MLSListings, Inc.

Trademark Trial and Appeal Board

Mar 21, 2014

No. 85533959 (T.T.A.B. Mar. 21, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MLSListings Inc.
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Serial No. 85533959
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R. J. Herer, of Fenwick & West LLP for MLSListings Inc.

Gretta Yao, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell,
Managing Attorney).
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Before Bucher, Wellington, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
MLSListings Inc. (applicant) has appealed the refusal to register its application
for the mark MLS SOURCE, in standard characters for, as amended:
Matching consumers with real estate professionals in the
field of real estate services via computer network; real
estate advertising services; real estate marketing
services, namely, on-line services featuring tours of
residential and commercial real estate; advertising and
promotion database products and services for others
offered in the field of real estate available on a global
computer network and on individual web sites, namely,
dissemination of advertising for others via an online
communications network, rental of advertising space for
others on a global computer network, and dissemination
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of advertising matter for others regarding global
communication network and database services.1
Registration was refused pursuant to Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark is merely descriptive.
The refusal was made final in the Office action dated December 18, 2012. Applicant
has appealed the refusal.
The evidence in this case consists of the definitions of MLS and SOURCE2,
which were submitted by the examining attorney and a copy of the non-precedential
decision Sports Machine, Inc., dba BikeSource v. Midwest Mechandising, Inc., Canc.
No. 92030578, decided December 31, 2002, which was submitted by applicant.3
MLS is an acronym for “Multiple Listing Service,” which is:
a suite of services that enables brokers to establish
contractual offers of compensation (among brokers),
facilitates cooperation with other broker participants,
accumulates and disseminates information to enable

1 Application Serial No. 85533959, filed on February 3, 2012, based on Section 1(b) of the
Trademark Act (Intent-to-Use). When filed, the recitation of services included “providing
information, namely, real estate leads to real estate agents.” These services were
transferred to Application Serial No. 85978058 after applicant requested that current
application be divided. Applicant also filed a Statement of Use and then amended
Application Serial No. 85978058 to the Supplemental Register. The registration issued as
Registration No. 4284244 on January 29, 2013. The specimen submitted supporting use of
the MLS SOURCE mark is of record in the current application.
2 The examining attorney also submitted copies registrations from the USPTO’s TARR data
base evidencing issued registrations in which the term “SOURCE” was disclaimed. These
registrations have no probative value in our determination.
3 “Citation to non-precedential opinions are permitted, but not encouraged. Non-
precedential opinions are not binding on the Board.” See In re the Procter & Gamble
Company, 105 USPQ2d 1119, 1120-21 (TTAB 2012). See also TBMP §1203.02(f). In the
Sports Machine case, the Board found that plaintiff had failed to prove that defendant’s use
of for retail store outlets featuring bicycles was merely descriptive. Based on
that particular record, we noted that plaintiff, defendant and a number of third-parties
across the United States had long been using variations on the term Bike Source as source
indicators.
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appraisals, and is a facility for the orderly correlation and
dissemination of listing information to better serve
broker’s clients, customers and the public. A multiple
listing service’s database and software is used by real
estate brokers in real estate --- representing sellers under
a listing contract to widely share information about
properties with other brokers who may represent
potential buyers or wish to cooperate with a seller’s
broker in finding a buyer for the property or asset ---.
Definition from The Free Dictionary by Farlex, (emphasis added), exhibit to Office
action dated May 20, 2012. The examining attorney argues that MLS is descriptive
of applicant’s services, which applicant does not dispute, however, they disagree on
the framing of the issue on appeal. Applicant argues that the issue to be decided in
this appeal is “whether the word ‘source’ in [a]pplicant’s mark MLS SOURCE is
merely descriptive of the services recited in its application ---”4 The examining
attorney frames the issue as “whether the applicant’s mark is merely descriptive ---”
We agree with the examining attorney that to determine whether the mark is
merely descriptive within the meaning of Section 2(e)(1) of the Trademark Act, we
must look at the meaning of the mark in its entirety, MLS SOURCE and not merely
the word SOURCE.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. DuoProSS Meditech Corp. v. Inviro Medical Devices
Ltd., 695 F3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Abcor

