RateIntegra-tion, Inc.

Trademark Trial and Appeal Board

Oct 4, 2002

No. 76014524 (T.T.A.B. Oct. 4, 2002)

Mailed: 10/4/2002
Paper No. 17
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
_______
In re RateIntegration, Inc.
________
Serial No. 76/014,524
_______
Mark B. Harrison of Venable, Baetjer, Howard & Civiletti,
LLP for RateIntegration, Inc.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
RateIntegration, Inc. (a Delaware corporation) filed
on March 31, 2000 an application to register on the
Principal Register the mark RATEINTEGRATION for goods
ultimately amended to read “computer software programs for
use in setting pricing for use on global computer networks,
web hosting, web site content, electronic commerce,
telephony and other per use digital services” in
International Class 9. The application is based on
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/014524
2
applicant’s assertion of a bona fide intention to use the
mark in commerce on the identified goods.
The 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, when used
on the goods identified in the application, is merely
descriptive thereof.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs. Applicant did not request an oral hearing.
The Examining Attorney essentially contends that the
term “RATEINTEGRATION” is a combination of the words “rate”
and “integration,” which immediately describes a
significant feature of applicant’s computer software
programs for use in setting prices for various per use
digital services (e.g., telephony, web hosting, web site
content, etc.). Specifically, the Examining Attorney
contends that applicant’s software “allows users in the
wireless, network applications, and other digital service
provider industries to set their price rates for web
hosting, web site content, electronic commerce, telephony,
and other per use digital services,” and further “allows
users to integrate their pricing rates into the users’
system....” (Brief, p. 5.) The Examining Attorney
Ser. No. 76/014524
3
contends that “rate integration” is commonly used in the
telecommunications industries (especially in relation to
Section 254(g) of the Telecommunications Act of 1996) to
refer to the integration of price setting, the same type of
program offered by applicant.
The Examining Attorney points to applicant’s own uses
of the terms “rate” and “integration” in pages from
applicant’s web site (submitted by applicant on April 3,
2001); and in further support of the refusal to register,
she submitted (i) dictionary definitions of the terms
“rate” and “integration”1; (ii) photocopies of several
excerpted stories retrieved from the Nexis database
relating to “rate integration”; and (iii) a photocopy of
one story in full retrieved from the Nexis database.
1 The Examining Attorney’s request that the Board take judicial
notice of the dictionary definition of “integration” submitted
with her brief is granted. See The University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See
also, TBMP §712.01. However, applicant’s request in its reply
brief that if this “new evidence” submitted by the Examining
Attorney was considered, then applicant’s evidence submitted with
its request for reconsideration should also be considered, is
denied. Applicant’s request for reconsideration was held
untimely by the Board in an order dated February 14, 2002, and
the Board explained that the evidence submitted therewith would
not be considered. In addition, applicant resubmitted the
material attached to its request for reconsideration with its
appeal brief, and the Examining Attorney properly objected
thereto. To be clear, applicant’s evidence untimely submitted
with its request for reconsideration, and resubmitted with
applicant’s appeal brief, has not been considered.
Ser. No. 76/014524
4
Applicant urges reversal, contending that the
Examining Attorney has not met the burden of establishing a
prima facie case of mere descriptiveness for the involved
goods in that the stories retrieved from the Nexis database
do not support the conclusion that the term
“RATEINTEGRATION” immediately describes the computer
software offered by applicant because applicant does not
set long distance rates for telephone services and it does
not offer systems integration software; that applicant does
offer software that “may be used by Internet Service
Providers to assist in setting profitable pricing for
[their] services on a real time and per use basis
considering a number of variables” (brief, p. 4); that the
“rate integration” of wireless telecommunications provided
for in the Telecommunications Act of 1996 is inapplicable
because applicant is not a telecommunications provider and
it does not set long distance phone service rates; and that
doubt is resolved in applicant’s favor.
The well-established test for determining whether a
term or phrase is merely descriptive under Section 2(e)(1)
of the Trademark Act is whether the term immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
Ser. No. 76/014524
5
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). The determination of mere descriptiveness
must be made not in the abstract, but rather in relation to
the goods or services for which registration is sought, the
context in which the term or phrase is being used on or is
intended to be used in connection with those goods or
services, and the impact that it is likely to make on the
average purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
The question is not whether someone presented with
only the term or phrase 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
term or phrase to convey information about them. See In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corp., 226 USPQ
365 (TTAB 1985).
We look first to the pages from applicant’s web site
submitted by applicant on April 3, 2001. The web site
includes the following statements:
Ser. No. 76/014524
6
RateIntegration was founded for the
very purpose of creating a stand-alone
real-time rating and data translation
engine. ...
We believe that rating is the critical
component needed to evolve pricing for
voice services and to realize a return
on investment in new IP-based
technologies. ... RII’s focused
integration effort replaces the lengthy
and arduous development lifecycle. ...
Our founders believe that by taking a
rating-centric view, providers are best
enabled to bring new products and
services to market quickly. RII built
PriceMaker based on the market demand
for innovative pricing and new IP-based
services in order to overcome the
inadequacies of today’s rating
