Inovalon, Inc.

Trademark Trial and Appeal Board

Aug 17, 2015

No. 85351975 (T.T.A.B. Aug. 17, 2015)

This Opinion is not a
Precedent of the TTAB

Hearing: June 23, 2015 Mailed: August 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Inovalon, Inc.
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Serial No. 85351975
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Lynn E. Rzonca of Ballard Spahr LLP for Inovalon, Inc.

Tracy Cross, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
_______

Before Cataldo, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Inovalon, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark INDICES (in standard characters) for “business analysis services in the field
of healthcare data, namely, the collection, reporting and analysis of healthcare data
for business purposes” in International Class 35.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground
that the mark is deceptively misdescriptive of a feature of the identified services.

1 Application Serial No. 85351975 was filed on June 21, 2011, based on Applicant’s claim of
a bona fide intent to use the mark in commerce.
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed.2 We reverse
the refusal to register.
Analysis
The test for deceptive misdescriptiveness under Section 2(e)(1)3 has two parts.
First, we must determine whether the matter sought to be registered misdescribes
the goods or services. In order for a term to misdescribe goods or services, “the term
must be merely descriptive, rather than suggestive, of a significant aspect of the
goods or services which the goods or services plausibly possess but in fact do not.” In
re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); see also In re
Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006). The examining attorney bears the
burden of showing that a term is merely descriptive (and thus is potentially
deceptively misdescriptive) of the relevant goods or services. See In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987).

2 Any of the evidence attached to the Examining Attorney’s appeal brief that was not
previously submitted is untimely and we give it no consideration. Trademark Rule 2.141(d);
37 C.F.R. §2.141(d). See also TBMP §1203.02(e) (2015) and authorities cited therein. Any of
the evidence attached to her appeal brief that was previously submitted is duplicative and
unnecessary. See In re Sela Products, LLC, 107 USPQ2d 1580, 1584 (TTAB 2013). See also
TBMP §1203.01 (2015) and authorities cited therein.

3 We note that the issue of whether Applicant’s mark is deceptive under Trademark Act
Section 2(a) is not before us.
We further note that the Examining Attorney previously refused registration under
Section 2(e)(1) on the ground that the mark merely describes a feature of the services, but
subsequently withdrew that refusal to register.
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Second, if the term misdescribes the goods or services, we must ask whether
consumers are likely to believe the misrepresentation. In re White Jasmine LLC,
106 USPQ2d 1385, 1394 (TTAB 2013); In re Phillips-Van Heusen Corp., 63 USPQ2d
at 1048; In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). The Board
has applied the reasonably prudent consumer test in assessing whether a mark
determined to be misdescriptive also would deceive consumers. See R. J. Reynolds
Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB
1985) (“On this evidence, we do not believe reasonably prudent purchasers are apt
to be deceived.”).
Whether INDICES Misdescribes Applicant’s Services
The Examining Attorney introduced a dictionary definition showing that
INDICES is “a plural of index”4 and that “index” is “a sequential arrangement of
material, esp. in alphabetical or numerical order” or “(computers) a reference table
that contains the keys or references needed to address data items.”5 The Examining
Attorney argues and introduced evidence showing that Applicant “is a leading
medical informatics solutions provider touted for its superior healthcare dataset.”6
“Informatics” is “the sciences concerned with gathering and manipulating and

4 October 6, 2011 Office Action at 17 (from dictionary.infoplease.com).

5 Id. at 19 (from dictionary.infoplease.com).

6 9 TTABVUE 4, citing Id. at 7. Record citations are to TTABVUE, the Trademark Trial and
Appeal Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).

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storing and retrieving and classifying recorded information.”7 A “data set” is defined
as “a data file or collection of interrelated data.”8
The Examining Attorney further argues that Applicant’s services, as well as the
technologies underlying its services, “encompass data aggregation, integrity
analysis, validation, intervention and reporting systems.”9 The Examining Attorney
contends that “[i]nformatics and data aggregation companies often employ indices
in the presentation and organization of their data”10 and submitted evidence from
informational and commercial Internet websites in support of her contention. The
following examples are illustrative. (emphasis added by Examining Attorney)
(rimes.com) Rapidly evolving needs of business lead to an increased
demand for new index, benchmark and reference data. Unlike many
other data sets, these emanate from different sources. As data volumes
grow, so does the complexity of all types of data, in particular indexes,
custom benchmarks and blends.

All of this complex data from diverse sources must be aggregated and
standardized for use within specific databases and business
applications….11

(businesswire.com) Fitch’s initial indices present mortgage delinquency
statistics for the Subprime market sector by period of security
issuance, and facilitates the comparison of performance over time.

