Patent Bots LLC

Trademark Trial and Appeal Board

Sep 8, 2020

88142672 (T.T.A.B. Sep. 8, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: September 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Patent Bots LLC
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Serial No. 88142672
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Abraham Lichy of The Lichy Law firm, P.C.,
For Patent Bots LLC.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Zervas, Kuczma and English,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Patent Bots LLC (“Applicant”) seeks registration on the Principal Register of the
proposed standard character mark PATENT BOTS for the following International
Class 42 services:
Providing a web site featuring technology that enables
users to process patents and patent applications and find
errors and mistakes in patents and patent applications;
Providing a web site featuring technology that enables
users to obtain information, analytics, and statistics about
patent examiners; Providing a website that gives computer
users the ability to process patents and patent applications
and find errors and mistakes in patents and patent
applications; Providing a website that gives computer
Serial No. 88142672
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users the ability to obtain information, analytics, and
statistics about patent examiners; Providing an interactive
website featuring technology that allows users to process
patents and patent applications and find errors and
mistakes in patents and patent applications; Providing an
interactive website featuring technology that allows users
to obtain information, analytics, and statistics about
patent examiners.1
The Examining Attorney refused registration of Applicant’s proposed mark,
having determined that PATENT BOTS is merely descriptive of a characteristic,
feature, purpose or function of Applicant’s identified services under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1).
After the refusal was made final, Applicant filed a request for reconsideration, and
soon thereafter filed an appeal. The Board suspended the appeal and remanded the
application to the Examining Attorney for consideration of the request for
reconsideration. The Examining Attorney denied the request for reconsideration, the
appeal was resumed and Applicant and the Examining Attorney filed briefs.2 We
affirm the refusal to register.
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

1 Application Serial No. 88142672 was filed on October 4, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming first use and first use in commerce on March
1, 2018.
2 Applicant is reminded that briefs are to be double-spaced, not single-spaced. Trademark
Rule 2.126(a)(1), 37 C.F.R. § 2.126(a)(1). In addition, all pages are to be numbered.
Trademark Rule 2.126(a)(5), 37 C.F.R. § 2.126(a)(1).
Serial No. 88142672
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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 BetaBatt, Inc., 89 USPQ2d 1152, 1154 (TTAB 2008) (citing
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 Sys., Inc., 209
USPQ 165, 166 (TTAB 1980).
Whether a mark is merely descriptive is determined in relation to the goods or
services 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 [or
services] 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 [or services] because of the manner of its use or intended use.”3 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
and services are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d

3 For this reason, Applicant’s argument that under the Examining Attorney’s logic, the
proposed mark would be descriptive of certain services not mentioned in the identification of
services is not persuasive.4 TTABVUE 3.
Serial No. 88142672
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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
or services, 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 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation and real estate listing services).
“A mark may be merely descriptive even if it does not describe the ‘full scope and
extent’ of the applicant’s goods or services.” In re Oppedahl & Larson, 71 USPQ2d at
1371 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001)). It is enough if a mark describes only one significant function,
attribute, or property. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219.
It is not necessary to find the term merely descriptive for each and every service
listed in the application. If a term is held descriptive for any of the services identified
in a class of the involved application, registration is properly refused as to the entire
Serial No. 88142672
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class. See In re Sterotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
(quoting In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA 1975) (“Our
predecessor court ... has stated that ‘registration should be refused if the mark is
descriptive of any of the goods for which registration is sought”‘)); In re Quik-Print
Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).4
A. Evidence.
The record includes the following evidence:
Definition of “patent”:
● Merriam Webster Dictionary5
(Entry 1 of 3)
2 : of, relating to, or concerned with the granting of
patents especially for inventions
// a patent lawyer
// patent law
(Entry 2 of 3)
1 : an official document conferring a right or
privilege : LETTERS PATENT
2 a : a writing securing for a term of years the right
to exclude others from making, using, or selling an
invention

