This Opinion is Not a
Precedent of the TTAB
Mailed: April 14, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re October Three LLC
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Serial No. 86308797
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Mark D. Swanson of Pauley Petersen & Erickson,
for October Three LLC.
Darryl M. Spruill, Trademark Examining Attorney, Law Office 112,
Angela Wilson, Managing Attorney.
_____
Before Zervas, Greenbaum, and Goodman,
Administrative Trademark Judges.
Opinion by Goodman, Administrative Trademark Judge:
October Three LLC (“Applicant”) seeks registration on the Principal Register of the
mark O3 DAILY PLATFORM (in standard characters) for
Actuarial services; Financial administration of retirement
plans; Providing a web site that assists financial
professionals and plan sponsors in the management of
retirement accounts; Providing web-based administration
for the management of retirement accounts; Providing
information and advice in the field of finance, financial
investments, financial valuations, and the financial
aspects of retirement; Financial planning for retirement;
Financial services, namely, providing online stored value
accounts in an electronic environment; Automated and
online daily financial administration of retirement plans
Serial No. 86308797
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and retirement funds; Processing, administering and
managing employee benefit plans concerning insurance
and finance; Account and investment administration of
retirement funds; Providing a web-based portal for
providing daily valuation of participant retirement
accounts and real-time status information of plan value;
Providing a web-based online access portal for both
retirement plan participants and sponsors in the form of
single sign-on to view both defined benefit financial
retirement plans and defined contribution financial
retirement plans in one place in International Class 361;
and
Developing applications, software, and websites, for
financial companies in the field of retirement plans and
retirement benefits programs; Application service
provider, namely, managing applications, software, and
websites of others in the fields of retirement planning and
retirement benefits program management and
administration; Providing temporary use of online, non-
downloadable software and applications for use as a
calculation engine that links with custodians tying direct
account assets to interest credits in the fields of retirement
planning and retirement benefits program management
and administration in International Class 42.
In response to the Examining Attorney’s requirement of a disclaimer of the
assertedly unitary expression DAILY PLATFORM, Applicant has provided separate
disclaimers of “DAILY” and “PLATFORM.” The Examining Attorney denied
reconsideration of Applicant’s attempt to have the separate disclaimers entered in
lieu of a single, unitary disclaimer, and pursuant to Trademark Act Section 6(a), 15
U.S.C. § 1056(a), maintained the final refusal for Applicant’s failure to provide a
single disclaimer of DAILY PLATFORM.2 Applicant appealed to this Board.
1 Application Serial No. 86308797 was filed on June 13, 2014, based upon Applicant’s claim
of first use anywhere and first use in commerce on September 17, 2013.
2 April 7, 2015 Denial of Request for Reconsideration.
Serial No. 86308797
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We affirm the refusal to register, absent submission of the required disclaimer.
Evidentiary Matter
The Examining Attorney has objected to new arguments raised in Applicant’s
brief, and Applicant’s mention, in its brief, of its patent application. The patent
application is not of record, and the Board does not take judicial notice of USPTO
records such as patent applications. In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644
n.11. (TTAB 2011). Because the reference to the patent application therefore
constitutes mere argument without support in the record, we have given it no
consideration. As to new arguments raised by Applicant on appeal, but which are
based on evidence of record or applicable law, we find the Examining Attorney’s
objection to be without merit, as an applicant may raise new arguments with respect
to a ground for refusal. In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).
Applicable Law
Under Trademark Act Section 6(a), “[t]he Director may require the applicant to
disclaim an unregistrable component of a mark otherwise registrable,” such as a
component which is merely descriptive under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1). In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA
1975). (“The purpose of a disclaimer is to permit the registration of a mark that is
registrable as a whole but contains matter that would not be registrable standing
alone ….”). Failure to comply with a disclaimer requirement is a ground for refusal of
registration. See In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d
1262, 1264 (Fed. Cir. 2015); In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-
Serial No. 86308797
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1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089
(Fed. Cir. 2005); In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859,
1859 (Fed. Cir. 1987); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475-76 (TTAB 2007).
A term is deemed to be merely descriptive within the meaning of Section 2(e)(1),
if it forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987)); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need
not immediately convey an idea of each and every specific feature of the goods or
services in order to be considered merely descriptive; rather, it is sufficient that the
term describes one significant attribute, function or property of the goods or services.
