Kevin W. Goldstein

Trademark Trial and Appeal Board

Dec 26, 2017

No. 86831121 (T.T.A.B. Dec. 26, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: December 26, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kevin W. Goldstein
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Serial No. 86831121
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Kevin W. Goldstein, pro se.
Kevon L. Chisolm, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
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Before Zervas, Cataldo and Lynch,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Kevin W. Goldstein (“Applicant”) seeks registration on the Principal Register of
the proposed standard character mark (hereinafter “FLUID
INTELLIGENCE”) for “computer software and artificial intelligence systems
comprising computer hardware, computer software, communication networks, fluid
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sensors, valves, alarms, and controllers, all for monitoring, analyzing, and controlling
fluid flow into and within infrastructure pipeline systems” in International Class 9.1
The Examining Attorney determined that FLUID INTELLIGENCE is merely
descriptive of a characteristic or feature of Applicant’s identified goods, and refused
registration of Applicant’s proposed mark pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1).
After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested reconsideration. On remand, the Examining Attorney denied
the request for reconsideration. The appeal resumed and both Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register.
Preliminary Issue
Applicant submitted for the first time with or in his appeal brief an article and a
list of third-party registrations, and the Examining Attorney has objected to both.
Applicant did not comply with the established rule that the evidentiary record in an
application must be complete prior to the filing of the notice of appeal or with a
request for reconsideration filed during the period for filing an appeal. See Trademark
Rule 2.142(d), 37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532

1 Application Serial No. 86831121 was filed on November 24, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon an allegation of a bona fide intention to use
the mark in commerce.
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(TTAB 1994). We sustain the objection and will not further consider the article2 and
list of registrations.3
Applicant submitted another article from www.npr.org with his reply brief. In
view of Trademark Rule 2.142(d), we do not consider this article.
Mere Descriptiveness
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) 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 AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order to determine what product
or service characteristics the term indicates, the term is suggestive rather than
merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978);
see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).

2 Even if we did consider the article in our deliberations, we would not find it persuasive
because the matter discussed in the article relates to a field unrelated to Applicant’s goods.
Descriptiveness is considered in relation to the relevant goods. DuoProSS Meditech Corp. v.
Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).
3 We point out too that this material is not appropriate for judicial notice. See TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1208.02 (June 2017) and
authorities cited therein.
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Whether a mark is merely descriptive is determined in relation to the goods for
which registration is sought, not in the abstract or on the basis of guesswork.
Descriptiveness must be evaluated “in relation to the particular goods for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Chamber of Commerce of the U.S., 102
USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). In other words, we
evaluate 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); In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002)).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the goods,
the combination results in a composite that is itself merely descriptive. See e.g., In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004)
(PATENTS.COM merely descriptive of computer software for managing a database
of records that could include patents, and for tracking the status of the records by
means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); In re Carlson, 91
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USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services).
The Examining Attorney argues that the proposed mark “merely describes a
feature of the applicant’s goods, namely, computer software and hardware comprising
an intelligent system used for monitoring and controlling fluid flow.”4
As evidence, the record contains the following dictionary definitions of the two
terms in the proposed mark:
Fluid
“a substance, as a liquid or gas, that is capable of flowing
and that changes its shape at a steady rate when acted
upon by a force tending to change its shape.”5
Intelligence
● “From the computer perspective, intelligence is having
processing capability. In this context, every electronic
device with a microprocessor is ‘intelligent.”6
● “the gathering or distribution of information, especially
secret information.7
Additionally, the Examining Attorney submitted third-party registrations that
have disclaimers of the term “intelligence.” “[T]hird party registrations show the
sense in which the word is used in ordinary parlance and may show that a particular
term has descriptive significance as applied to certain goods or services.” In re Box

