Sim-ple.Com, Inc.

Trademark Trial and Appeal Board

Oct 10, 2002

No. 75752279 (T.T.A.B. Oct. 10, 2002)

Mailed:
October 10, 2002
Paper No. 12
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Simple.Com, Inc.
________
Serial No. 75/752,279
_______
Erik B. Cherdak of Erik B. Cherdak & Associates, LLC for
Simple.Com, Inc.
Danielle I. Mattessich, Trademark Examining Attorney, Law
Office 101 (Jerry L. Price, Managing Attorney).
_______
Before Hairston, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Simple.Com, Inc. seeks to register the mark SITE
ENGINE on the Principal Register in connection with
“computer services, namely, providing online content
retrieval services for obtaining data on a global network,”
in International Class 42.1
This case is now before the Board on appeal from the
final refusal to register based upon three separate
grounds: (1) that applicant’s recital of services is
1 Application Serial No. 75/752,279, filed on July 15, 1999,
is based upon applicant’s allegation of a bona fide intention to
use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/752,279
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indefinite and unacceptable; (2) that applicant has not
properly designated a domestic representative; and (3) that
SITE ENGINE is merely descriptive under Section 2(e)(1) of
the Lanham Act, 15 U.S.C. §1052(e)(1).
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
We reverse as to the first ground, but affirm as to
the latter two grounds of the refusal to register.
Recital of Services
At the time this application was filed in July 1999,
the original recital of services read as follows:
Internet and World Wide Web (WWW) site
search engine and content retrieval
services.
The Trademark Examining Attorney found this to be
indefinite, suggesting instead:
Computer services, namely, providing search
engines for obtaining data on a global
computer network.2
The applicant responded by amending the recital to:
Computer services, namely, providing
categorized content such as news content and
sports content on a global computer network.
2 This recital is drawn verbatim from the ID Manual.
Serial No. 75/752,279
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The Trademark Examining Attorney found this too to be
unacceptable inasmuch as she held “… providing categorized
content such as news content and sports content … ” was not
within the scope of “content retrieval services.”3
Applicant then asked that the recital be changed to:
Computer services, namely, providing online
content retrieval services for obtaining
data on a global network.
The Trademark Examining Attorney found this
formulation to be indefinite,4 and suggested again the
language quoted above.
On appeal, applicant contends that its last recital is
definite and acceptable.
In order to decide if applicant’s last recital should
be found to be acceptable, we turn to “General Guidelines
for Acceptable Identifications of Goods and Services.”5
3 While it is not immediately clear why this proposed
amendment would be characterized as broadening the recital,
because this earlier amendment is no longer before us, we do not
need to decide this particular issue under Trademark Rule
2.71(a).
4 On page 6 of her brief, the Trademark Examining Attorney
treats the services as if applicant intends to provide content –
not content retrieval. She maintains that “content providers”
must list the subject matter of the information provided so as to
classify the service correctly and narrow the scope of
protection. Indeed, if applicant were a “content provider” or
intended to offer information services, we would need to have
additional details about the field or the subject matter of the
content, as these factors affect classification determinations
(TMEP 1402.11(a) Computer Services: “Content Providers”; and
TMEP 1402.11(b) “Information Services”).
5 Examination Guide No. 3-00, issued on October 31, 2000;
since incorporated into TMEP §1402.01(a).
Serial No. 75/752,279
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With few exceptions, an identification of
goods and services will be considered
acceptable if it:

Is written in English

Describes the goods and/or services so
that an English speaker could
understand what the goods and/or
services are even if the grammar or
phrasing is not optimal