In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982). As the case law reveals, the descriptive nature of a term or combination of
terms is a common basis for a required disclaimer.
Where a proposed mark consists of multiple words, the mere combination of
descriptive words does not necessarily create a nondescriptive expression. In re
Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (GROUP SALES
BOX OFFICE unregistrable for theater ticket sales services); In re Phoseon
Technology Inc., 103 USPQ2d 1822, 1826 (TTAB 2012) (SEMICONDUCTOR LIGHT
MATRIX merely descriptive for light curing systems and UV curing systems). If each
Serial No. 86308797
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component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive and
unregistrable. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004). On the other hand, if, a proposed mark comprising a combination of
merely descriptive components creates a unitary word or phrase with a unique,
nondescriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services, the mark is registrable. See In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (SUGAR & SPICE for “bakery products”);
In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983) (SNO-RAKE for “a snow removal
hand tool having a handle with a snow-removing head at one end, the head being of
solid uninterrupted construction without prongs”); see also In re EBS Data
Processing, 212 USPQ 964, 966 (TTAB 1981) (explaining composite versus unitary
mark in context of disclaimer requirement ). Likewise, when, as in the case at hand,
fewer than all the words in the mark are considered descriptive, so that a disclaimer
is required for the descriptive terms, if the applicant can establish that assertedly
unitary terms create a unique, nondescriptive or incongruous meaning, then no
disclaimer would be necessary.
Elements comprising a unitary expression should be considered together, as a
single unit. When the unregistrable unitary expression is a portion of a mark, it will
not be shielded from a disclaimer requirement simply because the expression is
unitary.3 If a unitary phrase consisting of individually descriptive components does
3 Similarly, when an entire mark comprises a unitary expression that is merely descriptive,
the mark will not be shielded from a refusal to register simply because the expression is
Serial No. 86308797
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not result in a combination presenting something more than the sum of its parts, then
the phrase is merely descriptive as a whole, and must be disclaimed as a whole. In re
Wanstrath, 7 USPQ2d 1412, 1413 (Comm'r Pats. 1987); see, e.g., In re Medical
Disposables Co., 25 USPQ2d 1801, 1804 (TTAB 1992) (MEDICAL DISPOSABLES is
a unitary expression that must be disclaimed in its entirety); American Speech-
Language-Hearing Ass'n v. National Hearing Aid Society, 224 USPQ 798, 804 n.3
(TTAB 1984) (CERTIFIED HEARING AID AUDIOLOGIST found to be “a unitary
expression that should be disclaimed in its entirety”).
When an Examining Attorney requires a disclaimer of a merely descriptive
phrase as a whole, individually disclaiming each component is improper because such
an expression is unitary and must be considered as a whole. Of course, an applicant
faced with such a requirement may argue that the terms are not unitary and
therefore may be disclaimed individually. Separate disclaimers of adjacent
components of a mark may be accepted where they do not form a grammatically or
otherwise unitary expression, and each component retains its separate descriptive
significance. In re Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006) (Board reversed
requirement of disclaimer of “SNAP ON 3000” in its entirety and accepted separate
disclaimers of descriptive phrase “SNAP ON” and model number “3000”).
unitary. In addition, unitary slogans that are generic, descriptive or merely informational
must be disclaimed in their entirety, or refused registration if there is no other registrable
matter. See e.g., In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir.
1999) (THE BEST BEER IN AMERICA for beer and ale so highly descriptive slogan could
not function as trademark).
Serial No. 86308797
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Discussion
Applicant seeks to register 03 DAILY PLATFORM. The Examining Attorney has
required Applicant to disclaim the exclusive right to use DAILY PLATFORM, apart
from the mark as shown, because DAILY PLATFORM is asserted to be a unitary
expression that is merely descriptive of Applicant’s identified services, and therefore
unregistrable.
To support the disclaimer requirement, the Examining Attorney relied on the
following definition of “PLATFORM” from the FREE ONLINE DICTIONARY OF
COMPUTING:4
Specific computer hardware, as in the phrase ‘platform-independent.’ It
may also refer to a specific combination of hardware and operating
system and/or compiler, as in ‘this program has been ported to several
platforms.’ It is also used to refer to support software for a particular
activity, as in ‘This program provides a platform for research into
routing protocols.’
