SofTimeline, LLC

Trademark Trial and Appeal Board

Aug 20, 2008

No. 78913298 (T.T.A.B. Aug. 20, 2008)

Mailed: August 20, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re SofTimeline, LLC
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Serial No. 78913298
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Kit M. Stetina of Stetina Brunda Garred & Brucker for
SofTimeline, LLC.

Esther A. Belenker, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
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Before Walters, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

SofTimeline, LLC, applicant, has filed an application
to register the mark VISUALTIMELINE PUBLISHING (in standard
character form) on the Principal Register for “computer
software for creating visual timelines” in International
Class 9.1 Upon request of the examining attorney, applicant
disclaimed PUBLISHING apart from the mark as shown.

1 Application Serial No. 78913298, filed on June 21, 2006, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a
bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 78913298
2
The examining attorney has 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 is merely
descriptive of its goods. After the examining attorney
made the descriptiveness refusal final, applicant filed
this appeal. Both applicant and the examining attorney
have filed briefs. We affirm the refusal to register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a significant
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services,
Serial No. 78913298
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only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the mark is
used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).
Finally, while a combination of descriptive terms may
be registrable if the composite creates a unitary mark with
a separate, nondescriptive meaning, In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968), the mere
combination of descriptive words does not necessarily
create a nondescriptive word or phrase. In re Associated
Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If
each component retains its descriptive significance in
relation to the goods or services, the combination results
in a composite that is itself descriptive. In re Oppedahl
& Larson LLP, supra.
Serial No. 78913298
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It is the examining attorney’s position that
applicant’s proposed mark VISUALTIMELINE PUBLISHING
“describes the function, purpose and use of the applicant’s
software, which is computer software for creating visual
timelines” and this “combination of descriptive terms
creates no incongruity, and no imagination is required to
understand the nature of its goods.” Br. pp. 11-12. In
support of her refusal, the examining attorney submitted
dictionary definitions for the words “visual,” “timeline”
and “publishing” set forth below:
Visual – seen or able to be seen by the eye;
visible. The American Heritage Dictionary of the
English Language (3d ed. 1992);

Timeline – 2a. A chronology. 2b. A
representation or exhibit of key events within a
particular historical period, often consisting of
illustrative visual material accompanied by
written commentary, arranged chronologically.
The American Heritage Dictionary of the English
Language (4th ed. 2000); and

Publishing – activity of preparing and producing
material in printed or electronic form for
distribution to the public.
http://encarta.msn.com.

In addition, she submitted excerpts of articles
retrieved from the Nexis database and printouts of several
webpages that contain the phrase “visual timeline.” A
representative sample are set forth below:
Within nine galleries, the show – taken from the
exhibition at Althorp, the former Lady Diana
Serial No. 78913298
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Spencer’s ancestral home in Northampton, England
– is a visual timeline of Diana’s life, starting
with childhood photos and home movies and
culminating with the trappings more associated
with the woman whose beauty, charm and
humanitarian works captivated a generation. “The
Lexington Herald Leader” (March 19, 2006);

The second disc’s extras include still-frame art
galleries, a visual timeline of Disney events
from 1941 to 1945, a vintage 1956 “Disneyland” TV
show “A Day in the Life of Donald Duck,” and a
10-minute, well-deserved tribute to the “Good
Duck Artist” creator Carl Barks... “The
Washington Times LLC” (January 14, 2006);

The green, purple and gold markers were in high
demand in Hensel’s classroom last week as
students worked together on visual timelines
depicting the history of the annual celebration.
“St. Petersburg Times (Florida)” (March 1, 2006);

Wilkinson, who now lives in Florida, primarily
works on murals. He recently finished one that
wraps around the center’s first-floor ballroom, a
visual timeline of Suffolk that starts with the
city’s colonial days. “Daily Press (Newport
News, Virginia) (September 7, 2006);

In spite of the book’s title, the timeline
section itself is limited to 16 pages only. The
purpose of a visual timeline as a tool for
tracing stylistic change is somewhat limited by
such cursory treatment. “TSL Education Limited”
(February 24, 2006);

Phillip Lessen has put together an interesting
visual timeline of Google’s homepage and the
expansion of its services at Google Blogoscoped
with screen captures of archived Google.com pages
in the Internet Archive’s Wayback Machine.
“Yahoo Visual Timeline 1996-2006”
searchenginejournal.com; and

San Diego Chargers ... Uniforms Visual Timeline
... The following images have been compiled by
Serial No. 78913298
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San Diego Chargers super fan ...
www.chargers.com/history/uniforms-visual.

