Nintex UK Ltd.

Trademark Trial and Appeal Board

Aug 17, 2018

No. 87172356 (T.T.A.B. Aug. 17, 2018)

Mailed: August 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nintex UK Ltd.
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Serial Nos. 86665633 and 87172356
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Brian E. Lewis and Eugene Beliy of Rosen Lewis, PLLC,
for Nintex UK Ltd.
Keyla Gandara, Trademark Examining Attorney, Law Office 117,
Travis D. Wheatley, Acting Managing Attorney.
_____
Before Bergsman, Greenbaum, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Nintex UK Ltd. seeks registration on the Principal Register of
WORKFLOW AS A SERVICE (in standard characters; “AS A SERVICE” disclaimed)
in applications Serial Nos. 866656331 (the “’633 Application”) and 871723562 (the

1 Filed June 17, 2015. On May 3, 2016, original applicant Nintex Pty. Ltd. assigned the
application to Applicant “together with that portion of its business relating to the mark[ ]
and the goodwill appurtenant thereto.” See Trademark Act Section 10(a)(1), 15 U.S.C.
§ 1060(a)(1). Assignment recorded with the USPTO Assignment Recordation Branch on
May 31, 2016 at Reel/Frame 5802/0790.
2 Filed September 15, 2016.
This Opinion Is Not a
Precedent of the TTAB
Serial Nos. 86665633 and 87172356
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“’356 Application”). Both applications were filed under Trademark Act Section 1(b),
15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the
mark in commerce. The applications recite the following overlapping services in
International Class 42:
Software as a service (SAAS) services, namely, hosting
software for use by others [and]3 for use by enterprises in
automating and managing business processes, and
facilitating communications and creating forms,
documentation and reports relating thereto; maintenance
services for computer software for use by enterprises in
automating and managing business processes, facilitating
communication and creating forms, documentation and
reports relating thereto; technical support services for
computer software, namely, technical advice relating to
installation, use and customization of computer software
for use by enterprises in automating and managing
business processes, facilitating communication and
creating forms, documentation and reports relating
thereto.
The ’356 Application also identifies the following goods in International Class 9:4
Downloadable computer software, namely, software for use
by enterprises for automating and managing business
processes, and facilitating communications and creating
forms, documentation and reports relating thereto.
In each case, the assigned Trademark Examining Attorney refused registration
under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that the
applied-for matter is merely descriptive of Applicant’s goods and services. After the

3 The word “and” appears only in the ’356 Application. The recitations of services otherwise
are identical. We find that the presence or absence of the word “and” in these recitations does
not create a material distinction between them.
4 Although the applied-for terms are identical, because the ’356 Application identifies goods
as well as the overlapping services, the applications would not result in duplicate
registrations. See Trademark Rule 2.48, 37 C.F.R. § 2.48; TMEP § 703 (Oct. 2017).
Serial Nos. 86665633 and 87172356
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Examining Attorney made each refusal final, Applicant timely appealed.5 In an order
dated April 13, 2018, before the Examining Attorney filed her statement, the Board
granted her motion to consolidate the appeals. 7 TTABVUE (both applications).
We have considered all arguments and evidence filed in each case. We affirm the
refusal to register as to each application.
I. Procedural Matter
With respect to the ’633 Application, the refusal to register under Section 2(e)(1)
was made not during initial examination, but on review of Applicant’s Statement of
Use. Applicant argues that the refusal was improperly issued because it is of the type
that “could or should have been made” during initial examination, relying on TMEP
§§ 704.01, 706.01,6 1106.02, 1109.07, and 1109.08. See Appeal Brief at 3-4, 4
TTABVUE 4-5 (’633 Application).
TMEP § 706 (Oct. 2017) instructs that:
If in the first Office action an examining attorney
inadvertently failed to refuse registration on a clearly
applicable ground or to make a necessary requirement, the
examining attorney must take appropriate action to correct
the inadvertent error in a subsequent action.
The Examining Attorney contends that the refusal was properly issued because
Applicant filed its Statement of Use more than a year after the ’633 application was

