Strerling Commerce, Inc.

Trademark Trial and Appeal Board

May 31, 2000

No. 75308616 (T.T.A.B. May. 31, 2000)

Paper No. 13
CEW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB MAY 31, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sterling Commerce, Inc.
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Serial No. 75/308,616
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Stanley W. Sokoloff and Lori Boatright of Blakely,
Sokoloff, Taylor & Zafman for applicant.
Nancy L. Hankin, Senior Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
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Before Seeherman, Walters and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Sterling Commerce, Inc. has filed a trademark
application to register the mark COMMERCE:COMMUNITY for
“computer services, namely providing an interactive
computer database which enables users to access
information, facilitates the exchange of information among
users and allows users access to electronic forms,
electronic mail, database applications, administrative
tools, and information on products and ordering products
Serial No. 75/308,616
2
from sponsors of the web site; computer services namely
providing on-line facilities for real time interaction with
other computer users concerning topics relating to
electronic information services; computer services namely
providing an on-line bulletin board in the field of
electronic information services.”1
The Trademark Examining Attorney has finally 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 services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
As a preliminary matter, we address applicant’s
objections to evidence submitted by the Examining Attorney.
Because the Examining Attorney has withdrawn from the
record the evidence submitted with the first office action,
we have not considered that evidence.
The Examining Attorney submitted, with subsequent
actions, copies of third-party registrations, excerpts from
the LEXIS/NEXIS and Dialog databases and pages of
information downloaded from the Internet. We find this

1 Serial No. 75/308,616, in International Class 42, filed June 13, 1997,
based on an allegation of a bona fide intention to use the mark in
commerce in connection with the identified services.
Serial No. 75/308,616
3
evidence submitted by the Examining Attorney to be properly
of record and adequately identified for our consideration.
However, we also agree with the applicant’s criticism
of the Internet evidence and of the LEXIS/NEXIS and Dialog
evidence. The Dialog excerpts are so short, some of them
consisting only of phrases, that it is difficult to
determine their context; the “Computer Select” information
of March, 1998 from the Internet is either insufficiently
identified or comprises information that appears to be from
a newswire-type service; and a substantial number of the
LEXIS/NEXIS and Dialog excerpts are from newswire services
or foreign publications. As such, this evidence is of
little probative value in determining the meaning of the
terms to the average American consumer.
Additionally, we note that, except in a very few
instances, none of the excerpts or third-party
registrations shows the phrase “commerce community.”
Rather, the majority of excerpts use one term or the other
and, even then, in conjunction with other terms, i.e.,
“electronic commerce,” “Internet commerce,” and “virtual
community.” A number of excerpts show phrases, such as
“Internet commerce community.”

Serial No. 75/308,616
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The Examining Attorney contends that “the phrase
‘commerce community’ refers to individuals, organizations
and other entities selling products over the Internet”; and
that the phrase “is clearly descriptive of … applicant’s
services, namely, putting people and businesses together
for the purpose of buying and selling over the Internet.”
Applicant contends that the phrase “commerce
community,” is not a shortened version of phrases such as
“Internet commerce community”; that there is a degree of
ambiguity to the phrase; and that the colon in applicant’s
mark, COMMERCE:COMMUNITY, creates a different commercial
impression than simply the phrase “commerce community.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a 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 Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, 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
Serial No. 75/308,616
5
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
Based on the record before us, we cannot reach the
conclusion argued by the Examining Attorney. Not only do
we find insufficient evidence to support the conclusion
that the phrase “commerce community” is merely descriptive,
but we find that the colon in applicant’s mark,
COMMERCE:COMMUNITY, gives the mark a different commercial
impression that renders it, at most, suggestive in
connection with the identified services. Thus, we find
that the phrase COMMERCE:COMMUNITY is not merely
descriptive in connection therewith. It requires some
thought to determine the nature of applicant’s services or
at least a feature of those services.
To the extent that our determination on this issue is
not free from doubt, that doubt is resolved in applicant’s
behalf and the mark should be published for opposition.
See, In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB
1984) and cases cited therein.
Serial No. 75/308,616
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Decision: The refusal under Section 2(e)(1) of the
Act is reversed.
E. J. Seeherman
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board