The Examining Attorney also relied on the specimen of record which states “[a]nd
because the platform is fully automated, it can be significantly less costly to
administer.” As to “DAILY,” the Examining Attorney relied on Applicant’s
identification of services (i.e., “daily administration of retirement plans” and
“providing daily valuation of participant accounts and real time access”), and the
specimen of record, which states, in part:
Daily plan valuation. … the ability to administer the plan daily is by far
the preferred approach. … With 03 Daily Platform your plan can be
valued every single day. ...
4 www.foldoc.org, submitted with December 12, 2014 Final Office Action.
Serial No. 86308797
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In addition, the Board takes judicial notice of the following definition of “DAILY”
from the Merriam-Webster online dictionary:5
1 a : occurring, made, or acted upon every day
b : issued every day or every weekday
c : of or providing for every day
2 a : reckoned by the day
b : covering the period of or based on a day
It is the Examining Attorney’s position that “Applicant has acknowledged in two
(2) separate responses that each word is descriptive by submitting disclaimers of the
terms DAILY and PLATFORM. …”6 However, we do not treat Applicant’s submission
of separate disclaimers of “DAILY” and “PLATFORM” as an acknowledgment by
Applicant that each of the terms are merely descriptive, because the terms were
disclaimed under distinct circumstances. Cf. In re RiseSmart Inc., 104 USPQ2d 1931
(TTAB 2012) (disclaimer requirement not moot where applicant provided a disclaimer
of TALENT and JOB in the alternative but maintained that the terms are not merely
descriptive). Although an Applicant may be required to disclaim an unregistrable
component of a mark which otherwise is registrable, Section 6(a) of the Trademark
Act provides that an applicant may voluntarily disclaim a component of a mark
sought to be registered, and it has long been USPTO policy to allow an applicant to
5 www.merriam-webster.com. 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 have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375,
1377 (TTAB 2006).
6 6 TTABVUE 12.
Serial No. 86308797
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disclaim matter even if the USPTO would consider the mark to be registrable absent
the disclaimer. See Trademark Act Section 6(a), and In re MCI Communications
Corp., 21 USPQ2d 1534 (Comm'r 1991).
Accordingly, we do not agree with the Examining Attorney that Applicant’s
submission of the disclaimer “DAILY,” which Applicant states was made “[i]n an
attempt to promote efficient prosecution”7 is an acknowledgement by Applicant that
the term is descriptive. And while Applicant did not provide a reason for disclaiming
“PLATFORM,” none is required.8 Applicant’s statement on appeal that its provision
of separate disclaimers of “DAILY” and “PLATFORM” is “sufficient to protect the
public” is simply an acknowledgement that it does not intend to assert exclusive
rights to either word standing alone, and in this case, is not a concession of the
descriptiveness of each of these terms.9 See In re MCI Communications Corp., 21
USPQ2d at 1537. (“The purpose of a disclaimer is to show that the applicant is not
making claim to the exclusive appropriation of such matter except in the precise
relation and association in which it appears in the drawing and description.”) (citing
In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662 (CCPA 1979)). In sum, we do
not view the provided disclaimers as a concession of descriptiveness of the respective
terms.
7 August 25, 2014 Response to Office Action.
8 August 25, 2014 Response to Office Action; February 24, 2015 Request for Reconsideration.
9 4 TTABVUE 3.
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Nonetheless, based on the evidence of record, particularly Applicant's own
specimen, the identification of services, and the dictionary definition, we find that the
word “DAILY” is merely descriptive of Applicant’s services because a significant
feature or characteristic of Applicant’s services is that it provides “every day”
valuation and administration of cash value retirement plans. Further, the dictionary
definition and Applicant’s specimen establish that the word “PLATFORM” is merely
descriptive as it refers to a significant feature of Applicant’s services, namely, its web-
based portal and non-downloadable software that provides daily valuation of
participant retirement accounts through a calculation engine.
The remaining questions are (1) whether the combination of “DAILY” and
“PLATFORM” as used in Applicant’s mark creates, as the Examining Attorney
contends, a unitary phrase, and (2) whether when the terms are combined they
comprise a merely descriptive phrase. If the descriptive significance of the constituent
terms has been lost in the process of combination, then the combination may be
unitary but not descriptive.
Applicant’s position is that “[t]he collective term ‘Daily Platform’ is a ‘unitary
phrase’ … for Applicant’s new automated service for daily reconciliation of retirement
accounts” “that is more than the sum of its parts” and that separate disclaimers of
the terms “DAILY” and “PLATFORM” are sufficient.10 We do not view this statement
so much as an argument that the combined terms form a logically coherent phrase as
an argument that the combination creates a registrable composite, even if the
10 4 TTABVUE 6.