5 The ’633 application was reassigned to Ms. Gandara, who had been assigned the ’356
application, and who issued both Aug. 28, 2017 Final Office Actions.
6 TMEP § 706.01 provides, inter alia, that while it is the policy of the USPTO to conduct a
complete examination upon the initial review of an application, the USPTO will issue a
refusal or requirement in a subsequent Office Action “to prevent the issuance of a registration
that would violate the Trademark Act or applicable rules.”
Serial Nos. 86665633 and 87172356
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approved for publication. She states: “Thus, a significant length of time, especially in
a constant ever changing [sic] industry such as the technology industry, had elapsed
since the initial examination.” Examiner’s Brief, 8 TTABVUE 13 (both applications).
She cites TMEP § 1102.01, which provides:
Where a significant length of time has elapsed since the
initial examination, a mark may have become descriptive
or even generic with respect to the goods/services. In such
a case, since the evidence of the descriptive or generic use
would not have been available during initial examination,
the requirement or refusal must be issued during second
examination.
On appeal, the Board reviews only the correctness of an underlying substantive
refusal. We do not consider any arguments regarding whether a refusal is
procedurally deficient based on its timing. In re Greenliant Sys. Ltd., 97 USPQ2d
1078, 1080 n.3 (TTAB 2010); cf. In re Driven Innovations, 115 USPQ2d 1261, 1264
(TTAB 2015) (holding that “the only way an applicant may challenge a refusal that
was issued during examination of the statement of use under the clear error standard
is by appealing the merits of that final refusal to the Board”), rev’d on other grounds,
674 Fed. Appx. 996 (Fed. Cir. 2017). We note only that, “although the USPTO does
have a policy that all possible refusals and requirements should be issued in the first
Office action, doing so is not a requirement of statute or regulation, and the Office
has the inherent discretion to issue a requirement or refusal that it finds is correct at
any stage in the prosecution of an application.” Driven Innovations, 115 USPQ2d at
1265.
Serial Nos. 86665633 and 87172356
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For these reasons, we do not decide the procedural question raised by Applicant
concerning the ’633 Application. Instead, we turn to the merits of the substantive
refusal of both applications.
II. Mere Descriptiveness
A term is merely descriptive if it immediately conveys knowledge of an ingredient,
quality, feature, function, characteristic, purpose, or use of the goods or services with
which it is used. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Well Living Lab Inc., 122 USPQ2d 1777,
1779 (TTAB 2017).
Whether a term is merely descriptive is determined in relation to the goods or
services for which registration is sought, the context in which it is used, and the
possible significance the term would have to the average consumer because of the
manner of its use or intended use. In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d
1574, 1575 (Fed. Cir. 2015); Chamber of Commerce, 102 USPQ2d at 1219. “The major
reasons for not protecting [merely descriptive] marks are . . . to maintain freedom of
the public to use the language involved, thus avoiding the possibility of harassing
infringement suits by the registrant against others who use the mark when
advertising or describing their own products.” In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978).
A. Meaning of the Proposed Mark
Applicant’s proposed mark is WORKFLOW AS A SERVICE. The record includes
the following definition of “workflow,” submitted by both Applicant and the
Examining Attorney: “software designed to improve the flow of electronic documents
Serial Nos. 86665633 and 87172356
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around an office network, from user to user.”7 Similarly, Applicant’s website defines
a “workflow” as “a business process where tasks, information, or content moves from
one person to another for action, according to a set of rules.”8 Applicant has described
itself in marketing materials as “the leader in workflow automation.”9
Based on this evidence, we find that WORKFLOW immediately conveys software
designed to improve the flow of electronic documents when considered in relation to
the following services recited in the applications:
Software as a service (SAAS) services, namely, hosting
software for use by others [and] for use by enterprises in
automating and managing business processes, and
facilitating communications and creating forms,
documentation and reports relating thereto
and also in relation to Applicant’s identified goods:
Downloadable computer software, namely, software for use
by enterprises for automating and managing business
processes, and facilitating communications and creating
forms, documentation and reports relating thereto.
The remainder of the applied-for mark, AS A SERVICE, appears in Applicant’s
recitation, underscoring that it merely describes those services. In addition,
Applicant submitted a Wikipedia.org article defining “software as a service” as “a
software licensing and delivery model in which software is licensed on a subscription

