Patent & Trademark Services, Inc.

Trademark Trial and Appeal Board

Dec 9, 1998

No. 75009424 (T.T.A.B. Dec. 9, 1998)

Paper No. 13
JER
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB DEC. 9, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Patent & Trademark Services, Inc.
________
Serial No. 75/009,424
_______
Joseph H. McGlynn of Patent & Trademark Services, Inc. for
applicant.
Daniel P. Vavonese, Trademark Examining Attorney, Law
Office 109 (Deborah Cohn, Managing Attorney).
_______
Before Rice, Seeherman, and Walters, Administrative
Trademark Judges.
Opinion by Rice, Administrative Trademark Judge:
An application has been filed by Patent & Trademark
Services, Inc. to register, upon the Principal Register,
the mark PATENT & TRADEMARK SERVICES, INC. for services
identified as “legal representation in the area of
Intellectual Property administered by representing others
Ser. No. 75/009,424
2
before the Patent and Trademark Office and the Copyright
Office.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when used
in connection with the specified services, is merely
descriptive of them. Applicant has appealed. Both
applicant and the Examining Attorney have briefed the issue
before us. An oral hearing was not requested.
It is the position of the Examining Attorney that
based on applicant’s identification of services, it is
clear that applicant’s services will include representation
with respect to all types of intellectual property,
including patents and trademarks, and that PATENT &
TRADEMARK SERVICES, INC. is therefore merely descriptive of
a feature and purpose of the identified services, in that
applicant provides patent and trademark services by
representing others on patent and trademark issues before
the U.S. Patent and Trademark Office (“PTO”). In support

1 Application Serial No. 75/009,424, filed October 24, 1995,
asserting May 1995 as applicant’s date of first use and first use
in commerce. The specimens submitted with the application are
business cards bearing at their top, in dark letters, the
designation PATENT & TRADEMARK SERVICES, INC., and then, several
lines thereunder and in lighter letters, the name “Joseph H.
McGlynn,” the designation “Registered Patent Agent,” an address,
a telephone number, and a fax number.
Ser. No. 75/009,424
3
of the refusal to register, the Examining Attorney has made
of record printouts of portions of articles from the NEXIS
computerized data base of publication and newswire
information, and has asked that we take judicial notice of
a dictionary definition.
As to the Examining Attorney’s request that we take
judicial notice of a dictionary definition, namely, a
definition of the phrase “intellectual property,” it is
well settled that dictionary listings comprise matter of
which we can take judicial notice. See In re John Harvey &
Sons Ltd., 32 USPQ2d 1451 (TTAB 1994), and In re Analog
Devices, Inc., 6 USPQ2d 1808 (TTAB 1988), affirmed in
opinion not for publication, 10 USPQ2d 1879 (Fed. Cir.
1989). Accordingly, the Examining Attorney’s request is
granted, and we take judicial notice of the fact that the
phrase “intellectual property” is defined in the Random
House Compact Unabridged Dictionary (Special Second Edition
1996) as “Law. Property that results from original creative
thought, as patents, copyright material, and trademarks.”
The NEXIS printouts show the use of the designations
“patent and trademark services” and “patent services” in
the following contexts (emphasis added):2

2 Some of the story excerpts included by the Examining Attorney
appear to be from foreign publications or wire services. We have
Ser. No. 75/009,424
4
“…offering the intellectual property community
in Washington, DC, and Northern Virginia a
genuinely new and exciting way of accessing
patent and trademark services. The Patent
Store’s services will include U.S. and
International patent document delivery,
confidential expert search consultancy,…”—
from a story headlined “Rapid Patent opens
the Patent Store; Crystal City, VA,
documentation and information outlet” appearing
in the February, 1995 Information Today
“…negotiated between the two, including
factors such as productivity of the
Organization, cycle times, efficiency, cost
reduction, and innovative ways of delivering
patent and trademark services. The Secretary
would be able to reward efficient, effective
performance with a bonus… This workplace
flexibility is necessary if the Organization
is to hire needed employees quickly as the
need for patent and trademark services
increases.”—from an item headlined “TESTIMONY
September 14, 1995 BRUCE A. LEHMAN ASSISTANT
SECRETARY OF COMMERCE HOUSE JUDICIARY COURTS
AND INTELLECTUAL PROPERTY COMMERCE DEPARTMENT
DISMANTLING AND PATENT BILLS” appearing in
the September 14, 1995 Federal Document
Clearing House Congressional Testimony
“… inventors get patents for their products.
Currently, a bill is moving through the House
that would help to protect inventors from
worthless patent services. `These are very

