Selling Source, LLC

Trademark Trial and Appeal Board

Jan 21, 2009

No. 77149255 (T.T.A.B. Jan. 21, 2009)

Mailed: 1/21/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Selling Source, LLC
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Serial No. 77149255
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Bradford R. Norton for Selling Source, LLC.

Zachary R. Bello, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Selling Source, LLC filed an application to register
the mark OPTIMIZED CONTACT SOLUTIONS for “direct mail
marketing and consulting services.”1
The trademark 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
in connection with applicant’s services, is merely

1 Application Serial No. 77149255, filed April 5, 2007, alleging
a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77149255
2
descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Before considering the merits of the appeal, we turn
our attention to an evidentiary matter. The examining
attorney impermissibly submitted new evidence with his
appeal brief. Firstly, the examining attorney submitted a
TARR printout of applicant’s co-pending application (serial
no. 77149222) that has matured into Registration No.
3550878 (issued on December 23, 2008) for the mark OCS
OPTIMIZED CONTACT SOLUTIONS TARGETED DIRECT MAIL MARKETING
and design for “direct mail marketing and consulting
services.” The words “OPTIMIZED CONTACT SOLUTIONS,
TARGETED DIRECT MAIL MARKETING” are disclaimed. Secondly,
the examining attorney submitted excerpts of third-party
websites showing uses of the term “optimized contact” in
connection with marketing services.
Trademark Rule 2.142(d) provides that the application
record should be complete prior to the filing of an appeal.
The Board ordinarily will not consider additional evidence
submitted after the appeal is filed. TBMP §1207.01 (2d ed.
rev. 2004). Although applicant did not file a reply brief
and, therefore, did not object to the untimely submission,
we decline to consider the additional evidence attached to
Ser. No. 77149255
3
the examining attorney’s appeal brief due to its untimely
submission.
The examining attorney maintains that the proposed
mark immediately conveys the purpose of applicant’s direct
mail marketing and consulting services, namely “efficient
[customer] contact problem solving.” In support of the
refusal, the examining attorney submitted dictionary
definitions of each of the terms comprising applicant’s
mark, and excerpts of third-party websites showing uses of
the term “contact solutions.”
Applicant argues that its mark is arbitrary or, at
worst, only suggestive of the services recited in the
application. Applicant states that the examining attorney
improperly dissected applicant’s mark to arrive at the
conclusion that it is merely descriptive. There are no
similar marks on the register, indicating, according to
applicant, that the proposed mark is not merely
descriptive. Applicant dismisses the examining attorney’s
Internet evidence on the basis that the websites have
nothing to do with the type of services rendered by
applicant. Lastly, applicant asserts that any doubt on the
issue of mere descriptiveness must be resolved in its
favor.
Ser. No. 77149255
4
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1835 (TTAB 2007); and In re
Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
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. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). It is settled that “[t]he question
is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
Ser. No. 77149255
5
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The “average” or “ordinary” consumer is the class or
classes of actual or prospective customers of applicant’s
goods or services. In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of 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 Tower Tech Inc., supra [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; and In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs].
The term “optimized” is defined as “to make as perfect
or effective as possible.” The term “contact” means
“connection or interaction; communication.” The term
“solution” is defined as “the method or process of solving
Ser. No. 77149255
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a problem; the answer to or disposition of a problem.” The
American Heritage Dictionary of the English Language (3d
ed. 1992).
The record also includes several examples of third-
party descriptive uses of the term “contact solutions” in
connection with the methods of businesses in solving a
specific problem, which is staying in contact with its
customers.
Based on the meanings of the individual components
comprising applicant’s mark as they are understood in the
marketing field, we find that the combination of the words
is merely descriptive of applicant’s services. The
individual merely descriptive components retain their
descriptive character when combined to form the composite
OPTIMIZED CONTACT SOLUTIONS. The proposed mark OPTIMIZED
CONTACT SOLUTIONS merely describes a significant character
or feature of applicant’s direct mail marketing and
consulting services, namely that they provide a business
with the most effective methods of solving the problem of
staying in communication with its customers. No
imagination is required to discern this feature or purpose
of the services. The fact that applicant may be the first
or only user of the merely descriptive designation is
outweighed by the weight of the evidence of mere
Ser. No. 77149255
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descriptiveness. In re Acuson, 225 USPQ 790, 792 (TTAB
1985).
While applicant agues that any doubt on the issue of
mere descriptiveness should be resolved in its favor, we
have no such doubts.
Decision: The refusal to register is affirmed.