Meets the standards (not necessarily
the language) set forth in the US ID
Manual

Is not a class heading

Is in the correct class
Deference should be given to the language
and the classification set forth by the
applicant in the original application. …
Applicant’s recital of services, as last amended
(”Computer services, namely, providing online content
retrieval services for obtaining data on a global
network”), is written in English and does not function as a
class heading in the Nice Classification system. As to
classification, applicant did not actually designate a
class in the initial application papers, but the Trademark
Examining Attorney, in her first Office action, suggested
that International Class 42 was the correct classification
for these services. That indeed appears to be the proper
classification for these services as originally filed and
as amended.
On the other hand, unlike the language proposed by the
Trademark Examining Attorney, the exact language proposed
by the applicant does not appear in the USPTO’s ID Manual.
Serial No. 75/752,279
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Accordingly, judged by the standards of the ID Manual, we
must determine whether the recital as proposed by applicant
provides enough clarity to permit one to understand the
nature of applicant’s services.
Applicant and the Trademark Examining Attorney are in
agreement that we are considering herein computer services
designed to obtain information from the Internet. There is
also no issue but that a key feature of this service is
that it provides the user access to another search engine
or browser.6 That leaves the question of whether “content
retrieval” has a commonly understood meaning in connection
with applicant’s affected services, or contrariwise,
whether it is indefinite in this context, as argued by the
Trademark Examining Attorney:
6 Applicant’s proprietary search engine is an indispensable
tool in providing its services. Yet applicant never explicitly
stated its semantic concerns over the Office’s proposed language
of “providing search engines.” Technically, it does seem that
applicant has a single search engine, not engines. Furthermore,
it is available only through applicant’s website. That is,
applicant merely provides access to the online functionalities of
its search engine for the Internet user, so that the user of this
service can search for, and retrieve information from, the
Internet. See screen print from www.simple.com. We have no
reason to believe that the search engine qua proprietary software
is provided to the end-users. Of course, that would be true of
most service providers having a search engine portal who
apparently have accepted the Office’s recital language, including
that of “providing search engines.”
On the other hand, it seems that if applicant’s recitation
of the services offered is otherwise acceptable, naming the
specific tool that makes these service possible (i.e., the search
engine) may well be helpful, but should not be a requisite
feature of the recital.
Serial No. 75/752,279
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The recitation of services as drafted by the
applicant could include the following
services, among many others: “computer
services, namely, providing search engines
for obtaining data on a global computer
network, in International Class 42,”
“providing information at the specific
request of end-users by means of global
computer networks, in International Class
42,” or “providing customized online web
pages featuring user defined information,
which includes search engines and online web
links to other’s web sites, in International
Class 42.” (Trademark Examining Attorney’s
appeal brief, pp. 5-6).
Because the exact term, “content retrieval,” does not
appear in any computer dictionary that we could find, we
have no evidence that it is presently a term of art in the
field of personal computing. Nonetheless, we have
consulted a number of computer dictionaries to determine
the current understanding of the components of this term:
Content: general term that refers to
information or text provided by a publisher
that is useful to or of interest to a user,
Dictionary of Personal Computing and the
Internet, (2nd Ed. 1998).
Content: A jargon term used in the computer
and entertainment industries to collectively
describe the words, pictures, music, speech
or film that is placed on a WEB SITE or
delivered over a TV channel – that is, the
stuff that has to be purchased from non-
suit-wearing “creative” types. The New
Penguin Dictionary of Computing, Dick
Pountain (2001).
Retrieve: To extract an item of data from
some storage device or data structure, The
Serial No. 75/752,279
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New Penguin Dictionary of Computing, Dick
Pountain (2001).
Retrieve: To find a piece of data and bring
it to an active application… Computing
Dictionary: PC Novice Learning Series
(Winter 1996).7
Consistent with the meaning of these individual words,
applicant offers its customers a generalized search and
retrieval capability to get to Internet content. As seen
from screen prints made a part of this record, it resembles
other Internet search engines. In addition to having the
option of typing in a known URL, it has metasearch
capabilities (using a number of other extant search
engines). In a variation on other search engines,
applicant’s engine features a template having three standard
drop-down boxes that requires no typing for operation.
Applicant claims that this eliminates excess information
provided by other search engines and takes the user exactly
where they want to go -- directly to applicant’s commercial
sponsors. See screen print from www.simple.com.
However, applicant’s competition herein appears to be
other online search engine portals designed to retrieve and
7 Although such definitions were not of record, it is settled
that the Board may properly take judicial notice of dictionary
definitions. See Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
Serial No. 75/752,279
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display a range of online content from the Internet. There
is certainly no indication that applicant contracts with
end-users to formulate and then conduct a search on their
behalf. Nor is this an automated system that is capable of
taking unstructured content from pre-defined web sites,
structuring the content, and saving it into the end-user’s
database or web page. None of applicant’s proposed recitals
and none of the evidence in the file supports anything more
involved than permitting users to search for, and retrieve
information from, the Internet.
In short, we find that applicant’s “providing online
content retrieval services,” without more, means much the
same thing as the Trademark Examining Attorney’s “providing
search engines.”
Accordingly, even if applicant’s proposed recital is
not the model of optimum clarity, we find that applicant’s
last proposed recital of services meets all the
requirements of an acceptable recital, and on this issue,
we reverse the Trademark Examining Attorney’s refusal to
register.
Serial No. 75/752,279
