Open Access Technology International, Inc.Download PDFTrademark Trial and Appeal BoardJul 19, 2013No. 85480454 (T.T.A.B. Jul. 19, 2013) Copy Citation Mailed: July 19, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Open Access Technology International, Inc. ________ Serial No. 85480454 _______ Richard A. Arrett of Vidas, Arrett & Steinkraus PA for Open Access Technology International, Inc. Jordan A. Baker, Trademark Examining Attorney, Law Office 102 (Mitchell Front, Managing Attorney). _______ Before Bucher, Kuhlke, and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Open Access Technology International, Inc. filed, on November 23, 2011, an intent-to-use application to register the mark WEBSCHEDULERMOBILE (in standard characters) for “computer application software for mobile phones, handheld computers, and touchscreen devices, namely, software for transacting business which provides a comprehensive scheduling system designed for the electrical energy market, offering real-time validation of energy trading transactions (also known as "E-Tags") and fully complies THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85480454 2 with the North American Energy Standards Board (NAESB) electronic tagging requirements and specifications” in International Class 9. The trademark examining attorney refused registration under 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 of the identified goods. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. A term is deemed to be merely descriptive of services within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of a quality, characteristic, feature, function, purpose or use of the services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor Development, 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 applicant’s services in order to be considered merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and 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 services for which Serial No. 85480454 3 registration is sought, the context in which it is being used on or in connection with the services, and the possible significance that the term would have to the average purchaser of the services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he 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 or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). The record demonstrates that the composite terms of applicant’s mark, i.e., web, scheduler, and mobile, are each merely descriptive of the identified goods. As illustrated below, each term describes a prominent feature, purpose or application of applicant’s mobile phone software that provides a scheduling system feature. The term “Web” is a common abbreviation for World Wide Web, a “system of interlinked hypertext documents accessed via the internet.”1 This term describes a key feature of the software, namely, that it is web-based because it operates on or interacts with the internet. 1 Wikipedia (www.wikipedia.com), printouts attached to Office action dated January 3, 2012. Serial No. 85480454 4 As to the term “scheduler,” it is defined as a possible noun variation for either “schedule” defined as a noun meaning “a plan for performing work or achieving an objective” or the verb “to enter on a schedule.” Because we must consider this term in the context of the identified goods, namely, "software for transacting business which provides a comprehensive scheduling system designed for the electrical energy market, offering real-time validation of energy trading transactions,” it will immediately be understood by prospective consumers as describing the software’s ability to schedule business transactions or events. As further evidence of the descriptiveness of this term, the examining attorney submitted eighteen third-party registrations for marks containing the term SCHEDULER, with said term disclaimed or the entire mark registered on the Supplemental Register. Finally, as to the term “mobile,” it is defined in the context of “digital technology” as “pertaining to or noting a cell phone, usually one with computing ability, or a portable, wireless computing device used while held in the hand, as in mobile tablet; mobile PDA; mobile app.”2 In addition, the examining attorney submitted seven third- 2 Taken from the website Dictionary.com (www.dictionary.reference.com), based on the Random House Serial No. 85480454 5 party registrations for marks containing the term MOBILE with said term disclaimed thus indicating it to be merely descriptive of the identified software goods. When combined to form the proposed mark, each term retains its descriptive significance. A consumer encountering the mark in connection with software such as applicant’s will have no trouble understanding the goods as being for mobile devices, interacting with the Web (or internet) and performing a scheduling function. The combination of these descriptive terms, with or without a space, does not result in a non-descriptive mark or otherwise create any new meaning or unique commercial impression created by such combination. See In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation, and real estate listing services). In its brief, applicant’s main, if not only, argument is that the examining attorney’s evidence “actually supports registrability” and applicant points to a couple of the third-party registrations, containing the disclaimed Dictionary (2012). A printout was submitted with the July 31, 2012 Office action. Serial No. 85480454 6 term SCHEDULER, that were allowed to register despite being “three word marks, each term of the mark having a dictionary definition.”3 Brief, p. 3. However, as the examining attorney pointed out, those two registrations contained terms that were not determined to be descriptive and thus the marks, in their entirety, were not held to be descriptive. In any event, as the examining attorney also advised applicant, the Board is not bound by prior decisions of examining attorneys. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009). In sum, applicant’s proposed mark WEBSCHEDULERMOBILE is merely descriptive of the identified goods. Decision: The refusal to register is affirmed. 3 Applicant was specifically referencing the registered marks UNIVERSAL STAFF SCHEDULER (Reg. No. 1831947) and VISUAL STAFF SCHEDULER (Reg. No. 1947475). The two registrations are owned by the same entity, contain a disclaimer of STAFF SCHEDULER and are for “employee scheduling” software. Copy with citationCopy as parenthetical citation