Based on this evidence, she concludes that “visual
timeline” is generally understood by the public to mean “a
visual or pictorial presentation of chronologies or
events.” Br. p. 10.
The examining attorney also submitted several third-
party registrations for computer software that include the
word PUBLISHING which is disclaimed. This evidence
indicates the common use of the word PUBLISHING in the
computer software field and the USPTO’s treatment of it as
being descriptive in that field.
The examining attorney contends that taken together
the words VISUALTIMELINE PUBLISHING “immediately describe
the purpose of the applicant’s software, which is to create
pictorial chronologies of events for electronic
publication.” November 24, 2006 Office Action p. 2.
The record in this case clearly supports a finding of
mere descriptiveness of the phrase VISUALTIMELINE
PUBLISHING. As noted above, we determine the
descriptiveness of a term in the context of the goods or
services at issue, not in the abstract. In re Chopper
Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest,
Ltd., supra. Here, the goods are identified as “computer
Serial No. 78913298
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software for creating visual timelines.” Thus, the mark
immediately informs the consumer purchasing the software
that it allows the consumer to create a visual timeline.
Further, as shown by the third-party registrations, the
addition of “publishing” in the context of computer
software is similar to the addition of “publishing” to a
book publisher’s mark (e.g., Random House Publishing Group)
which has no source-indicating significance. See e.g.,
Reg. No. 2524048 for the mark LEXIS PUBLISHING owned by
Reed Elsevier Properties Inc., for, inter alia, computer
software featuring word processor programs; and Reg. No.
2668176 for the mark PERMANENT PUBLISHING owned by Everest
Domain Services, for, inter alia, computer database
management software for accepting electronic information
via a web-site on a global computer network.
We cannot agree with applicant that the examining
attorney has improperly dissected the mark in her analysis.
It is appropriate to analyze the separate terms and then to
view the mark in its entirety to understand whether the
separate terms retain their descriptiveness or are
transformed into a unique or incongruous combination. As
expressly stated in the June 30, 2006 Office Action, the
examining attorney made a conclusion regarding the mark as
a whole.
Serial No. 78913298
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Applicant relies on In re The House Store Ltd., 221
USPQ 92 (TTAB 1983), in support of its position that its
proposed mark is “too broad to describe [applicant’s]
related goods with particularity,” noting that goods and
services that may be described by VISUALTIMELINE PUBLISHING
include “hardware for printing timelines, books having
timelines included therein, and authors who publish
timelines.” Applicant concludes that the proposed mark “is
too broad to describe [applicant’s] goods with immediacy
and particularity.” Br. p. 13.
In The House Store, the Board found that the phrase
THE HOUSE STORE was suggestive of retail store services in
the field of furniture and housewares. In making its
finding, the Board found STORE to be an apt or descriptive
term for the services but found “a hint of incongruity and
fancy in the designation” HOUSE based on its broad
connotation which suggested a number of possibilities
(furniture stores, appliance stores, linen and drapery
stores etc.) rather than describing something “directly
related to a house as such.” Id. 93. Here, the word
PUBLISHING, in applicant’s mark, is more akin to STORE in
The House Store and does not create an incongruity.
Moreover, unlike the word HOUSE which conveyed a broader
connotation in the context of the recited services, the
Serial No. 78913298
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compressed phrase VISUALTIMELINE has a specific
connotation, “a visual or pictorial presentation of
chronologies or events.”
As to the argument that the proposed mark may describe
other goods and services, such as hardware or books, and
that it does not immediately convey that the goods include
computer software, as noted above, the determination of
whether a mark is merely descriptive is considered in
relation to the identified goods, not in the abstract.
Abcor, 200 USPQ at 218. In other words, the question is
not whether someone presented only with the mark could
guess what the goods are. Rather, the question is whether
someone who knows what the goods are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1327 (TTAB 1990); In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985). Accordingly, when viewing
VISUALTIMELINE PUBLISHING as a whole, we find the evidence
of record sets forth a prima facie case that such phrase is
merely descriptive. Thus, we are persuaded that when
applied to applicant’s goods, VISUALTIMELINE PUBLISHING
immediately describes, without need for conjecture or
Serial No. 78913298
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speculation, a significant feature or function of
applicant’s goods. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for prospective consumers of
applicant’s goods to perceive readily the merely
descriptive significance of VISUALTIMELINE PUBLISHING as it
pertains to applicant’s goods.
Decision: The refusal to register under Section
2(e)(1) is affirmed.