4 Applicant also argues that the term “SOURCE when used to identify [applicant’s] services
is not even suggestive.”
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Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). On the
other hand, a mark is suggestive if, when the goods or services are encountered
under the mark, a multistage reasoning process, or the utilization of imagination,
thought or perception, is required in order to determine what attributes of the goods
or services the mark indicates. See, e.g., In re Abcor Development Corp, 200 USPQ
at 218 and In re Mayer-Beaton Corp., 223 USPQ 1347, 1349 (TTAB 1984).
A term need not immediately convey an idea of each and every specific feature of
the applicant’s goods or services in order to be considered to be merely descriptive;
rather, it is sufficient that the term describes one significant attribute, function or
property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely
descriptive is determined not in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it is being used on or in
connection with the goods or services, and the possible significance that the term
would have to the average purchaser of the goods or services because of the manner
of its use; that a term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The burden is on the United States Patent and Trademark Office to make a
prima facie showing that the mark in question is merely descriptive from the
vantage point of purchasers of an applicant’s goods. See In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir. 2005), citing In re Abcor Development;
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see also, In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1144 (Fed. Cir. 1987). This burden has been met.
Having determined the meaning of “MLS,” we now look at the meaning of
“SOURCE,” which enables us to determine the meaning of the entire mark “MLS
SOURCE.”
“Source” is defined as:
1. any thing or place from which something comes, arises,
or is obtained; origin.
2. the beginning or place of origin of a stream of river.
3. a book, statement, person, etc. supplying information.
4. the person or business making interest or dividend
payments.
5. a manufacturer or supplier.
Definition from Dictionary.com, exhibit to Office action dated May 20, 2012.
Applicant contends that in the initial Office action, the examining attorney
defined MLS as “multiple listing service” and SOURCE as “a book, statement,
person, etc. supplying information,” and then concluded that “MLS SOURCE taken
together merely describe [applicant’s] services of supplying information about
multiple real estate listings.” To overcome the refusal, applicant filed an
amendment to allege use of the mark in connection with the services of “providing
information, namely, real estate leads to real estate agents.” At the same time,
applicant filed a divisional application to place these services in a separate
application, which it amended to the Supplemental Register. The refusal was
continued with respect to the remaining service and in the final Office action, the
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examining attorney relying on the first definition of “source,” namely, “place from
which something comes, arises, or is obtained; origin,” stated that
“[t]he mark in its entirety conveys a clear understanding
of the services. Applicant’s services feature MLS, or
‘multiple listing service.’ A characteristic of applicant’s
services is that it is a place from which consumers provide
and/or obtain MLS, therefore SOURCE is descriptive of
the goods [sic].”
Office action dated December 18, 2012. In its reply brief, applicant reiterates that it
deleted the services of supplying information and argues that the examining
attorney’s argument does not reflect the deletion of the services. To the contrary,
the examining attorney “conflates the two meanings of ‘source’ as ‘a place’ and
‘supplying information’ by arguing that ‘a characteristic of [a]pplicant’s advertising
and marketing services is that the services provide a place from which information
on MLS data can be obtained.’” Given its deletion of the services of supplying
information, applicant contends that the examining attorney’s conclusion that
“SOURCE merely describes [a]pplicant’s services is not well taken.” We disagree.5
As noted above, Registration No. 4284244 (the “child” application of this “parent”
application) issued on the Supplemental Register on January 29, 2013, for the mark
MLS SOURCE in connection with “providing information, namely, real estate sales
leads to real estate agents.” This is the same result reached in three other MLS
SOURCE applications, also filed on February 3, 2012, all of which were filed as
ITU applications, and after AAUs were filed in mid-November 2012, each registered

5 While bound by the evidence of record, the Board is not bound by the examining attorney’s
arguments or the rationale therefor.
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in January 2013 on the Supplemental Register: Registration No. 4277490
(International Class 9); Registration No. 4277491 (International Class 42); and
Registration No. 4284150 (International Class 36).
The specimens in this application reveal that the services remaining in the
instant application cannot logically be separated from the services on which
applicant has already conceded descriptiveness of the term MLS SOURCE. The
International Class 35 services involved herein are inextricably related to the other
MLS SOURCE services in these four registrations on the Supplemental Register.
Furthermore, a single page of the specimens in this application demonstrate that
applicant uses the word “source” at least three times in its ordinary dictionary
sense, at 6:

For example, a real estate broker in Northern California wanting to reach a
specific audience with a highly-targeted advertising campaign, upon seeing MLS
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SOURCE will know immediately that applicant’s involved services arise from a sub-
set of the information contained in the MLS software and database. Such
knowledge will also be immediately conveyed with respect to applicant’s other
services, namely,
matching consumers with real estate professionals in the
field of real estate services via computer network; and
real estate marketing services, namely, online services
featuring tours of residential and commercial real estate.
In this context, the term MLS SOURCE immediately conveys to consumers6 a
significant feature of each of the above services that are recited in the application.
Simply put and taking wording from applicant’s own website, a “key feature” of
applicant’s services is possessing and relaying current “MLS source listing
information.” Accordingly, the mark MLS SOURCE is merely descriptive of a
feature of applicant’s services.
Accordingly, it was proper to refuse registration of all of the services in the
application pursuant to refused pursuant to Section 2(e)(1) of the Trademark Act,
on the ground that applicant’s mark is merely descriptive of applicant’s services.
Decision: The refusal to register is affirmed.

6 The definition of MLS clearly identifies the consumers of applicant’s services as “brokers.”