Planalytics, Inc.

Trademark Trial and Appeal Board

Mar 17, 2004

No. 76321755 (T.T.A.B. Mar. 17, 2004)

Mailed: 17 MAR 2004
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Planalytics, Inc.
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Serial No. 76321755
_______
Timothy D. Pecsenye of Blank Rome LLP for Planalytics, Inc.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On October 5, 2001, Planalytics, Inc. (applicant)
applied to register the mark CORNBUYER in typed form on the
Principal Register for services ultimately identified as
“providing on-line risk management services in the field of
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76321755
2
pricing and purchasing decisions for corn” in International
Class 36.1
The examining attorney refused registration on the
ground that the mark was merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because the mark CORNBUYER “describes the intended user of
the services.” Brief at 4. The examining attorney also
refused to register the mark because applicant did not
comply with the examining attorney’s requirement for
information under 37 CFR § 2.61(b). Applicant maintains
that its mark is “a complete fabrication of the English
language” and a coined tern that is suggestive of the
services. Applicant’s Brief at 10.
After the examining attorney made the refusals final,
applicant appealed to this board.
We affirm on both grounds.
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
1 Serial No. 76321755. The application is based on an allegation
of a bona fide intention to use the mark in commerce.
Ser. No. 76321755
3
descriptive,” a term need only describe a single
significant quality or property of the goods or services.
Gyulay, 3 USPQ2d at 1009; Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294
(CCPA 1959). Descriptiveness of a mark is not considered
in the abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
A mark can be descriptive if it describes the intended
users of the goods or services. Shaw-Barton, Inc. v. John
Baumgarth Co., 313 F.2d 167, 136 USPQ 116, 117 (7th Cir.
1963), cert. denied, 374 U.S. 831 (1963) (“We hold that the
word "Homemakers," when applied to calendars of the type
involved in this suit, is a noun descriptive of that class
of individuals toward which the design and proposed use of
the product is oriented”) (footnote omitted); In re Hunter
Publishing Co., 204 USPQ 957, 962 (TTAB 1979) (“[I]t has
been consistently held that a mark which describes the
intended users of a particular product is merely
descriptive of such goods”; JOBBER AND WAREHOUSE EXECUTIVE
for a trade magazine held descriptive of the class of
purchasers); In re Camel Mfg. Co., 222 USPQ 1031, 1032
(TTAB 1984) (“[T]here is no doubt that the group described
by the term ‘MOUNTAIN CAMPER’ is a category of purchaser to
Ser. No. 76321755
4
whom applicant specifically directs its camping equipment”;
MOUNTAIN CAMPER held descriptive of retail services
involving the sale of camping equipment); Hunter Publishing
Co. v. Caulfield Publishing, Ltd., 1 USPQ2d 1996, 1998
(TTAB 1986) (SYSTEMS USER is descriptive of the readers of
a magazine directed to computer users).
To support her position that applicant’s mark is
merely descriptive, the examining attorney submitted
numerous printouts from the Internet and from the
LEXIS/NEXIS database. The evidence shows that the term
“corn buyer[s]” is a term applied to people who purchase
corn.
Potential corn buyers and industry representatives
from around the world are attending the conference.
As part of the meeting, the Nebraska Corn Board will
host a Nebraska corn quality program for nearly 100
international representatives introducing them to our
quality and identity-preserved corn handling systems.
Nebraska Corn Board press release, July 23, 2001.
He began his commodity career as a corn buyer in 1959
for a large milling firm in central Illinois.
www.cis-oke.com.
Previous positions held by Mr. Eckhardt include Corn
Buyer, Commodities Merchandiser, Manager of
Commodities and Transportation and Manager [of]
Logistics.
www.ciaconline.com.
But if China’s export tender turns out to have been a
red herring, and if world corn buyers flock back to
the United States this winter, the export program
would see an immediate bounce.
Chicago Tribune, December 11, 2000.
Ser. No. 76321755
5
He then worked as a federal grain inspector in New
Orleans and later joined Frito-Lay in Texas before
moving to the company’s Sidney, Ill., facility as a
corn buyer.
State Journal-Register, March 12, 2000.
Japan’s economy has been weak, and Japanese corn
buyers apparently made some of their purchases earlier
in the season than normal.
Journal of Commerce, September 9, 1998.
Added Mr. Celma, “We think it would be best for the
Mexican industry and corn buyers to have access to the
corn quota all year round.”
Journal of Commerce, August 10, 1998.
[R]ecalled how Michigan farmers marketed the big 1994
corn crop … to the New Energy ethanol plant in South
Bend, where he had worked as a corn buyer.
South Bend Tribune, February 1, 1997.
About five years ago, Wilson, who made his millions as
Monfort Feedlots’ chief corn buyer, decided to begin
liquidating his savings by contributing to charities.
Omaha World Herald, July 14, 1996.
