IntraGroup, Inc.

Trademark Trial and Appeal Board

Mar 29, 2001

No. 75477608 (T.T.A.B. Mar. 29, 2001)

03/29/01
Paper No. 18
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re IntraGroup, Inc.
________
Serial No. 75/477,608
_______
Jill M. Pietrini of Manatt, Phelps & Phillips for
IntraGroup, Inc.
Glenn Mayerschoff, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Simms, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
IntraGroup, Inc. (applicant) filed an application to
register the mark ITJOBS for services ultimately identified
as “providing online via a global computer network resumes
and job placement information in the information technology
field” in International Class 35. The application (No.
75/477,608) was filed on May 1, 1998, and it claimed a date
of first use and a date of first use in commerce of March
31, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/477,608
2
The Examining Attorney initially refused registration
on the ground that the mark “ITJOBS merely describes a
central and significant aspect of the services, namely,
that information technology job information is provided.”
Office Action dated December 23, 1998, p.1. Applicant
disputed the merely descriptive refusal, and it argued that
the ITJOBS could have many meanings including Italian jobs,
international trade jobs or “[I]t could simply be the word
‘it.’” Response dated April 2, 1999.
The Examining Attorney made the refusal to register on
the ground of mere descriptiveness final and he relied on
evidence that “IT” is a common abbreviation for
“information technology” and NEXIS printouts that showed
that the term “IT jobs” and “information technology jobs”
were commonly used to refer to jobs in the field of
information technology.
Applicant filed a notice of appeal and a request for
reconsideration, both dated October 25, 1999, in response
to the Examining Attorney’s final refusal. Significantly,
applicant amended its application to now seek registration
on the Principal Register under Section 2(f) of the
Trademark Act claiming that its mark had acquired secondary
meaning. 15 U.S.C. § 1052(f). The evidence that applicant
submitted included: (1) its website has had nearly 90,000
Ser. No. 75/477,608
3
hits since January 1, 1999, (2) 1165 resumes are listed on
the website, and (3) the website has been in use for almost
three years.
The Examining Attorney was not persuaded by the
evidence. He maintained the refusal that the mark was
merely descriptive under Section 2(e)(1) of the Trademark
Act and he rejected the claim of acquired distinctiveness.
The evidence showed that the term “IT job” or “IT jobs”
were used extensively, including references to other
Internet job-posting sites. Finally, the Examining
Attorney stated that “the proposed mark appears to be
generic for a job field and, therefore, incapable of
identifying the applicant’s services in placing persons in
those jobs and distinguishing them from those of others.”
Office Action dated November 26, 1999 (emphasis in
original).
In its response dated May 25, 2000, applicant
supplied more evidence to indicate that applicant has
received more than 2.5 million hits and more than 150,000
visitors have spent more than 5 minutes at its site.
The Examining Attorney again found that applicant had
not demonstrated that the term had acquired secondary
meaning. He also submitted additional evidence that showed
competitors used the term “IT Jobs” or its equivalent for a
Ser. No. 75/477,608
4
job category. The Examining Attorney also noted that
“[e]ven assuming the Board finds the term not to be
generic, the evidence of secondary meaning falls far short
of what would be required to claim distinctiveness of such
a highly descriptive term.” Office Action dated August 15,
2000, p.2.
Both applicant and the Examining Attorney filed
briefs, but no oral argument was requested.
The Examining Attorney maintains that the mark ITJOBS
is at the very least merely descriptive of applicant’s
services of “providing online via a global computer network
resumes and job placement information in the information
technology field.” In addition, in response to applicant’s
claim of acquired distinctiveness, he notes that “it is
generic in connection with such services.” Brief, p.1. If
it is not generic, “the evidence of acquired
distinctiveness is insufficient for registration purposes.”
Id.
Applicant maintains that its term is suggestive
because it has more than one meaning. If it is not
suggestive, it is merely descriptive and applicant alleges
that it has demonstrated that the term has acquired
distinctiveness as shown by the amount of traffic and usage
of its website.
Ser. No. 75/477,608
5
GENERICNESS
The Court of Appeals for the Federal Circuit has held
that: “The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v.
Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Ginn goes on to explain
that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?
Id.
Applicant’s services are “providing online via a
global computer network resumes and job placement
information in the information technology field.” More
succinctly put, applicant services involve providing
information technology job placement information on the
Internet. First, the Examining Attorney has provided
significant evidence of what the letters “IT” mean. The
letters “IT” are a recognized computer science abbreviation
of “information technology.” Acronyms, Initialisms &
Abbreviations Dictionary. The evidence also shows that the
Ser. No. 75/477,608
6
term is used repeatedly with the term “jobs” to refer to
jobs in the information technology industry. A sample of
some of the Examining Attorney’s evidence follows.
IT jobs are those in which individuals design, build
and/or maintain an information technology
infrastructure. Pittsburgh Post-Gazette, July 4, 2000
(p.A-19).
Matrix recently surveyed RTP employers and found a
wide range of salaries for IT jobs, including a high
of $142,022 for an information system director. News
and Observer (Raleigh, N.C.) April 27, 1999 (p. D1).
Nationally, it’s a huge problem. There are 350,000
unfilled IT (information technology) jobs. Knoxville
News-Sentinel, September 24, 1998 (p.C1).
What is the biggest obstacle you face in performing
your IT (information technology) job? Chicago Sun-
Times, November 28, 1999 (p.1).
According to a study by the Information Technology
Association of America, more than 400,000-information
technology (IT) jobs remain unfilled. Newsday, April
26, 1999 (p. Y9).
Microsoft Press general manager Jim Brown declared,
“The IT skills gap threatens the world economy now.
Today there are nearly 350,000 IT jobs open in the
U.S. Publishers Weekly, April 26, 1999 (p.33).
[A]t least 10 percent of the 300,000 to 400,000 IT
jobs go unfilled each year . . . The information
technology field will account for 80 percent of new
jobs. Chicago Sun-Times, April 22, 1999 (p.32).
Stock said tracking those IT jobs is difficult because
many computer-tech jobs are hidden within
manufacturing and other sectors. Dayton Daily News,
April 18, 1999 (p. 1F).
[S]he said 47,000 of the 100,000 IT jobs available at
any one time are displayed on JobWorld and its main
competitors. Computing, May 6, 1999 (p.3).
Ser. No. 75/477,608
7
Clearly, the Examining Attorney’s evidence
demonstrates that the term IT jobs is commonly used as a
name of a particular type of job, i.e., a job in the
information technology industry. The Examining Attorney
also presented evidence that the term IT jobs was used by
competitors and others to refer to the service of providing
information about information technology jobs.
Positive Support Review is launching a Web-based IT
job listing service. InformationWeek, November 3,
1997 (p.140).
[M]anaging director of the Boston office of Source
Services Corp., a national IT job placement firm in
Dallas. InformationWeek, January 27, 1997 (pp.80-84).
VP of the New England division of the Eliassen Group
Inc., a national IT job-placement firm.
InformationWeek, December 2, 1996 (p.36).
Atlanta IT Jobs: Atlanta IT jobs for the IT pro.
www.alwayssomething.freesavers.com/home.htm.
Hot IS and IT Jobs In Minneapolis: Minneapolis has
hot IT and IS direct placement and contract jobs.
www.newtechcity.com.
To post resumes and access IT job listing. PC Week,
March 4, 1996 (p.E4).
Other evidence demonstrates that the term “IT Jobs” is
commonly used to describe the openings for IT jobs and the
market for information technology professionals.
Therefore, we conclude that the genus for applicant’s
Ser. No. 75/477,608
8
services would be information technology (or IT) job
placement services.
The next Ginn question concerns whether the relevant
public understand the term to refer primarily to the genus
of the services. “[T]o refuse registration on the ground
that an applicant seeks to register the generic name of the
goods, the PTO must show that the word or expression
inherently has such meaning in ordinary language, or that
the public uses it to identify goods of other producers as
well.” In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110, 1111 (Fed. Cir. 1987). Here, ordinary language usage
of the term “IT jobs” shows that it is used to identify
jobs in the information technology sector. The only
question is whether the relevant public would refer to
applicant’s services as “IT jobs.” Ginn, 228 USPQ at 530.
