Jay Wilkinson

Trademark Trial and Appeal Board

Apr 20, 2004

No. 78041013 (T.T.A.B. Apr. 20, 2004)

Mailed: 20 APR 2004
Paper No. 16
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jay Wilkinson
________
Serial No. 78041013
_______
Andrew S. Pollock of Andy Pollock Law PC LLO for Jay
Wilkinson.
Andrea Koyner Nadelman, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Rogers, Holtzman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 29, 2000, Jay Wilkinson (applicant)
applied to register the mark DIGITAL IMS, in typed form, on
the Principal Register for services ultimately identified
as follows:
Business management services, namely, managing and
organizing databases containing information on
employees, customers, vendors, time card systems,
scheduling and planning, company news and information;
managing and organizing records and documentation for
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 78041013
2
others, including ISO documentation; business
management, namely, managing and organizing
administrative systems for others in International
Class 35 and
Computer software design, installation and
maintenance, namely, design, installation and
maintenance of software applications used for database
management and software applications used to manage
database information online utilizing the internet,
intranets, extranets and other related modes of
electronic communication, for others; computer
services, namely, designing, maintaining and hosting
web sites for others in International Class 42.
While the application (Serial No. 78041013) was
originally based on an allegation of a bona fide intention
to use the mark in commerce, on October 11, 2002, applicant
filed an amendment to allege use. The amendment alleged
that applicant first used the mark anywhere and in commerce
in January 2001.
The examining attorney1 refused to register applicant’s
mark on the ground that the mark was merely descriptive
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), because it “describes a feature of the
services with which applicant uses the mark, namely,
information and data management through digital information
management systems.” Examining Attorney’s Brief at 12.
Applicant, on the other hand, submits that DIGITAL IMS
1 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 78041013
3
“requires significant imagination on the consumer’s part to
cull a direct message from the mark about the nature of the
applicant’s business management, computer software design
and web site services.” Applicant’s Brief at 4 (internal
quotation marks omitted).
After the examining attorney made the refusal final,
applicant appealed to this board.
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, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods or services.
Gyulay, 3 USPQ2d at 1009; Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294
(CCPA 1959). Descriptiveness of a mark is not considered
in the abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
We begin our analysis by first clarifying the record.
We note that the application as filed contained a
disclaimer of the term “digital.” In the first Office
Ser. No. 78041013
4
action, the examining attorney refused registration on the
ground that the mark was merely descriptive of the
services. The examining attorney argued and submitted
evidence that the letters IMS stood for “information
management system.” In his response, applicant did not
agree. However, applicant admitted that the letters stood
for “integrated marketing solutions,” which applicant
indicated “may be descriptive of other services applicant
provides.” Response dated December 31, 2001 at 2.
Therefore, applicant disclaimed the letters IMS in his
response. Applicant has consistently maintained that he
has disclaimed the letters IMS. See Reply Brief at 1
(“Applicant has disclaimed IMS, and has maintained that
position in all of its arguments before the Examining
Attorney… The Applicant does not dispute that IMS
describes certain elements of his services (though not by
reference to the words the Examining Attorney continues to
reference). This fact does not matter. Applicant has
disclaimed IMS.”)
Regarding the disclaimer of the term “digital,” the
examining attorney in her brief noted that “[p]resumably,
the applicant intended to withdraw the disclaimer of the
term DIGITAL, as the basis for the applicant’s appeal is
his argument that the term DIGITAL is not descriptive.”
Ser. No. 78041013
5
Examining Attorney’s Brief at 6. We agree with the
examining attorney that applicant must have withdrawn the
original disclaimer. During the prosecution, no mention
was made of this disclaimer until the new examining
attorney in her brief pointed out the inconsistency of
disclaiming all the terms in the mark and therefore
theorizing that the disclaimer was withdrawn.
We now begin our analysis of whether applicant’s mark
DIGITAL IMS is merely descriptive of applicant’s identified
services. As noted above, applicant has disclaimed the
term IMS, although applicant and the examining attorney
have different theories as to the meaning of the term.
Applicant argues that the term means “integrated marketing
solutions” (Response dated January 2, 2002 at 2) and the
examining attorney maintains that it means “information
management system” (Examining Attorney Brief at 6). The
examining attorney included a list from an acronym
dictionary that identified “information management system”
as one of the meanings of the abbreviation IMS.
“Integrated marketing solutions” was not listed as a
recognized meaning.
The examining attorney also included printouts, a
sample of which are set out below, to show that the term
“information management system” is used descriptively to
Ser. No. 78041013
6
refer to “managing databases of information and computer
software used [to] manage database information.” Office
Action dated July 3, 2001 at 2.