Serial No. 86308797
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individual terms may not be registrable because they are descriptive. This is borne
out by Applicant’s argument that one must conduct a multistage reasoning process
to connect the term DAILY PLATFORM to its services, noting that the Examining
Attorney in his December 3, 2014 Office Action stated that Applicant’s services are
‘“a DAILY use software PLATFORM.’” (emphasis supplied by Applicant).11 Applicant
further contends that the Examining Attorney has failed to meet his burden of proof
with respect to the mere descriptiveness of DAILY PLATFORM as a composite term.
Applicant points to the fact that the Examining Attorney has put no evidence in the
record showing descriptiveness of DAILY PLATFORM as a whole in connection with
reconciliation services, nor has he put in the record any evidence of competitors’
descriptive usage of DAILY PLATFORM.
While we agree with Applicant that DAILY PLATFORM is a unitary phrase, we
find that the combined term DAILY PLATFORM is a merely descriptive unitary
phrase or grammatical expression in which “DAILY” modifies “PLATFORM.” The
combination of these terms does not convey any meaning or connotation with respect
to the identified services that is different from the individual components “DAILY”
and “PLATFORM.” That is, when viewed in relation to Applicant’s services, the
individual components “DAILY” and “PLATFORM” retain their merely descriptive
significance when combined. No imagination or thought is required by a consumer to
discern the nature of Applicant's identified services, which include a web-based portal
11 4 TTABVUE 5.
Serial No. 86308797
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and non-downloadable software and applications for calculating and providing daily
retirement plan value.
We are unpersuaded by Applicant’s arguments regarding the absence in the record
of evidence of competitor use of the phrase DAILY PLATFORM, evidence of use of
the term in the field of retirement administration, or evidence of any use of the term
as a whole as demonstrating a lack of descriptiveness of DAILY PLATFORM. We note
that the Examining Attorney is not required to show such use in order to establish
that a term is merely descriptive. See In re Sun Microsystems Inc., 59 USPQ2d 1084,
1087 (TTAB 2001) (citations omitted). The fact that an applicant may be the first or
only user of a descriptive designation does not justify registration if that term is
merely descriptive. Id.12
12 In determining whether the phrase DAILY PLATFORM is merely descriptive, we have
given little probative value to the evidence of third-party registrations submitted by the
Examining Attorney that show disclaimers of the term “PLATFORM.” Although disclaimers
may be construed as evidence, albeit not conclusive, of descriptiveness of a term, the
registrations must involve disclaimers of the term in connection with similar goods or
services. See United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987) (third-
party registrations may show that a term has descriptive significance as applied to certain
goods or services). In this case, most of the registrations relate to non-downloadable software
in other fields, and while a few of the registrations appear related to Applicant’s financial
services, they are small in number and of limited probative value inasmuch as prior decisions
of other examining attorneys are not binding upon the Office and the Board must decide each
case on its own facts and record. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to
[applicant's] application, the PTO's allowance of such prior registrations does not bind the
board or this court.”). See also In re International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB
2000) (“With respect to third-party registrations which include disclaimers…we do not have
before us any information from the registration files as to why an Examining Attorney
required and/or why the applicant/registrant offered such disclaimers.”).
Serial No. 86308797
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Conclusion
In sum, we conclude that when used in connection with Applicant’s identified
services, DAILY PLATFORM immediately describes, without any kind of mental
reasoning, that Applicant provides an automated and online web-based platform and
non-downloadable software for daily plan valuation of financial retirement accounts.
Moreover, we find that DAILY PLATFORM is a merely descriptive unitary phrase,
expression, or term that must be disclaimed as a whole, rather than as to the
individual words separately.
Decision: We affirm the refusal under Trademark Act Section 6 based on
Applicant's failure to disclaim the merely descriptive unitary phrase DAILY
PLATFORM.
However, if Applicant submits the required disclaimer of DAILY PLATFORM to
the Board within thirty days, this decision will be set aside. 13 See Trademark Rule
2.142(g), 37 C.F.R. § 2.142.
13 A proper disclaimer should be worded as follows: “No claim is made to the exclusive right
to use DAILY PLATFORM apart from the mark as shown.”