7 ’633 Application, March 13, 2017 Office Action at TSDR 2 and July 24, 2017 Response to
Office Action at TSDR 17; ’356 Application, Dec. 22, 2016 Office Action at TSDR 2 and June
19, 2017 Response to Office Action at TSDR 14 (macmillandictionary.com/dictionary/
american/workflow).
8 ’356 Application, Dec. 22, 2016 Office Action at TSDR 5 (nintex.com/workflow-automation/
why-choose-workflow-automation).
9 ’633 Application, Specimen at TSDR 5-6 (news release from PR Newswire).
Serial Nos. 86665633 and 87172356
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basis and is centrally hosted,”10 demonstrating the descriptiveness of the phrase in
conjunction with Applicant’s related downloadable computer software. The article
shows that the phrase “as a service” is used descriptively in association with a variety
of goods and services in Applicant’s field:
The term “software as a service” (SaaS) is considered to be
part of the nomenclature of cloud computing, along with
infrastructure as a service (IaaS), platform as a service
(PaaS), desktop as a service (DaaS), managed software as
a service (MSaaS), mobile backend as a service (MBaaS),
and information technology management as a service
(ITMaaS).11
The evidence summarized infra demonstrates that the phrase “as a service” also has
been extended to “workflow as a service.”
The record shows that the components of the phrase Applicant seeks to register
are merely descriptive, and we find that they retain the same descriptive significance
in combination. Considered as a whole, WORKFLOW AS A SERVICE thus forms a
composite that itself is merely descriptive. See, e.g., DuoProSS Meditech Corp. v.
Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012)
(finding SNAP SIMPLY SAFER merely descriptive for cannulae, needles, and
syringes); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016)
(finding HOUSEBOAT BLOB merely descriptive of inflatable float mattresses).

10 ’633 Application, July 24, 2017 Response to Office Action at TSDR 19; ’356 Application,
June 19, 2017 Response to Office Action at TSDR 16 (en.wikipedia.org/wiki/
Software_as_a_service).
11 Id.
Serial Nos. 86665633 and 87172356
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Moreover, the Examining Attorney submitted evidence that third parties use the
phrase WORKFLOW AS A SERVICE descriptively in association with software and
software as a service. This evidence includes the following examples, among others:
• An article with an abstract beginning: “Recently, we have witnessed
workflows from science and other data-intensive applications emerging on
Infrastructure-as-a-Service (IaaS) clouds, and many workflow service
providers offering workflow-as-a-service (WaaS).” The introduction to the
article explains that: “This has formed a new software-as-a-service model
for hosting workflows in the cloud, and we refer [to] it as Workflow-as-a-
Service (WaaS).”12
• A discussion of automated workflow applications titled, “Is ‘Workflow-as-a-
Service’ Right For Your Business?”13
• An FAQ response stating that the Mistral task management service “is also
known as Workflow as a Service.”14
Based on all the evidence of record, we find that WORKFLOW AS A SERVICE,
considered as a whole, immediately conveys knowledge about the function and
purpose of Applicant’s goods and services.
B. Applicant’s Arguments on Appeal
Applicant essentially makes two substantive arguments against the refusals:
first, that the phrase it seeks to register is suggestive rather than descriptive; and
second, that third-party use of the subject phrase demonstrates that it has an
incongruent meaning. We address each of these arguments in turn.