This system allows Fitch to generate indices based on the market
approach….12

7 October 6, 2011 Office Action at 31 (from rhymezone.com).

8 August 28, 2013 Office Action at 25 (from encyclopedia2.thefreedictionary.com).

9 9 TTABVUE 4, quoting October 6, 2011 Office Action at 22-3.

10 Id.

11 August 28, 2013 Office Action at 30-1.

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(lexjansen.com) The techniques for managing large data sets include
compression, indexing and summarization. 13

(informationweek.com) MedAssurant is able to achieve a superior
healthcare dataset consisting of targeted, timely, and pertinent
components of information.14

The Examining Attorney contends that
a dataset may be analogous to “a reference table that contains the keys
or references needed to address data items” or “a sequential
arrangement of material, esp. in alphabetical or numerical order.”
[internal citations omitted] Thus, consumers generally encounter the
use of indices in the analysis, organization and/or presentation of large
sets of data. Here, applicant’s healthcare datasets may be analogous to
indexes or “indices.” For the reasons set forth above, it is plausible that
the applicant’s services would feature indices.15

Applicant, for its part, argues as follows:
As established herein, the mark INDICES is an acronym standing for
INSIGHTS DATA INTELLIGENCE SOLUTION. The services
provided under the mark are business analysis services in the
healthcare field. They are not “indexing” services. The mark INDICES
requires a multi-step reasoning process for viewers to understand the
relationship between this acronym and Applicant’s healthcare business
analysis services.16

We observe that neither Applicant nor the Examining Attorney introduced any
evidence that Applicant’s INDICES mark is intended or understood by consumers
as an acronym for INSIGHTS DATA INTELLIGENCE SOLUTION. We further

12 January 14, 2013 Office Action at 32-3.

13 August 28, 2013 Office Action at 28-9.

14 October 6, 2011 Office Action at 7.

15 9 TTABVUE 5.

16 Applicant’s April 6, 2012 communication at 6.
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observe that in his declaration, Eric P. Pomerantz, Chief Legal Officer of Applicant,
confirms that “Applicant’s INDICES services do not provide information to
customers in an index format.”17 However, he makes no mention of the asserted
acronym significance of INDICES.
Based on the totality of the evidence of record, including any evidence not
specifically discussed herein, we find that the Examining Attorney has failed to
carry the burden of demonstrating that INDICES may plausibly describe a
characteristic of Applicant’s “business analysis services in the field of healthcare
data, namely, the collection, reporting and analysis of healthcare data for business
purposes.” The Examining Attorney argues that companies providing informatics
and data aggregation may present data in the form of “indices;” that consumers
encounter “indices” in the analysis and presentation of large sets of data; that
Applicant provides datasets in the field of healthcare; and that Applicant’s datasets
in the field of healthcare “may be analogous to indexes or ‘indices.’” However, even if
we accept that the evidence of record shows various forms and compilations of data
may be presented in “indices,” that consumers may encounter such “indices” of data
and that Applicant’s services may be viewed as datasets in the field of healthcare,
the evidence fails to support a finding that Applicant’s datasets “may be analogous”
to “indices” or that, as a result, INDICES merely describes a feature or
characteristic of Applicant’s services.

17 Applicant’s November 19, 2012 communication at 9-10.

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For instance, the definition of “index” as a reference table containing keys
needed to address data items relied upon by the Examining Attorney is specific to
computers, and it is not clear either from the definition or other evidence of record
that such definition pertains to Applicant’s business analysis services. Evidence of
the use of the term “index” or “indices” to describe aspects of “the presentation and
organization” of data in certain industries similarly is too speculative to support the
Examining Attorney’s contention that Applicant’s “business analysis services in the
field of healthcare data…” necessarily utilizes “indices” in the presentation of its
data.18 Simply put, the Examining Attorney’s evidence requires several steps from
the use of “indices” to present and organize data in various industries to the
interpretation of Applicant’s services as providing datasets in the healthcare field to
analogizing such datasets as “indices” for us to find that the mark INDICES merely
describes a function, feature or characteristic of the recited services. At best, the
evidence indicates that INDICES may be suggestive thereof.19
Whether Consumers Are Likely to Believe the Misrepresentation
Because the Examining Attorney has failed to demonstrate on this record that
INDICES is merely descriptive of a feature of the recited services when in fact the
services do not present or organize data in “indices,” we need not and do not engage

18 Similarly, the Examining Attorney’s reliance in her May 18, 2012 Office Action upon
evidence of use by various industries of presentation of information in the form of
“dashboards” fails to demonstrate that a dashboard is an index or that “indices” describes
an aspect of Applicant’s services.

19 We observe that on a different record, such as might be adduced in an inter partes
opposition or cancellation proceeding, we might come to a different result on this issue.
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in a separate analysis of whether consumers are likely to believe the
misrepresentation.
Decision: The refusal to register Applicant’s mark INDICES is reversed.