infrastructure. We provide wireless,
network, application and other service
providers the ability to:
● Rate any transaction,
● From any source,
● Along any usage-attribute,
● Using any pricing rule, and
● Export the transaction to any set of
support systems that requires rated
data.
Further, the full article retrieved from the Nexis
database by the Examining Attorney, which refers to
applicant, clearly indicates that applicant offers its
involved specific computer software to those in the
telecommunications industry. We note the following quote
from that article:
Headline: For Whom the Bill Tolls
...Forklift upgrades aren’t easy, but
they are an option. Bell Atlantic is
nearing completion of a five-year
overhaul of its legacy billing system
Ser. No. 76/014524
7
that will allow, among other services,
converged billing.
In addition, niche companies such as
RateIntegration are emerging to extend
the life span of legacy systems.
RateIntegration allows carriers that
use legacy systems to keep their
existing systems in place and gain next
generation capabilities by replacing
only the rating engine.
“Why change the whole system? Why not
just change what needs to be fixed?”
said Matthew Lucas, president and CEO
of Rate-Integration. “Telephony,” July
17, 2000.
Applicant’s identification of goods is not only broad
enough to encompass computer software for use in the
telecommunications field, in fact, it specifically includes
“telephony” as one of the items its computer software
program can be used to set prices for. In addition, as
shown above, there is evidence in the record that applicant
offers its identified computer software program
specifically for the billing systems used in the
telecommunications industry.
The meanings of the words “rate” and “integration”
have been made of record by the Examining Attorney in the
following definitions:
“rate Science. 1. a quantity that is
measured in relation to a unit of
time... 2. to make such a measurement
of a quantity....” Academic Press
Dictionary of Science and Technology;
and
Ser. No. 76/014524
8
“integration (from the Latin integer,
meaning whole or entire) generally
means combining parts so that they
work together of form a whole. In
information technology, there are
several common usages: (1)
Integration during product development
is a process in which separately
produced components or subsystems are
combined and problems in their
interactions are addressed....”
whatis.com, a TechTarget.com site,
searched July 14, 2001.
The following are examples of the excerpted stories
retrieved from the Nexis database showing use of the term
“rate integration”:
Headline: WTN Notebook
...The order also prevents carriers
from charging different rates between
states. This rate integration
requirement also was outlined by the
Act.... “Washington Telecom News,”
August 12, 1996; and
Headline: Powell Enters Forbearance-
Test Fray
...Powell disagreed with the majority
FCC decision to continue enforcing
rate integration in the wireless
industry. Rate integration requires
interstate telecommunications
companies to provide interstate long-
distance services to their customers
in each state, including U.S.
territories, at rates no higher than
those they charge to their customers
in other states. “Radio Comm.
Report,” February 1, 1999.
Applicant acknowledges that the term “rate” is
suggestive in that applicant’s software is used to set
Ser. No. 76/014524
9
pricing, and that the term “integration” is suggestive in
that “applicant achieves ‘pricing and rating’ through an
‘integration’ of data collection, rating, provisioning
presentment, and customer management functions.” (Brief,
p. 5.)
In the context of computer software programs
specifically involving setting pricing for use on global
computer networks, web hosting, web site content,
electronic commerce, telephony and other per use digital
services, the words “rate integration” immediately convey
information about the purpose and function of applicant’s
goods.
Both applicant’s identification of goods and the
evidence of record (particularly applicant’s web site
information) show that applicant’s computer software
programs are used to set prices or rates for digital
service providers and to integrate them into the customers’
systems. There is no question but that applicant’s goods
are offered to customers in the telecommunications
business. The fact that applicant is not a
telecommunications provider and does not itself set long
distance telephone rates, does not detract from the
descriptiveness of the term “RATEINTEGRATION” when
considered in relation to applicant’s identified goods.
Ser. No. 76/014524
10
The Examining Attorney has established a prima facie
case that the term “RATEINTEGRATION” is merely descriptive
of applicant’s “computer software programs for use in
setting pricing for use on global computer networks, web
hosting, web site content, electronic commerce, telephony
and other per use digital services.” The evidence shows
that the relevant purchasers and users would understand the
term RATEINTEGRATION to refer to the function and purpose
of applicant’s computer software, namely, that it is
utilized to calculate rates for digital goods consumed,
integrating the data collection, rating, etc., therein.
We find that the term RATEINTEGRATION immediately and
directly conveys information about a significant feature of
applicant’s computer software. The deletion of the space
between these two words to combine them into one word does
not create an incongruous or creative or unique mark. See
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987).
Rather, applicant’s mark, RATEINTEGRATION, when used
in connection with applicant’s identified goods,
immediately describes, without conjecture or speculation, a
significant feature of applicant’s goods. Nothing requires
the exercise of imagination or mental processing or
gathering of further information in order for purchasers
Ser. No. 76/014524
11
and prospective customers of applicant’s goods to readily
perceive the merely descriptive significance of the term
RATEINTEGRATION as it pertains to applicant’s computer
software which is used in setting pricing for myriad per
use digital services. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE merely descriptive
for potpourri); In re Omaha National Corporation, 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987) [FIRSTIER (stylized)
merely descriptive for banking services]; and In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays).
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) is affirmed.