The answer to the question is provided by the evidence that
shows that the public refers to similar services as “IT job
placement services.” Firms that provide information about
information technology jobs are referred to as “IT job
placement firms.” Their websites list their services as
“IT Jobs” and a category of jobs these sites offer is
identified as IT or information technology jobs.
Therefore, the term ITJOBS would be the genus used by the
public to refer to services of providing resume and job
Ser. No. 75/477,608
9
placement information concerning the information technology
field on the Internet. Also, the evidence shows use of the
exact term IT Jobs so that even if the term is considered
to be a phrase, the evidence supports the finding that it
is the genus of applicant’s services. In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999). Therefore, we agree with the Examining Attorney
that the term ITJOBS is generic for providing online via a
global computer network resumes and job placement
information in the information technology field.
We disagree with applicant’s statement that “the
phrase IT JOBS may describe some type of employment, but
does not show use of IT JOBS for employment placement
services.” Reply Brief at 3. The evidence clearly shows
the term IT jobs is commonly used and understood by the
public to refer to jobs in the information technology
field. The evidence goes further and shows that it refers
to those providing job placement services in the field of
information technology. Firms providing job placement
services in the information technology field are called
“IT job placement firms” and Internet listings use the term
“IT Jobs” to inform the potential job seekers or employers
that they have information about information technology
Ser. No. 75/477,608
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jobs, often in a particular geographic area such as
“Atlanta IT JOBS.”
Applicant argues that “ITJOBS is not a word in the
English language. The mark ITJOBS, as a coined term, has
multiple connotations.” Brief at 7. The fact that
applicant spells its mark without a space between the terms
“IT” and “JOBS” is of no moment. Gould Paper (SCREENWIPE
generic for a wipe for cleaning television and computer
screens); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978) (GASBADGE at least descriptive for gas
monitoring badges; three judges concurred in finding that
term was the name of the goods); Cummins Engine v.
Continental Motors, 359 F.2d 892, 149 USPQ 559 (CCPA 1966)
(TURBODIESEL generic for a type of engine). The multiple
uses of the exact term “IT JOBS” demonstrate that there is
nothing coined about the term.
While applicant maintains that there are numerous
other meanings the abbreviation IT may have, this does not
reduce its meaning when it is applied to services
identified as “providing online via global computer
networks resumes and job placement services in the
information technology field.” Genericness must be viewed
in relationship to the goods or services for which
registration is sought. The fact that IT can also stand
Ser. No. 75/477,608
11
for international trade or Italian does not take away from
the fact that when IT is associated with providing online
via a global computer network resumes and job placement
information in the field of information technology
potential purchasers will understand the term as referring
to “information technology.”
DESCRIPTIVENESS
Although we have found the term ITJOBS to be generic,
in the interest of completeness, we now analyze the mark to
see if it is merely descriptive, and, if so, whether
applicant submitted sufficient evidence of acquired
distinctiveness. We start by noting that if the term
ITJOBS is not generic, it is certainly highly descriptive.
For a mark to be merely descriptive, it must immediately
convey knowledge of the ingredients, qualities, or
characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987);
In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 525, 205
USPQ 505, 507 (CCPA 1980). To be “merely descriptive,” a
term need only describe a single quality or property of the
goods. International Nickel Co., 262 F.2d 806, 807, 120
USPQ 293, 294 (CCPA 1959). While applicant argues that the
“existence of several meanings of the term ITJOBS precludes
a finding that a potential purchaser would immediately know
Ser. No. 75/477,608
12
the characteristics or functions of Applicant’s services”
(Brief, p.8), descriptiveness of a mark is not considered
in the abstract, but in relation to the particular goods or
services for which registration is sought. Abcor, 588 F.2d
at 814, 200 USPQ at 218.