The evidence that the examining attorney has provided
demonstrates that the term “corn buyer” or “corn buyers” is
not a coined or unique term. It is a term commonly used to
refer to individuals who buy large quantities of corn for
institutions and firms. It appears to be a profession to
the extent that individuals are referred to in the excerpts
above as corn buyers:
Previous positions held by Mr. Eckhardt include Corn
Buyer
He “worked as a federal grain inspector … moving to
the company’s … facility as a corn buyer
Ser. No. 76321755
6
Wilson, who made his millions as Monfort Feedlots’
chief corn buyer
where he worked as a corn buyer
He began his commodity career as a corn buyer
We also note that risk management techniques are
associated with purchasing corn.
A hedge would have to be “very inexpensive” to
interest Gold Kist Inc., according to Paul W.
Pressley, director, risk management and insurance at
the Atlanta-based agricultural company. “Obviously, a
lot of our business is weather related,” Mr. Pressley
said. “We sell a lot of fertilizer and seeds,” and
the company is a big buyer of corn, he pointed out.
Business Insurance, December 1, 1997.
At futures exchanges across the globe another form of
risk management has developed over the last 15 years.
The Exchange Traded Option on a futures contract is a
unilateral contract which gives the buyer the right to
buy or sell a specific quantity of a commodity at a
specific price within a specified period of time,
regardless of the market price of that commodity.
…
The mill’s corn buyer believes the corn market may go
down or is bearish but does not want to end up with
margins squeezed or even negative.
www.vegrains.org.
Therefore, we find that when the term “Corn Buyer”
would be associated with services that provide on-line risk
management services in the field of pricing and purchasing
decisions for corn, it will immediately inform potential
purchasers that these services are directed to individuals
who purchase corn.
Ser. No. 76321755
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Inasmuch as it clear that the terms “corn buyer” and
“corn buyers” are commonly used to refer to the
institutional purchasers of corn, we assume that when
applicant argues that its mark is “a complete fabrication
of the English language” (Applicant’s Brief at 10), it is
referring to the fact that applicant spells its term
without a space between “corn” and “buyer.” The absence of
the space is not significant here. First, we cannot see
how the absence of the space creates a different meaning or
perception of the term. Whether the term appears as
CORNBUYER or CORN BUYER, it would be understood by the
relevant consumers to have the same meaning, a buyer of
corn. The Supreme Court has long ago recognized that
slight variations in spelling do not change a descriptive
term into a non-descriptive term.
The word, therefore is descriptive, not indicative of
the origin or ownership of the goods; and being of
that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled.
Bad orthography has not yet become so rare or so
easily detected as to make a word the arbitrary sign
of something else than its conventional meaning….
Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S.
446, 455 (1911) (emphasis added).
Other cases have recognized that a slight misspelling
does not change a merely descriptive term into a suggestive
term. See Armstrong Paint & Varnish Works v. Nu-Enamel
Ser. No. 76321755
8
Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU found equivalent
of “new”); In re Quik-Print Copy Shops, 616 F.2d 523, 205
USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive;
“There is no legally significant difference here between
‘quik’ and ‘quick’”); Hi-Shear Corp. v. National Automotive
Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE
“is the phonetic equivalent of the words ‘HIGH TORQUE’”);
and In re Organik Technologies Inc., 41 USPQ2d 1690 (TTAB
1997) (ORGANIK).
In the following cases specifically involving a
misspelling consisting of the deletion of a space between
words, the combined term remained descriptive. See In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1017 (Fed. Cir.
1987) (SCREENWIPE generic for a wipe for cleaning
television and computer screens); In re Abcor Dev., supra,
(GASBADGE at least descriptive for gas monitoring badges;
three judges concurred in finding that term was the name of
the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED descriptive for jams and jellies that
would be a spread for bread); In re Perkin-Elmer Corp., 174
USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for
interferometers utilizing lasers). There is nothing in the
facts of this case that would lead us to conclude that the
term “cornbuyer” would not, in the same manner, be seen as
Ser. No. 76321755
9
the equivalent of “corn buyer.” Therefore, the term
CORNBUYER would likewise be merely descriptive of
applicant’s services.
While applicant notes that “[n]o such word as
CORNBUYER really exists in the dictionary” (Applicant’s
Brief at 11), the presence of a term in the dictionary is
not a condition precedent for a finding that a term is
merely descriptive. In re Gould Paper, supra (SCREENWIPE);
In re Abcor Dev., supra (GASBADGE); In re Tower Tech, Inc.,
64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive,
no dictionary definition of term).
Additionally, applicant argues that the examining
attorney has improperly dissected its mark. However,
applicant’s mark consists of the combined words “corn” and
“buyer” without a space in typed form. The examining
attorney’s evidence shows that the same words with a space
are used to describe people who buy corn for an occupation.
This evidence shows that the mark as a whole is
descriptive, not just the individual parts of applicant’s
mark.
Applicant also argues that its “services are geared
toward risk management and business-related decisions and
not towards the ‘corn buyers’ cited in evidentiary
articles. In so doing, the Examining Attorney disregards
Ser. No. 76321755
10
the fact that Planalytics’s services are not used by ‘corn
buyers,’ or even as a substitute for a human ‘corn buyer.’”