given these stories little consideration. In the absence of
evidence of the extent of circulation, if any, of the foreign
publications in the United States, they cannot serve to show the
significance in this country of the designation at issue. See In
re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993), and In re Men’s
International Professional Tennis Council, 1 USPQ2d 1917 (TTAB
1986). Wire service stories are competent to show how their
authors used particular terms, but they are of limited probative
value since they are circulated primarily to newspapers and news
journals and, consequently, are not assumed to have influenced
the attitudes of prospective customers among the general public.
See In re Men’s International Professional Tennis Council, supra,
and In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992).
Ser. No. 75/009,424
5
serious frauds where people with very high
hopes can pay thousands and thousands of
dollars and get nothing in return,’ said…”—
from an article headlined “Getting Stuck Over
a Stick; FTC Says Inventor Paid Thousands for
`Worthless’ Patent Services” appearing in the
July 24, 1996 The Washington Post
“The last time we needed a copy of a patent
in a hurry, we paid a patent service firm
some $300 to have the claims and drawings
faxed to us; the client was delighted and
thought it was well worth the price.”—from
an article headlined “Web of the Week”
appearing in the July 19, 1996 Law Office
Technology Review
“Inventors who once had to travel to Washington
for patent services can skip the trip. The
Great Lakes Patent and Trademark Center, which
opens Monday in the Detroit Public Library’s
main…”—from an article headlined “Center brings
help to door of inventors” appearing in the
November 10, 1995 The Detroit News
“… on the Internet, successfully lobbied Vice
President Gore’s staff to direct the PTO, via
the OMB, to continue the Internet patent service
using PTO funds. … Commercial patent services:
Stay competitive. Re-engineer your operations
when necessary to keep your costs under control.”
--from an article headlined “More patents – lots
more – on the Internet” appearing in the
November, 1995 Searcher
A mark is merely descriptive if, as used in connection
with the goods or services in question, it immediately
conveys information about an ingredient, quality,
characteristic, feature, etc. thereof, or if it directly
conveys information regarding the nature, function,
purpose, or use of the goods or services. See In re Abcor
Ser. No. 75/009,424
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Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In
re American Screen Process Equipment Co., 175 USPQ 561
(TTAB 1972). A mark does not have to describe every
quality, feature, purpose, function, etc. of the goods or
services in order to be found merely descriptive; it is
sufficient for the purpose if the mark describes a single
significant quality, feature, function, etc. See In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, the question of whether a mark is merely
descriptive must be determined not in the abstract, that
is, not by asking whether one can guess, from the mark
itself, considered in a vacuum, what the goods or services
are, but rather in relation to the goods or services for
which registration is sought, that is, by asking whether,
when the mark is seen on the goods or services, it
immediately conveys information about their nature. See In
re Abcor Development Corp., supra, and In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985).
In the present case, it is clear that the phrase
PATENT & TRADEMARK SERVICES, INC. immediately conveys
information concerning characteristics or features of
applicant’s legal representation services, namely, that the
Ser. No. 75/009,424
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services are rendered with respect to patents and
trademarks, and that they are rendered by a corporation.
Applicant contends that its mark does not immediately
tell potential customers what applicant’s services are;
that copyrights, for example, are not mentioned in the
mark, but one of applicant’s services is procuring
copyrights. However, a mark need not describe all of the
goods or services for which registration is sought;
registration must be refused if (as is the case here) the
mark is merely descriptive of any of the goods or services
for which registration is sought. See In re Quik-Print
Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980).
Applicant also contends that PATENT & TRADEMARK
SERVICES, INC. is so broad that it would not convey to
anyone seeing it the thought of applicant’s services; that
in the patent, trademark, and copyright field there are a
plethora of services that may be performed; that in the
patent area “services” might include pre-examination
searches of the prior art, drafting a patent application,
preparing formal patent drawings, infringement searches,
validity searches, prosecution of the application in the
U.S. Patent and Trademark Office, appeals to the Board of
Patent Appeals and Interferences, prosecution of
interferences, etc.; that not all companies engaged in the
Ser. No. 75/009,424
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area of procuring protection for intellectual property by
representing others before the PTO perform all of these
services; that applicant’s mark gives no specific
description of the types of services that applicant
performs; and that therefore the mark cannot be said to be
merely descriptive.
However, as stated in In re Entenmann’s Inc., 15
USPQ2d 1750, 1751 (TTAB 1990), aff’d in opinion not for
publication, Appeal No. 90-1495 (Fed. Cir. February 13,
1991), “[w]hile it is true that in order to be held merely
descriptive, a term must describe with some particularity a
quality or ingredient of the product in question, it need
not describe it exactly.” Cf. In re Analog Devices Inc., 6
USPQ2d 1808, 1810 (TTAB 1988), aff’d in opinion not for
publication, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished)
(“However, while we readily concede that the category of
products which the term `analog devices’ names encompasses
a wide range of products in a variety of fields, we do not
believe this fact enables such a term to be exclusively
appropriated by an entity for products, some of which fall
within that category of goods.”). Here, PATENT & TRADEMARK
SERVICES, INC. describes significant aspects of applicant’s
services, and the fact that the phrase does not specify
exactly which patent and trademark services applicant
Ser. No. 75/009,424
9
offers does not mean that applicant is entitled to
exclusively appropriate the phrase. Apropos thereto,
applicant’s contention that the term “services” in the
phrase PATENT & TRADEMARK SERVICES, INC. is so broad that
the phrase cannot be held merely descriptive is
unpersuasive because the term “services” in the phrase does
not stand alone but rather is modified and defined by the
words “patent & trademark.”
Applicant also argues that PATENT & TRADEMARK
SERVICES, INC. is not merely descriptive because the
inclusion of the term “Inc.” indicates that the mark is
referring to a corporation that is the source of the
services, and not merely to a service provided by that
corporation. We agree with the Examining Attorney,
however, that the term “Inc.” in applicant’s mark does not
serve to identify the source of applicant’s services but
rather merely indicates the type of entity which performs
the services, and thus has no service mark significance.
See In re Industrial Relations Counselors, Inc., 224 USPQ
309 (TTAB 1984) [INDUSTRIAL RELATIONS COUNSELORS, INC.
incapable of functioning as a mark for conducting seminars
and research in the field of industrial relations; Board
attaches no trademark significance to the corporate
identifier “Inc.”]; In re E. I. Kane, Inc., 221 USPQ 1203
Ser. No. 75/009,424
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(TTAB 1984) [OFFICE MOVERS, INC. incapable of functioning
as a mark for moving services; addition of the term “Inc.”
does not add any trademark significance to matter sought to
be registered]; and In re Packaging Specialists, Inc., 221
USPQ 917 (TTAB 1984) [PACKAGING SPECIALISTS, INC. merely
descriptive of contract packaging services, etc.; the term
“Inc.” is recognized, in trademark evaluation, as having no
source indicating or distinguishing capacity].
For the foregoing reasons, we conclude that the phrase
PATENT & TRADEMARK SERVICES, INC., when used in connection
with the services specified in applicant’s application, is
merely descriptive of them within the meaning of Section
2(e)(1) of the Act.
Decision: The refusal to register is affirmed.
J. E. Rice
E. J Seeherman
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
And Appeal Board
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