4 For this reason, Applicant’s argument (4 TTABVUE 3) that its website is interactive and
requires a human component and hence cannot be a “bot” is unpersuasive – not all of its
identified services specify interactivity, including those which we consider in deciding this
appeal. See discussion infra.
5 January 16, 2019 Office Action, TSDR 2-3.
Serial No. 88142672
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Definition of “bot”:
● Oxford Learner’s Dictionaries6
a computer program that runs automated tasks over
the internet
● Merriam Webster Dictionary7
1 : ROBOT
2 a : a computer program that performs automatic
repetitive tasks
…
3 : a computer program or character (as in a game)
designed to mimic the actions of a person
Third-Party Registrations:

Both Applicant and the Examining Attorney submitted registrations for marks
containing the term BOT. The ten registrations submitted by the Examining
Attorney for marks such as RECRUITERBOT and PRODUCTION BOT for software,
hardware and software related services are Supplemental Register registrations, or
Principal Register registrations which contain disclaimers of BOT. The 13 Principal
Register registrations submitted by Applicant are for single-term marks such as
DOCUBOT and TUNEBOT for software or for software related services and do not
contain disclaimers or claims of acquired distinctiveness of BOT.

6 https://www.oxfordlearnersdictionaries.com/us/definition/english/bot, January 29, 2020
Office Action, TSDR 36.
7 January 16, 2019 Office Action, TSDR 12.
Serial No. 88142672
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Applicant’s webpages:
The Examining Attorney submitted several of Applicant’s webpages which
generally discuss Applicant’s proofreading services, one of which states in relevant
part:8
Our subscriptions for automatic patent proofreading of
applications and office action responses will reduce errors
and save you time. We find claim numbering errors,
antecedent basis errors, claim words without support,
inconsistent use of reference labels, and more. Our
intuitive user interface makes it easy to understand and
diagnose errors.
B. Analysis
The Examining Attorney argues that “the individual components of the proposed
mark and combination of terms, in the context of the applicant’s services, merely
describes the applicant’s website technology services relating to patent applications,
proofreading of patent applications, and information concerning patent examiners.”9
Applicant’s services no doubt pertain to patents and concern the patent field. Its
identification of services specifically states that the services involve patents, patent
applications and patent examiners. The term PATENT is thus at least merely
descriptive of a feature or characteristic of Applicant’s services.10

8 January 29, 2020 Office Action, TSDR 30.
9 Examining Attorney’s brief, 6 TTABVUE 5.
10 The fact that the proposed mark contains the term PATENT and the services involve, inter
alia, information on patent examiners does not persuade us that PATENT does not identify
an aspect of the services, as Applicant maintains. 4 TTABVUE 3. The term may also refer to
the field of patents. As previously noted, “patent” is defined as “of, relating to, or concerned
with the granting of patents especially for inventions // patent lawyer // patent law.”
January 16, 2019 Office Action, TSDR 2.
Serial No. 88142672
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With regard to the term BOT (or BOTS in the plural form), the most relevant
definition mentioned above is “a computer program that runs automated tasks over
the internet.”11 There is no limitation as to what tasks the computer program may
perform, and the definition certainly is broad enough to encompass automated tasks
in the patent field. In connection with this inquiry, we consider the broadest of
Applicant’s services set forth in its identification, i.e.:
Providing a web site featuring technology that enables
users to process patents and patent applications and find
errors and mistakes in patents and patent applications;
Providing a web site featuring technology that enables
users to obtain information, analytics, and statistics about
patent examiners.
With regard to the “automated tasks” component of the definition of “bot,” the
Examining Attorney finds Applicant engages in automated tasks, focusing on the
“automated proofreading” mentioned on Applicant’s webpages. “Applicant’s website
… describes other features which appear to be [automatic] in nature,”12 listing:
• Our subscriptions for automatic patent proofreading of
applications and office action responses will reduce errors
and save you time.
• No human will see your patent[.]

