Photogrefer.com Inc.

Trademark Trial and Appeal Board

Mar 9, 2015

No. 85838184 (T.T.A.B. Mar. 9, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Photogrefer.com Inc.
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Serial No. 85838184
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Matthew H. Swyers,
for Photogrefer.com Inc.
Brittney L. Cogan, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Quinn, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Photogrefer.com Inc. (“Applicant”) seeks registration on the Principal Register of
the mark PHOTOGREFER (in standard characters) for
Online advertising and marketing services; online
advertising services for others; providing online referrals
in the field of photography in International Class 35.1
The Trademark Examining Attorney refused registration of Applicant’s mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that

1Application Serial No. 85838184 was filed on February 1, 2013, based upon Applicant’s
claim of first use anywhere and first use in commerce on November 27, 2012.
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Applicant’s mark is merely descriptive. When the Examining Attorney made the
refusal final, Applicant appealed. We affirm the refusal to register.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. DuoProSS Meditech Corp. v. Inviro Medical Devices
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
Whether a term is merely descriptive is determined not in the abstract, but in
relation to the services for which registration is sought, the context in which it is
being used 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; that a term may have other meanings in different contexts is not
controlling. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007));
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
While correctly acknowledging the test for determining descriptiveness,
Applicant asserts that its mark is not merely descriptive because “[i]n the context of
the Lanham Act, ‘merely’ descriptive means ‘only’ descriptive.” Appeal Brief, p. 6, 4
TTABVUE 7. Applicant misinterprets the Court of the Custom and Patent Appeals’
decision, In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA
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1980), wherein the Court stated “[i]n this context, ‘merely’ is considered to mean
‘only.’” Quik-Print Copy Shops, at 507 including fn 7. In other words, the Court
concluded that a mark is only descriptive if it immediately conveys to one seeing or
hearing it knowledge of the ingredients, qualities, or characteristics of the goods or
services with which it is used and not that to be merely descriptive a mark can only
convey knowledge of the ingredients, qualities, or characteristics of the goods or
services.
Applicant’s services include “providing online referrals in the field of
photography.” The record establishes that in fact all of Applicant’s services relate to
the field of photography and that the word “photographer” describes both a feature
and purpose of the services, namely to promote photographers and to obtain the
services of a photographer. The Examining Attorney introduced evidence from
Applicant’s website, which clearly indicates the nature of the services:

Office Action dated May 10, 2013; and
Serial No. 85838184
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Office Action dated January 28, 2014.
Applicant’s mark PHOTOGREFER, which is a telescoping of the abbreviated
term “photog” and the word “refer,” is also a misspelling of the word “photographer,”
in which the letters “aph” are replaced by the similarly sounding “ef.” The primary
connotation of the mark is “photographer,” or at least referrals to photographers.
Applicant concedes that PHOTOGREFER “sound[s] similar to PHOTOGRAPHER.”
Appeal Brief, p. 8, 4 TTABVUE 9. It is settled that “[t]he mere misspelling of a
descriptive word is not sufficient to change a merely descriptive term into an
inherently distinctive trademark.” In re Carlson, 91 USPQ2d 1198, 1200 (TTAB
2009) (and cases cited therein).
Applicant also argues that its “use of the mark indicates that the two words are
meant to be understood independently from each other, ‘Photog’ and ‘Refer’ …”
Appeal Brief, p. 13, 4 TTABVUE 14. Applicant uses the term “PHOTOGREFER” as
a single word (PHOTOGREFER) and as individual terms within one word,
PhotogRefer. For example, in portions of its website, Applicant uses the mark in the
following manner: . While the commercial impression of
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this use is different from the impression created when the mark is depicted as
, both of the commercial impressions are merely descriptive of
characteristics of Applicant’s services. Here, the commercial impression is “photog”
+ “refer.” “Photog” is defined as “one who takes photographs; photographer.”2
Applicant offers online referrals in the field of photography, which consists of
referrals of photographers or “photogs.” At a minimum, even when depicted as
PhotogRefer, Applicant’s mark is merely descriptive of Applicant’s online referral
services. In any event, because Applicant seeks registration of the mark in standard
characters, it could depict the mark as so any use of the mark’s
components as “two words” is not relevant.
Accordingly, we find the mark PHOTOGREFER to be merely descriptive of
Applicant’s services.
Applicant argues that the “Board has adopted a three-part test to determine
whether a mark is descriptive or suggestive: (1) the degree of imagination necessary
to understand the product; (2) a competitor’s need to use the same terms; and (3)
competitors’ current use of the same or similar terms.” Appeal Brief, p. 12, 4
TTABVUE 13. Applicant bases this argument on No Nonsense Fashions Inc. v.

2 As requested by the Examining Attorney, we take judicial notice of the definition of
“photog” from Merriam-Webster’s Dictionary Online, http://www.merriam-
webster.com/dictionary/photog.
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 have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985). However, as discussed in
Carlson:
these “tests” were set out in an inter partes case in a
discussion of whether use of a term by third parties on
their packaging detracted from the plaintiff's trademark
rights. Thus, to the extent that applicant is suggesting
that the Office must prove all three points, Applicant is
incorrect. Since this decision issued in 1985, there have
been numerous decisions from the Court of Appeals for
the Federal Circuit and the Board making clear that the
test for descriptiveness is whether a term “immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831,
citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009
(Fed. Cir. 1987).
91 USPQ2d at 1203.

Applicant also argues that its proposed mark does not automatically cause a
consumer to think of advertising, marketing and referral services. Applicant’s
argument is unpersuasive. “[I]t is a well settled legal principle that where a mark
may be merely descriptive of one or more [services] in an application but may be
suggestive or even arbitrary as applied to other [services], registration is properly
refused if the subject matter for registration is descriptive of any of the [services] for
which registration is sought.” In re Analog Devices Inc., 6 USPQ2d 1808, 1810
(TTAB 1988). Therefore, since Applicant’s mark is merely descriptive of Applicant’s
online referrals in the field of photography, it is unnecessary for us to determine
whether it is also merely descriptive of Applicant’s online advertising and
marketing services, and online advertising services for others.
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Further, Applicant's contention that no competitor has used, or will ever have
need to use, the term PHOTOGREFER is not supported by any evidence. Moreover,
it does not affect our decision in this matter as “[i]t is well established that even if
an applicant is the only user of a merely descriptive term, this does not justify
registration of that term.” Carlson, 91 USPQ2d at 1203; See also In re BetaBattInc.,
89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems, Inc., 59 USPQ2d
1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985).
Finally, Applicant argues that “an examination of registered marks on the
Principal Register reveals that the term ‘PHOTGREFER’ in relation to services like
those of the Applicant has consistently been treated as suggestive of the respective
services.” Appeal Brief, 14, 4 TTABVUE 15. This argument is unpersuasive and
irrelevant. None of the registrations upon which Applicant relies are for the mark
PHOTOGREFER. Further, none of the marks are either phonetic equivalents of
descriptive terms or combinations of descriptive terms which as a whole are
descriptive. We must decide each case on its own merits and are not bound by the
allowance of prior registrations, even if they have some characteristics similar to
the application. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
Decision: The refusal to register Applicant’s mark PHOTOGREFER is affirmed.