Nathan & Lewis combines producer and client “friendly”
information management systems, a full array of
products and services and competitive compensation to
create a logical and comprehensive strategy for
promoting growth of your independent financial
services business.
Financial Planning, June 1, 2001.
The answer is yes. In particular, the uptake of
electronic information management systems is rising
dramatically.
Contract Journal, May 16, 2001.
MedPlus is a provider of information management
systems for health care organizations.
ABI/INFORM, May 7, 2001.
Arlington Public Schools will spend about $459,000 to
complete installation of a computerized student
information management system that has been piloted in
several county schools.
Washington Post, May 3, 2001.
The reduction was part of an efficiency drive and the
advent of information management systems made possible
by technology.
Washington Post, April 30, 2001.
Robertson said the outage also affected the district’s
information management system for student and
financial records.
Fort Worth Star-Telegram, April 17, 2001.
We also take judicial notice2 of the following
definitions of IMS as: (1) “Information Management System.
2 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser. No. 78041013
7
Synonym for IMS/VS [Virtual Storage]”3 and (2) “Abbreviation
for Information Management System. A program product that
uses OS (operating system) BTAM [Basic Telecommunications
Access Method] to allow IMS applications to operate on the
remote terminal system. Remote display stations require
non-switched lines.”4
Applicant’s identified services include the management
of information such as “managing and organizing databases
containing information on employees, customers, vendors,
[and] time card systems”; “managing and organizing records
and documentation for others”; and designing, installing,
and maintaining “software applications used for database
management and software applications used to manage
database information online.” We note that if applicant’s
mark is descriptive for some of the services, the examining
attorney does not need to establish that it is descriptive
for all the services in that class. In re Pencils, Inc., 9
USPQ2d 1410, 1411 (TTAB 1988) (“We agree with applicant
that the sale of pencils is not the central characteristic
of applicant's services. Nevertheless, pencils are
significant stationery/office supply items that are
typically sold in a store of applicant's type, that is, a
3 McDaniel, IBM Dictionary of Computing (1994).
4 Sippi, Computer Dictionary (1984).
Ser. No. 78041013
8
stationery and office supply store. While applicant's
stores may carry a variety of products, pencils are one of
those products, and, thus, the term ‘pencils’ is merely
descriptive as applied to retail stationery and office
supply services”). Accord In re CyberFinancial.Net Inc., 65
USPQ2d 1789, 1791 (TTAB 2002) (“[I]f applicant’s mark
BONDS.COM is generic as to part of the services applicant
offers under its mark, the mark is unregistrable”).
When we consider the services involving the management
of information for which applicant uses the term IMS,
prospective purchasers will likely believe that the term
IMS is simply a reference to the fact that its services
involve information management systems. We also add that
applicant has provided little evidence from which to
conclude that prospective purchasers would view IMS as an
abbreviation for “integrated marketing solutions.” The
term would therefore be descriptive of applicant’s
services.5
Next, we look at the term “digital.” The examining
attorney has referred to The Computer Desktop Encyclopedia
5 We are aware that applicant has already disclaimed IMS and
admitted that it has some descriptive significance in relation to
his services. The foregoing discussion was necessary to
determine the meaning of the individual terms before we address
what the mark as a whole would mean to prospective purchasers.
Ser. No. 78041013
9
(2002) that indicates that “Today, digital is synonymous
with computer.”6 Office Action dated January 16, 2003 at 1.
Applicant admits that “[w]ithout a doubt, the word DIGITAL
has become popular in this world of electronic commerce and
correspondence.” Applicant’s Brief at 5. The examining
attorney also cited the case of In re Cambridge Digital
Systems, 1 USPQ2d 1659, 1662 (TTAB 1986), in which the
board referred to the disclaimed term “digital” as a
“highly descriptive word” in relation to computer systems.
When we view the use of the word “digital” in relation to
applicant’s services we find that it would, as defined in
the dictionaries, have the meaning, of being synonymous
with “computer.” This meaning would simply indicate to
prospective purchasers that applicant’s database and
information management services are performed in a computer
or digital environment.