4 9 TTABVUE 8.
5 From Random House Dictionary (Random House, Inc. 2016) accessed at
http://www.dictonary.com/browse/fluid, April 11, 2017 Req. for Recon., 4 TTABVUE 8.
6 Computer Desktop Encyclopedia (http://www.yourdictionary.com/intelligence), March 18,
2016 Office Action, TSDR 2.
7 http://www.dictionary.com/browse/intelligence?s=t, September 19, 2016 Resp., TSDR 10.
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Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (citing Inst. Nat’l des
Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992)). The Principal Register third-party registrations for goods involving
analytics are:
• BOARD MANAGEMENT INTELLIGENCE (stylized,
Registration No. 2251605) for, inter alia, “computer
software for on-line analytical processing, namely,
managing data with a multi-dimensional structure.”
(MANAGEMENT INTELLIGENCE disclaimed.)8
• AWARE VEHICLE INTELLIGENCE and design
(Registration No. 4031819) for “vehicle telematics and
navigational system comprised of electronic transmitters,
receiver circuitry, microprocessors, radios, and computer
software all for use with motor vehicles; global positioning
system consisting of computers, computer software,
transmitters, receivers and network interface devices for
use with motor vehicles.” (VEHICLE INTELLIGENCE
disclaimed.)9
• ACTIVE ENTERPRISE INTELLIGENCE (Registration
No. 3857285) for “computer hardware; computer software,
namely software for use in connection with data
warehousing, data management, data mining and
database analytics.” (ENTERPRISE INTELLIGENCE
disclaimed.)10
• ACTIONABLE HEALTH INTELLIGENCE
(Registration No. 3779148) for “computer software in the
field of health care information capture, analysis and
reporting.” (HEALTH INTELLIGENCE disclaimed.)11
• ANIMAL INTELLIGENCE and design (Registration No.
4274245) for inter alia “Computer software that provides
real-time, integrated business management intelligence by

8 October 11, 2016 Office Action, TSDR 2-4.
9 Id., TSDR 8-10.
10 Id., TSDR 11-13.
11 Id., TSDR 14-16.
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combining information from various databases and
presenting it in an easy-to-understand user interface.”
(ANIMAL INTELLIGENCE disclaimed.)12
The Examining Attorney also submitted two pages from third-party websites
which concern fluid flow and discuss “intelligent” systems:
● http://www.balcrank.com
Intelligent Modules
The system uses intelligent modules, which offer a variety
of adaptations in the software. Synergy can be installed in
both existing and new facilities and with optional
integration in financial DMS applications. With easy
integration, the system provides precise metering and
dispensing of fluids.13
● http://www.tankscan.com/benefits
ATEK Intelligence Platform
TankScan’s user-friendly app makes it easy to monitor
fluid levels anytime, anywhere. But that’s just the
beginning. It also lets you:
- Scale from one to over 100,000 tanks
- View data from multiple tanks at once
- See a map view of tank locations and levels
- Get email alerts when preset levels are reached
- Receive timely reports
- Access full date history for routing and seasonality
analysis14

Applicant’s identified goods involve “artificial intelligence systems” used for
controlling fluid flow into and within infrastructure pipeline systems. The definition

12 Id., TSDR 22–24.
13 Id., TSDR 29.
14 Id., TSDR 38.
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of “artificial intelligence” from the online version of Merriam Webster Dictionary
accessed at merriam-webster.com is “an area of computer science that deals with
giving machines the ability to seem like they have human intelligence.”15 Thus, in
the context of Applicant’s computer software and artificial intelligence systems,
purchasers will immediately recognize that FLUID in Applicant’s proposed mark
refers to the fluids that flow into and within infrastructure pipeline systems, and that
INTELLIGENCE refers to the gathering or distribution of information regarding
such fluids through fluid sensors. Thus the proposed mark, when considered as a
whole, immediately informs purchasers that Applicant’s computer software and
artificial intelligence systems provide information about fluids flowing into and
within infrastructure pipeline systems. The third-party registrations and two
webpages use INTELLIGENCE (or the equivalent INTELLIGENT) in the same
manner as Applicant uses the term for goods that have an analytical feature and such
uses support the meaning of INTELLIGENT noted above.
Applicant argues the proposed mark is suggestive, and that:
the FLUID INTELLIGENCE mark has at least four
potentially different interpretations that do not merely
describe computer goods and systems relating to fluid
monitoring. Such meanings and interpretations could be
(1) relating to a liquid or gas that has the capacity to learn
or having high mental capacity; or (2) relating to a liquid
or gas that has knowledge of an event or circumstance; or
(3) a readily changing or shifting capacity for learning, or
shifting knowledge of an event; or (4) a readily changing or