12 Aug. 28, 2017 Final Office Action at TSDR 2 (’633 Application) and TSDR 35 (’356
Application), Amelie Chi Zhou et al., Monetary Cost Optimizations for Hosting Workflow-as-
a-Service in IaaS Clouds, proof from IEEE TRANSACTIONS ON CLOUD COMPUTING
(pdcc.ntu.edu.sg/xtra/paper/2015Pub/TCC2404807.pdf).
13 ’633 Application, March 13, 2017 Office Action at TSDR 9; ’356 Application, Dec. 22, 2016
Office Action at TSDR 36-38 (infinityinc.us/is-workfow-as-a-service-right-for-your-business/).
14 ’633 Application, March 13, 2017 Office Action at TSDR 11; ’356 Application, Dec. 22, 2016
Office Action at TSDR 44 (wiki.openstack.org/wiki/Mistral).
Serial Nos. 86665633 and 87172356
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First, Applicant argues that WORKFLOW AS A SERVICE “is, at best, rather
nebulous,” stemming in part from varying definitions of the word “workflow.” Appeal
Brief at 5, 4 TTABVUE 6 (’633 Application); id. at 4, 4 TTABVUE 5 (’356 Application).
“Combining this with the other part, ‘as a service,’ creates a nebulous and
incongruent meaning that hints at, rather than describes, the associated goods and
services.” Id. Customers will require two mental pauses to choose from possible
definitions of “workflow” and infer a parallel to “software as a service,” Applicant
argues, thereby reaching the meaning of the applied-for phrase. Id. at 5-6, 4
TTABVUE 6-7 (’633 Application); id. at 4, 4 TTABVUE 5 (’356 Application).
This argument is not persuasive because descriptiveness determinations are
made not in the abstract, but in relation to the identified goods and services. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re
United Trademark Holdings, Inc., 122 USPQ2d 1796, 1798 (TTAB 2017). “The
question is not whether someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey information about them.”
DuoProSS, 103 USPQ2d at 1757 (quotation omitted); In re Canine Caviar Pet Foods,
Inc., 126 USPQ2d 1590, 1598 (TTAB 2018). We find that consumers who know that
Applicant intends to offer what is essentially identified in the applications as software
and software as a service for improving business workflow will understand
WORKFLOW AS A SERVICE to convey information about the function and purpose
of those goods and services.
Serial Nos. 86665633 and 87172356
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For the same reason, it is not dispositive even if third parties use “‘workflow as a
service’ in reference to a wide variety of different types of software and software
concepts,” as Applicant argues. Appeal Brief at 7, 4 TTABVUE 8 (’633 Application);
id. at 6, 4 TTABVUE 7 (’356 Application). A phrase need not have a “single accepted
meaning” to be merely descriptive. Id. “[I]t is well settled that so long as any one of
the meanings of a term is descriptive, the term may be considered to be merely
descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018)
(quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). That a term may
have different meanings in other contexts is not controlling. See In re ActiveVideo
Networks, Inc., 111 USPQ2d 1581, 1587 (TTAB 2014).
III. Conclusion
Applicant correctly observes that any doubt as to mere descriptiveness must be
resolved in its favor. See Appeal Brief at 9, 4 TTABVUE 10 (’633 Application); id. at
8, 4 TTABVUE 9 (’356 Application). But in this case, we have no doubt. See, e.g.,
ActiveVideo Networks, 111 USPQ2d at 1605.
Based on careful consideration of all the record evidence, we find that
WORKFLOW AS A SERVICE is merely descriptive in association with the goods
identified in the ’356 Application and the following services recited in each
application:
Software as a service (SAAS) services, namely, hosting
software for use by others [and] for use by enterprises in
automating and managing business processes, and
facilitating communications and creating forms,
documentation and reports relating thereto.
Serial Nos. 86665633 and 87172356
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The applied-for matter immediately conveys knowledge of the function and purpose
of the goods and services with which they will be used. Specifically, the phrase
immediately conveys that Applicant intends to offer software and software as a
service for improving workflow.
Decision: The refusal to register pursuant to Trademark Action Section 2(e)(1) is
affirmed as to each application.