Applicant makes two specific arguments regarding the
term “digital.” First, applicant relies on the case of In
re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490
(Fed. Cir. 1988). That case involved the issue of whether
the mark HUTCHINSON TECHNOLOGY was primarily merely a
surname, which is obviously not the issue in this case. To
the extent the court discussed the descriptiveness of the
6 See also Freedman, The Computer Glossary (2001) (same).
Ser. No. 78041013
10
term “technology,” it found that it is “a very broad term”
that “does not convey an immediate idea” of the
characteristics or features of the applicant’s etched metal
electronic components and similar products. 7 USPQ2d at
1493. In effect, the Federal Circuit held that when
prospective purchasers viewed the term “technology” in
relation to etched metal electronic components it would not
immediately inform them of any specific feature or
characteristic of the goods. That is not the case with the
term “digital” here. The term may be widely used but its
meaning is straightforward, i.e., computer.7
Second, applicant attached several registrations in
the record that include the term “digital” without a
disclaimer of the term. These registrations are for the
marks DIGITAL CEMENT, DIGITAL SOLUTIONS FOR THE GLOBAL
COMMODITY MARKET, DIGITAL-TELEPATHY, DIGITAL@JWT,
DIGITALPC.COM, DIGITALCANDLE, and THE DIGITAL BUILDING.
The examining attorney submitted copies of registrations
for marks such as GYRO DIGITAL, DIGITAL ARCHITECTS, DIGITAL
ICE3, DIGITAL COWBOYS, DIGITAL SYSTEMS INTERNATIONAL
CORPORATION, DIGITAL PERSONA, DIGITAL GRAFFITI, DIGITAL
7 While both applicant and the examining attorney make analogies
to the words “technology” and “digital,” the Hutchinson
Technology case did not discuss the term “digital.” Whether that
term is descriptive must be determined based on the present
record.
Ser. No. 78041013
11
CONNECTION, DIGITAL SYSTEM RESOURCES, DIGITAL WIDGETS,
DIGITAL CAFFEINE, DIGITAL DAY, and DIGITAL CARPENTERS in
which the word “digital” was disclaimed. The evidence of
applicant and the examining attorney suggests that the
Office has considered each application based on its own
individual record. The identified goods and services, the
relationship of the mark to the goods and services, and the
display of the mark can all influence whether a disclaimer
is appropriate. Applicant has certainly not demonstrated
that there is anything inconsistent with the examining
attorney’s conclusion that the term “digital” was
descriptive of the services in the present application. We
add that even “if some prior registrations had some
characteristics similar to Nett Designs' application, the
PTO's allowance of such prior registrations does not bind
the Board or this court.” In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Finally, we must consider whether the mark DIGITAL IMS
as a whole is merely descriptive, and not just the
individual components. The test is not whether prospective
purchasers can guess what applicant’s services are after
seeing applicant’s mark alone. Abcor Dev., 200 USPQ at 218
(“Appellant’s abstract test is deficient – not only in
denying consideration of evidence of the advertising
Ser. No. 78041013
12
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”).8
In this case, when prospective purchasers encounter
the mark DIGITAL IMS for services involving, inter alia,
managing and installing information management software,
they will immediately understand that the mark describes
the fact that applicant’s services concern information
management systems deployed on a computer. There is
nothing incongruous or left to the imagination when
applicant’s mark is viewed in relation to these services.
While applicant has submitted evidence that some people now
recognize its term as referring to applicant, we note that
applicant acknowledges that he “has not amended [the
application] to seek registration under Section 2(f).”
Applicant’s Brief at 6 n.5. Applicant also argues that his
“extensive use shows the degree of marketing needed to
bridge the mental gap, thus demonstrating the width of the
gap.” Id. Applicant’s evidence of use and advertising and
8 The statements from Al Karnavicus, Deb Loeser, and Kaye Black
all seem to suggest that the meaning of applicant’s mark was not
clear in the abstract, but it was apparent when viewed in
relation to applicant’s services. The individuals report that
they “did not immediately associate [the term] with the Web site
services the company [applicant/PrinterPresence] provides.” It
was “during a seminar for PrinterPresence that I first associated
the name Digital IMS with the services the company provides.”
Ser. No. 78041013
13
consumer recognition is more appropriate for determining
whether a mark has acquired distinctiveness. To the extent
that we consider the evidence in relation to the question
of descriptiveness, it does not persuade us that the
examining attorney’s refusal should be reversed.9 The
evidence of advertising, sales, and customer recognition,
simply indicates that applicant’s mark is capable of
serving as a trademark not that it inherently functions as
one. Most of the evidence seems to be limited to
applicant’s “computer services, namely, designing,
maintaining and hosting web sites for others” as opposed to
applicant’s managing and organizing information databases
and designing and installing software for database
management. Therefore, we find that applicant’s term is
merely descriptive of the services identified in the
application.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.
9 We, of course, do not address whether the evidence shows that
the mark has acquired distinctiveness, which is an issue not
before us.