11 A broader definition of “bot” from Webster’s New World College Dictionary (5th ed. 2014) is
“a computer program that executes a specific task according to the user’s instructions.” We
take judicial notice of this definition. 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 (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).
12 Examining Attorney’s brief, 6 TTABVUE 5.
Serial No. 88142672
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• We process your application in seconds and immediately
discard it.13
(emphasis in the original; citations to the record omitted).
Based on the identification of services, the definitions of “bot” and the contents of
Applicant’s website, we are persuaded that Applicant’s services involve technology
(consisting of software) that can run automated tasks over the Internet (through
Applicant’s website, of course).
We now turn to the dueling third-party registrations cited by Applicant and the
Examining Attorney which are essentially equal in number. Applicant does not
challenge the probative value of the third-party registrations relied on by the
Examining Attorney. The Examining Attorney, however, distinguishes the Principal
Register registrations submitted by Applicant, maintaining that these registrations
do not contain disclaimers because the registered marks have a suggestive non-BOT
component, are for single-term marks and contain “telescoped” marks.14 The
Examining Attorney also maintains that the identified services in these registrations
do not have “an automated component.”15 These are valid points regarding
Applicant’s third-party registrations.
While the third-party registrations introduced into the record by the Examining
Attorney are not definitive on the issue of descriptiveness, they at least suggest that
the term BOT (or BOTS) is not a distinctive source indicator for Applicant’s services,

13 Id.
14 Id., 6 TTABVUE 7.
15 Id.
Serial No. 88142672
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especially when considered in connection with the Examining Attorney’s other
evidence, including the dictionary definitions and the Applicant’s webpages. In any
event, the probity of both Applicant’s and the Examining Attorney’s third-party
registrations is limited because each case must be decided on its own merits and on
the basis of its own record, in accordance with relevant statutory, regulatory and
decisional authority. See, e.g., In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51
USPQ2d 1513 (Fed. Cir. 1999); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB
1986) (“Section 20 of the Trademark Act, 15 USC §1070, gives the Board the authority
and duty to decide an appeal from an adverse final decision of the Examining
Attorney. This duty may not and should not be delegated by the adoption of
conclusions reached by Examining Attorneys on different records.”).
Applicant also argues that “bot” is defined as a computer program that performs
automatic repetitive tasks, Applicant’s services are for providing a website, not for
computer software, and “while there may be a technological component contained on
its website, this creates a multi-step process to arrive at the conclusion that ‘Bots’ is
descriptive of a service which is for providing a website, and therefore cannot be found
to be descriptive.”16 Other definitions of “bot” do not require that the tasks be
repetitive, and Applicant’s recitation of services specifies that the website features
technology — and such technology, of course, can include software. Further, in view
of the definition of “bot” and Applicant’s promotion of its services as performing an

16 4 TTABVUE 3.
Serial No. 88142672
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“automatic” function, we do not agree that a multi-step process is needed to arrive at
the conclusion that BOTS is descriptive of a feature of Applicant’s identified services.
Turning now to the combination of the terms PATENT and BOTS, Applicant
argues that “it would be a leap of the imagination for a consumer to perceive the two
terms that make up the mark and arrive at a conclusion that they represent any
[specific software] applications” and that the combination “is not descriptive but is
suggestive of a website featuring technology that relates to patents.”17 The evidence
demonstrates that PATENT is broadly defined as “of, relating to, or concerned with
the granting of patents” and BOTS indicates that the services entail the use of a
software which runs automated tasks over the Internet. The combination of PATENT
and BOTS does not evoke a new and unique commercial impression but retains the
meaning of the two component terms, and Applicant has not identified any new and
unique commercial impression. We thus find that each component retains its merely
descriptive significance in relation to the services and consumers will make this
realization without any imagination or thought. The proposed mark PATENT BOTS
for Applicant’s claimed services therefore is merely descriptive of a feature or
characteristic of such services, namely, that the services are in the patent field and
use a software program which performs automated tasks over the Internet.
Decision: The refusal to register Applicant’s proposed mark is affirmed.

17 4 TTABVUE 4.