Applicant’s Brief at 8. Applicant goes on to argue that
its mark “does not ‘merely describe’ the market research
and risk management services actually provided under the
mark. The CORNBUYER mark has no relation to a person or
entity that buys corn.” Id. However, applicant does
acknowledge that “all of the evidence provided by the
Examining Attorney supports the proposition that CORNBUYER
may be merely descriptive of the purchasing of corn,” going
on to assert that “it is suggestive of ‘risk management
services in the field of pricing and purchasing corn.’”
Applicant’s Brief at 9.
Applicant’s identification of services makes it clear
that its services are directed to those who are in the
field of making purchasing decisions for corn. The
evidence supports the conclusion that these people would be
referred to as corn buyers. While applicant’s mark does
not describe every feature or characteristic of its
services, there is no requirement that a mark must do this
before it can be found to be merely descriptive of the
services. Gyulay, 3 USPQ2d at 1009; Meehanite Metal, 120
USPQ at 294. Clearly, applicant’s mark describes a feature
or characteristic of the services to the extent that it
Ser. No. 76321755
11
immediately convey that its services are intended for
individuals who purchase corn.
Therefore, we conclude that applicant’s mark CORNBUYER
is merely descriptive of applicant’s services.
We now address the refusal to register on the ground
that applicant did not comply with the examining attorney’s
requirement for information. In the first Office action
(page 4), the examining attorney required the applicant to
state whether the term CORNBUYER has any significance in
the trade or any relation to the services. In addition,
she required applicant to submit any product information.
“If such materials are not available, the applicant must
submit a detailed description of the goods/services,
including but not limited to their nature, purpose,
prospective purchasers, and channels of trade. This
information is necessary to evaluate accurately and fully
the registrability of the applicant’s proposed
designation.”
When applicant did not respond to this requirement,
the examining attorney made the requirement final, along
with her refusal to register the mark on the ground of
descriptiveness. In its request for reconsideration (page
13), applicant addressed the requirement for information
for the first and only time by simply stating: “Applicant
Ser. No. 76321755
12
respectfully submits that it has no informational materials
as the application is currently an intent-to-use
application.” In her denial of the request for
reconsideration, the examining attorney reminded applicant
that the requirement applied even to intent-to-use
applications to the extent that the requirement provided
that, if materials were not available, applicant must
submit a detailed description of the services. Applicant
did not address the issue in its brief and the examining
attorney argues that applicant has not complied with her
requirement for information.
Trademark Rule 2.61(b), 37 CFR 2.61(b), provides that
the “examiner may require the applicant to furnish such
information and exhibits as may be reasonably necessary to
the proper examination of the application.” More
specifically, the “examining attorney may request
literature, exhibits, and general information concerning
circumstances surrounding the mark and, if applicable, its
use or intended use.” TMEP § 814 (3rd ed. 2003).
As the Board stated in In re SPX Corporation, 63
USPQ2d 1592, 1597 (TTAB 2002).
Trademark Rule 2.61(b) provides that the Examining
Attorney may require the applicant to furnish such
information and exhibits as may be reasonably
necessary to the proper examination of the
application. In response to a request for information
Ser. No. 76321755
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such as the Examining Attorney made in this case, an
applicant has several options. It may comply with the
request by submitting the required advertising or
promotional material. Or it may explain that it has
no such material, but may submit material of its
competitors for similar goods or provide information
regarding the goods on which it uses or intends to use
the mark. Or it may even dispute the legitimacy of
the request, for example, if the goods identified in
the application are such ordinary consumer items that
a request for information concerning them would be
considered unnecessary and burdensome.
Applicant has chosen to ignore the examining
attorney’s specific request that it provide a “detailed
description” of its services. Applicant does not maintain
that it is unable to do so or offer any explanation for its
failure to comply with this requirement. The fact that
applicant has filed its application based on the intent-to-
use provision of the Trademark Act does not per se excuse
it from complying with the examining attorney’s requirement
for information. In re DTI Partnership LLP, 67 USPQ2d 1699
(TTAB 2003) (Intent-to-use application refused registration
for failing to comply with examining attorney’s requirement
for information). We find that the examining attorney’s
requirement for information in this case was reasonably
necessary for the examination of the application.2
2 While we have affirmed the descriptive refusal without the
benefit of this evidence, the lack of this evidence, while a
hindrance, did not prevent the review of this case. Compare DTI
Partnership, 67 USPQ2d at 1702 (“[O]ur ability to fully and
accurately access the substantive merits of the mere
descriptiveness issue has been hindered by applicant’s failure to
Ser. No. 76321755
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Applicant has, without explanation, refused to comply with
the examining attorney’s proper requirement for information
regarding its intended services. Therefore, we agree that
the examining attorney’s refusal to register applicant’s
mark on this ground was proper.
Decision: The refusals to register are affirmed.
submit information and materials;” 2(e)(1) refusal dismissed as
moot) with SPX Corporation 63 USPQ2d at 1597 (Refusals based on
descriptiveness and failure to comply with examining attorney’s
requirement for information affirmed).