant customers. Fifteen of the hit list items show so little context that we find them to have no probative value. The search results do support, to a limited extent, the claim that only Applicant uses the exact phrase “Business Chamber & Network,” as no other organizations using this term are shown. Finally, we note that in each example Applicant is referred to by the entire phrase IRISH AMERICAN BUSINESS CHAMBER & NETWORK, leaving the question as to whether this evidence supports a finding of acquired distinctiveness only for the specific words BUSINESS CHAMBER & NETWORK. Considering all of the evidence of record, we are not persuaded that BUSINESS CHAMBER & NETWORK has become distinctive of Applicant’s services. None of Applicant’s evidence is directed to demonstrating relevant customers’ perceptions of these words. The fact that Applicant has been mentioned in online publications does not indicate that Applicant’s mark has acquired particular notoriety; and the fragmentary nature of the Internet evidence renders it impossible to derive from it Serial No. 85824571 14 any sense of how customers perceive the words BUSINESS CHAMBER & NETWORK. Moreover, the Examining Attorney’s evidence showing that third parties make use of the term “business chamber” in their trade names undercuts the likelihood that relevant customers would view BUSINESS CHAMBER & NETWORK as unique to Applicant. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-1 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”); and In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 11058 (Fed. Cir. 1999) (“The examples of use of the phrase by others in its descriptive form support the board's conclusion that the mark had not acquired distinctiveness.”). In sum, we find that Applicant has not demonstrated that the portion of its mark consisting of the words BUSINESS CHAMBER & NETWORK has acquired distinctiveness as Applicant’s source indicator. 3. The form of the required disclaimer. The Examining Attorney has required that Applicant’s disclaimer read, “No claim is made to the exclusive right to use IRISH AMERICAN BUSINESS CHAMBER & NETWORK apart from the mark as shown.” Applicant contends that, if it must enter a disclaimer, it should suffice that Applicant disclaim – separately – the terms IRISH AMERICAN, BUSINESS, CHAMBER, and NETWORK.25 Applicant argues 25 During prosecution of the application, Applicant stated that it “is prepared to disclaim the individual terms ‘business’, ‘chamber’ and ‘network’ if the Examining Attorney would Serial No. 85824571 15 that “[s]eparate disclaimers of adjacent components of a mark may be accepted where they do not form a grammatically or otherwise unitary expression.”26 Where a combination of descriptive words forms a unitary expression that, as a whole, is merely descriptive of the goods or services, and where the applicant has failed to demonstrate that the phrase has acquired distinctiveness as the applicant’s source indicator, registration is inappropriate without some acknowledgement that others might have the right to use the entire phrase in order to describe their goods or services. For purposes of registration, the disclaimer indicates that the question of ownership of the exclusive right to use the phrase has not yet been settled. However, the entry of the disclaimer does not divest the applicant of any proprietary rights it may actually have in the phrase, because the statute expressly provides, “No disclaimer … shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter …” 15 U.S.C. § 1056(b). In the present case, Applicant’s suggestion that it is willing to disclaim the exclusive right to use the individual words separately implies that Applicant wishes to assert that it nonetheless does have the exclusive right to use the words together in their particular order. Applicant is free to make that assertion in other ways, but that is not an assertion that should appear on – or be suggested by – a registration certificate unless the owner of the mark has demonstrated acquired distinctiveness. Here, Applicant has not done so. fin[d] such entries would resolve the issue.” Applicant’s request for reconsideration of December 24, 2014 at 1. 26 Applicant’s brief at 1, 13 TTABVUE 6. Serial No. 85824571 16 Applicant compares the present case to In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006), arguing: While ‘business’, ‘chamber’ and ‘network’ may be understood terms, the phrase itself [BUSINESS CHAMBER & NETWORK] is not. As in In re Grass, the term at issue comprises multiple elements, each of which is descriptive in a different way and provides no inherent connection with the other.27 We do not agree that the wording of Applicant’s mark is not “understood.” As we have noted above, the phrase IRISH AMERICAN BUSINESS CHAMBER & NETWORK is a grammatically conventional phrase that expresses a single, unitary idea: the concept of an organization offering chamber of commerce services and networking opportunities for businesses associated with Ireland and the United States. Until Applicant demonstrates that this phrase (or a part of it) has acquired distinctiveness as Applicant’s source-indicator, one must acknowledge that the phrase as a whole would accurately describe other organizations having the same purpose and function as Applicant. In re Grass is inapposite. In that case, the wording to be disclaimed was SNAP ON 3000. The term SNAP ON was acknowledged to be merely descriptive; the term 3000 was acknowledged to be a model number. The Board allowed the entry of a disclaimer of “SNAP ON and 3000” because “there is no grammatical connection or other nexus between SNAP ON and 3000 except their contiguity in the mark.” 79 USPQ2d at 1602. In the case before us, there is a great deal more than mere “contiguity” among the words of Applicant’s mark. 27 Applicant’s brief at 5, 13 TTABVUE 10. Serial No. 85824571 17 We agree with the Examining Attorney that the proper form of the required disclaimer is as follows: “No claim is made to the exclusive right to use IRISH AMERICAN BUSINESS CHAMBER & NETWORK apart from the mark as shown.” Decision: The refusal to register Applicant’s mark in the absence of a disclaimer of IRISH AMERICAN BUSINESS CHAMBER & NETWORK is AFFIRMED on the ground that such wording is merely descriptive of Applicant’s services and no part of such wording has been shown to have acquired distinctiveness. Applicant is allowed until thirty (30) days from the date of this decision to submit to the Board a disclaimer (in proper form) of the designation IRISH AMERICAN BUSINESS CHAMBER & NETWORK, in which case this decision will be set aside. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).