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Designation of domestic representative by foreign applicant
We turn now to the second ground for refusal of
registration.
The original application papers, in addition to the
required jurat, also contain a “Power of Attorney”
providing for applicant’s counsel to “prosecute this
application and to transact all business” before the United
States Patent and Trademark Office. The Trademark
Examining Attorney repeatedly refused to accept this as a
designation of domestic representative and applicant
repeatedly asked that it be found acceptable for that very
purpose.
With applicant’s response of February 12, 2000, we
learn that applicant is a Nevada corporation. However, even
U.S. corporations having a foreign address must file a
document designating the name and address of a domestic
representative on whom may be served notices or process in
proceedings affecting the mark. 15 U.S.C. §1051(e); 37
C.F.R. §2.24. Because applicant failed to designate a
domestic representative in the original application, the
Trademark Examining Attorney correctly required such a
designation in her first Office action.
As noted by the Trademark Examining Attorney, the
designation of a domestic representative is not the same as
Serial No. 75/752,279
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a power of attorney. The language of applicant’s power of
attorney does not specifically state that applicant intends
to designate Mr. Cherdak as a domestic representative upon
whom notices or process affecting the mark may be served.
Hence, we agree with the requirement of the Trademark
Examining Attorney on this point, and affirm the refusal to
register herein as a result.
Mere Descriptiveness
The Trademark Examining Attorney also refused
registration of this application on the ground that
applicant’s SITE ENGINE mark is merely descriptive when
used in connection with the identified services. She
argues that applicant has combined two highly descriptive
terms to create a new term that merely describes the nature
of applicant’s services. In support of her position, the
Examining Attorney submitted the following dictionary
definitions:
Site: See WEB SITE. Dictionary of Personal
Computing and the Internet, (1st Ed. 1997).
Engine: part of a software package that
carries out a particular function; for
example, a search engine is the part of a
multimedia title that lets a user search for
text in a multimedia book. Dictionary of
Personal Computing and the Internet, (1st Ed.
1997).
Serial No. 75/752,279
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The dictionary definition of “site” points to “Web
Site” – a location on the World Wide Web. Moreover, as
seen in this computer dictionary entry, the definition of
“engine” alone mentions as an example of an engine a
“search engine” – the fundamental tool of applicant’s
affected services herein.
In addition to dictionary entries, the Trademark
Examining Attorney submitted with the first Office action
excerpts of articles retrieved from the Lexis/Nexis
database. However, of the five Nexis excerpts attached to
this initial Office action, four were drawn from newswire
service stories, and hence offer little probative value in
determining the alleged descriptive connotation of the term
to consumers in the United States. These brief “hits” add
nothing to the record beyond the fact already established
by the dictionary entries that in the current context,
“site engine” is virtually synonymous with “website
engine.”
With the continuing refusal of June 16, 2000, the
Trademark Examining Attorney attached a printout she
retrieved from the Wĕbopēdia site for the term “Search
Engine”:
A program that searches documents for
specified keywords and returns a list of the
documents where the keywords were found.
Serial No. 75/752,279
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Although search engine is really a general
class of programs, the term is often used to
specifically describe systems like Alta
Vista and Excite that enable users to search
for documents on the World Wide Web and
USENET newsgroups.
Typically, a search engine works by
sending out a spider to fetch as many
documents as possible. Another program,
called an indexer, then reads these
documents and creates an index based on the
words contained in each document. Each
search engine uses a proprietary algorithm
to create its indices such that, ideally,
only meaningful results are returned for
each query. (emphasis in original).
http://webopedia.internet.com/TERM/s/search_engine.html .
This Wĕbopēdia site also has fourteen additional web sites
with brief summaries of those related sites and hyperlinks
to these sites.
Finally, with the final Office action of September 7,
2001, the Trademark Examining Attorney submitted thirty-
five additional excerpts of articles retrieved from the
Lexis/Nexis database, of which sixteen lacked probative
value inasmuch as they were foreign publications and/or
newswire service stories. Several articles selected by the
Trademark Examining Attorney referred to automobile engines
or a variety of engines in the oil and gas industry. Of
the balance, the following are representative examples:
The eOne Group may never overtake IBM, but
if its new Web site engine succeeds the 18-
month-old company may one day be taken over
by the computer giant.
Serial No. 75/752,279
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…
… As the only Web site engine based solely
on the Java programming language, which is
becoming an Internet standard, it’s
compatible with most other computer …
(“Techno Stars eOne Group,” Omaha World
Herald, December 31, 2000).
As for the site itself, “the site engine is
already built and in the hands of traders
for testing,” Narea said… (“Two Loan Trading
Sites expect Launch soon,” Bank Loan Report,
June 19, 2000).
Such high usage is not peculiar to CE. Site
engines commonly garner between 20 and 50
percent of all scripts, said Kris Carpenter,
product manager for Excite … (“Search
Engines Seen as Key Site-Navigation Tools,”
Internet World, September 22, 1997).
Articles like the last two clearly use “site engine”
alone to mean “website engine” (where the word ‘Web” or
“web” does not immediately precede the words “site
engine(s)”). The last article, which quotes a manager of
Excite, makes it clear that the author is not referring to
just any software functionality, but means specifically
“website search engines.” Hence, we find that to the
extent it is clear that applicant’s services depend upon a
website search engines, then the designation “Site Engine”
would appear to be highly descriptive of the recited
services. Accordingly, we affirm the refusal of the
Trademark Examining Attorney to register on the ground of
the merely descriptive nature of the mark.
Serial No. 75/752,279
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Decision: We reverse the Trademark Examining Attorney
as to the requirement for a new recital of services. We
affirm the requirement for the designation of a domestic
representative and the refusal to register because the
matter is merely descriptive.