Here, the Examining Attorney, as discussed above, has
submitted sufficient evidence of the common use of the term
“IT JOBS” in the information technology field. The
evidence shows that IT is a commonly used abbreviation for
information technology. Applicant’s services are in the
information technology field. There can be no doubt that
potential purchasers or users of job placement services in
the information technology field, upon seeing the term
ITJOBS in relation to that service, would immediately know
a characteristic of the placement services, i.e., that the
placement services are in the field of information
technology.
ACQUIRED DISTINCTIVENESS
Applicant supports its Section 2(f) claim with
evidence that shows that “from January to May of 2000,
Applicant’s website received approximately 2.5 million
hits, including an average of 450,000 hits per month and an
average of 150,000 clickthroughs/page per month.” Brief,
p.9. Also, there were 4,210 resumes posted on its website.
Ser. No. 75/477,608
13
Applicant’s two printouts, totaling 211 and 72 pages
respectively, identify by name the individuals who posted
resumes on its website. Other evidence includes the fact
that over 50 employers have job openings posted on
applicant’s site and that applicant has been using its mark
for three years.
Applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ294, 295 (CCPA 1954)(“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988).
Applicant’s evidence consists primarily of the traffic
and usage of its website. The Examining Attorney’s
printouts demonstrate that IT (information technology) jobs
are an important part of the job market and that there is
concern about filling these jobs. “The nation’s need for
IT workers is expected to double. In North Carolina, there
are well over 175,000 IT jobs.” The News and Observer
(Raleigh, NC), April 27, 1999 (p. D1). “[M]ore than
400,000-information technology (IT) jobs remain unfilled
Ser. No. 75/477,608
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due to a lack of skilled workers.” Newsday, April 26, 1999
(p.Y9). “Given the estimates of IT job openings, Joerres
said: ‘I find that very interesting because there are
about 1.5 million resumes on the Internet with IT jobs.’”
Milwaukee Journal Sentinel, October 25, 1999 (p. 1).
Information technology is a field where there are
hundreds of thousands of unfilled job vacancies. At least
one story indicates that there are over a million IT
resumes posted on the Internet. Applicant’s site has
generated millions of hits and “as of the date of the
submission of this evidence, there were 4,210 resumes
posted.” Brief, p.10. While applicant has been able to
demonstrate some success of its website, this does not
translate into a finding that the relevant public
recognizes the term ITJOBS as a trademark. Applicant has
only used its mark since March 31, 1997. We have no
evidence of the type or amount of advertising or affidavits
or other evidence that show recognition of the term as a
trademark. Compare Hollywood Brands, supra. In addition,
the term it seeks to register (ITJOBS) is commonly used in
referring to “IT job listings,” “IT job placement,” “IT
jobs market,” and “IT job openings.” A word this commonly
used for services requires that an applicant seeking
registration under Section 2(f) provide more information
Ser. No. 75/477,608
15
than the number of website visitors and resumes and job
postings.
In addition, as the evidence indicates, IT
professionals are in great demand. The term “IT jobs”
would be a common term job seekers and potential employers
would use in attempting to fill vacancies and obtain jobs
online. Inasmuch as ITJOBS tells web users the subject
matter of applicant’s website it is little wonder that
applicant’s site is popular. By itself, evidence of the
popularity of applicant’s website does not demonstrate that
its term has acquired distinctiveness. The Examining
Attorney has noted that “[p]ersons surfing the Internet
looking for information about certain topics would be drawn
to sites with descriptive and generic words that inform
them of the content they are seeking.” Brief, p.7. It is
not surprising that a website called ITJOBS in a field
where hundreds of thousands of jobs go unfilled has
received many hits and has posted thousands of resumes.
This evidence does not establish that the term ITJOBS for
providing online via a global computer network resumes and
job placement information in the field of information
technology services has acquired distinctiveness.
In summary, after careful consideration of the
relevant authorities and the evidence and arguments
Ser. No. 75/477,608
16
submitted by applicant, we find that the term applicant
seeks to register (ITJOBS) is merely descriptive of, and
generic for, the services recited in the application.
Moreover, assuming that the matter is not generic, we find
that applicant has failed to submit sufficient evidence of
acquired distinctiveness to warrant registration under
Section 2(f) of the Trademark Act.
Decision: The refusals to register are affirmed.