15 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 86831121
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shifting capacity for gathering information, including
secret information. These four likely interpretations and
meanings for FLUID INTELLIGENCE do not merely
describe computer goods for fluid or water monitoring.16
We find that purchasers of Applicant’s computer software and artificial
intelligence systems would not attach any of the four meanings proposed by
Applicant. We view skeptically, and note that there is no evidence to support, the
notion that a liquid or gas has the capacity to learn anything or has a mental capacity,
particularly a high one; that a gas or liquid can gain knowledge of any event or
circumstance; that a gas of liquid has a capacity for learning or having knowledge of
an event; or that a gas or liquid can have a readily changing or shifting capacity for
gathering information. It is far more likely that purchasers of Applicant’s goods would
consider the proposed mark to be a combination of two merely descriptive terms, the
first indicating that the goods are intended for use in connection with fluids, as stated
in the identification of goods; and the second term indicating to purchasers that there
is a sensing component to the goods, also indicated in the identification of goods
(“artificial intelligence systems” containing fluid sensors). Applicant has
acknowledged that “the Mark does convey some information about the goods at
issue.”17
With regard to the third-party registrations with disclaimers of the term
INTELLIGENCE, Applicant argues that their probity is limited because other third-
party registrations exist which do not contain disclaimers of that term. Because we

16 Applicant’s brief at 7, 7 TTABVUE 8.
17 Applicant’s brief at 8, 7 TTABVUE 9.
Serial No. 86831121
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do not consider the list of registrations set forth in Applicant’s brief, this argument is
without evidentiary support and hence not persuasive. Further, Applicant’s
additional argument against the probative value of the Examining Attorney’s third-
party registrations, i.e., that all but one of the marks include more than two terms
and the single two-term mark includes a design, is not persuasive because the
disclaimer concerns the descriptiveness of the disclaimed term, not the number of
terms in the mark and whether there is a design. Also, we find that the fact that
several of the third-party registrations include disclaimers of terms juxtaposed with
the term INTELLIGENCE supports the Examining Attorney’s position that both
terms in Applicant’s proposed mark are merely descriptive of a feature of Applicant’s
goods in that they serve to identity that there is “intelligence” and the nature of that
intelligence.
In short, when the terms “fluid” and “intelligence” are combined, “the mark as a
whole, i.e., the combination of the individual parts,” does not convey “any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
In re Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective
of a prospective purchaser or user” of Applicant’s computer software and artificial
intelligence systems for monitoring, analyzing, and controlling fluid flow into and
within infrastructure pipeline systems, “because ... the combination of the terms does
not result in a composite that alters the meaning of [any] of the elements ... refusal
on the ground of descriptiveness is appropriate.” In re Petroglyph Games, 91 USPQ2d
at 1341. The evidence makes clear that consumers who know of Applicant’s “computer
Serial No. 86831121
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software and artificial intelligence systems comprising computer hardware, computer
software, communication networks, fluid sensors, valves, alarms, and controllers, all
for monitoring, analyzing, and controlling fluid flow into and within infrastructure
pipeline systems” will understand the proposed mark to convey information about
them, specifically that they involve fluid flow and that the goods have a sensing
feature which provides information about the fluid flowing in the infrastructure
pipeline systems. See DuoProSS Meditech Corp. v. Invira Med. Devices Ltd., 103
USPQ2d at 1757 (descriptiveness assessed in the context of the identified services).
Upon consideration of all of the Examining Attorney’s and Applicant’s arguments
and evidence in the record, including the arguments and evidence not specifically
discussed in our opinion, we affirm the Examining Attorney’s refusal to register
Applicant’s proposed mark under Section 2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s proposed mark is affirmed.