Targus Information Corporation

Trademark Trial and Appeal Board

Mar 31, 2009

No. 77203841 (T.T.A.B. Mar. 31, 2009)

Mailed: March 31, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Targus Information Corporation
________

Serial No. 77203841
_______

Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
LLP for applicant.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Grendel and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Targus Information Corporation (applicant) has filed
an application to register the mark ON-DEMAND LOCATION, in
standard character format, on the Principal Register for
services ultimately identified as “Business information
services, namely, providing client organizations with
statistical and demographic information about callers and
visitors to their web sites” in International Class 35.1

1 Serial No. 77203841, filed June 12, 2007, and alleging a bona
fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77203841
2
The trademark examining attorney has refused
registration on the ground that applicant’s proposed mark
ON-DEMAND LOCATION is merely descriptive within the meaning
of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
When the refusal was made final, applicant appealed
and requested reconsideration. The request for
reconsideration was found unpersuasive and this appeal was
resumed. Both applicant and the examining attorney have
filed briefs. We affirm the refusal to register.
The examining attorney maintains that the proposed
mark ON-DEMAND LOCATION is merely descriptive of
applicant’s business information services, namely,
providing client organizations with statistical and
demographic information about callers and visitors to their
web sites because it conveys to consumers that “the
services include the provision of location information” and
that “the information is provided ‘on demand’.” (Br. at
unnumbered p. 3).
In support of the refusal, the examining attorney
submitted the following definitions, in pertinent part
(emphasis supplied):
Ser No. 77203841
3
on-demand: Refers to stored content that users
can access whenever they want, as opposed to
live or one-time-only broadcast. (Netlingo).2

on-demand: On-Demand refers to a service or feature
which addresses the user’s need for instant
gratification and immediacy of use. (Wikipedia).3

on-demand computing: On-demand (OD) computing
is an increasingly popular enterprise model in
which computing resources are made available to
the user as needed. The resources may be
maintained within the user’s enterprise, or
made available by a service provider. The on-
demand model was developed to overcome the
common challenge to an enterprise of being able
to meet fluctuating demands efficiently.
Because an enterprise’s demand on computing
resources can vary drastically from one time to
another, maintaining sufficient resources to
meet peak requirements can be costly.
Conversely, if the enterprise cuts costs by
only maintaining minimal computing resources,
there will not be sufficient resources to meet
peak requirements. On-demand computing
products are rapidly becoming prevalent in the
marketplace. Computer Associates, IP, IBM,
Microsoft, and Sun Microsystems are among the
more prominent on-demand vendors. These
companies refer to their on-demand products and
services by a variety of names. IBM calls
theirs “On Demand Computing” (without the
hyphen). Concepts such as grid computing,
utility computing, autonomic computing, and
adaptive management seem very similar to the
concept of on-demand computing. Jason
Bloomberg, Senior Analyst with ZapThink, says
that on-demand computing is a broad category
that includes all the other terms, each of
which means something slightly different.
Utility computing, for example, is an on-demand

2 NetLingo Classification: Online Business term retrieved from
www.netlingo.com/lookup.cfm?term=on%demand (September 15, 2007).
(Office Action issued September 15, 2007).

3 http://en.wikipedia.org/wiki/On-demand (November 5, 2008).
(Denial of Request for Reconsideration issued November 5, 2008).
Ser No. 77203841
4
approach that combines outsourced computing
resources and infrastructure management with a
usage-based payment structure (this approach is
sometime known as metered services)
(Whatis.com).4

In addition to the definitions, the examining attorney
made of record printouts from applicant’s website
(www.tarusinfo.com) which discuss applicant’s services.
These materials indicate that applicant provides “A Wealth of
Knowledge at the Moment You Need it.” In addition, the
materials reference a suite of services, including those
provided under the mark ON-DEMAND LOCATION, and inform
potential consumers that “in a split second, you can access
our rich data and analytics to identify, verify, qualify and
locate the people who are interacting with your
organization.”
With particular regard to applicant’s ON-DEMAND LOCATION
services, the advertising states
Identify the Best Location Every Time
With TARGUSinfo On-DemandLocationSM
solutions, you can pinpoint a customer’s
location within a radius of 105 feet,
whether you’re routing callers or providing
your locations.

* * *

4 SearchDataCenter.com Definitions at
www.searchdatacenter.techtarget.com/sDefinition/0..sid80_gci90373
0.00.html (November 5, 2008). (Denial of Request for
Reconsideration issued November 5, 2008).

Ser No. 77203841
5
ON-DEMAND LOCATION
Frequently Asked Questions
* * *
How quickly can I get a single query
returned?
Query response speed varies with the type of
connection our customers select. Responses
to a single query are in sub-second time.

Applicant, in urging reversal of the refusal,
maintains that “[t]he words ‘ON DEMAND’ alone, and in
combination with the word ‘LOCATION’ are not merely
descriptive of Applicant’s services because Applicant’s
mark does not convey that Applicant’s services provide
information about location of consumers or that such
information is provided ‘on-demand’,” which applicant
suggests is commonly understood to mean ‘instantly
provided.’ (Br., pp. 2 and 3).
A mark is deemed to be merely descriptive of the
services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the services. In re Abcor Development
Corp., 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 services in order to be considered
merely descriptive; it is enough that the term describes
Ser No. 77203841
6
one significant attribute, feature or property of the
services. 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 services for which
registration is sought, the context in which it is being
used or intended to be used, and the possible significance
that the term would have to the average purchaser of the
services because of the manner of its use. In re Recovery,
Inc., 196 USPQ 830 (TTAB 1977).
When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial
impression. If each component retains its descriptive
significance in relation to the services, the combination
results in a composite that is itself descriptive. See,
e.g., In re Tower Tech, Inc. 64 USPQ2d 1314 (TTAB 2002)
[SMARTTOWER merely descriptive of commercial and industrial
cooling towers]; 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]; In re Putnam Publishing Co., 39
USPQ2d 2021 (TTAB 1996) [FOOD & BEVERAGE ONLINE merely
descriptive of news information services for the food
Ser No. 77203841
7
processing industry]; and In re Copytele Inc., 31 USPQ2d
1540 (TTAB 1994) [SCREEN FAX PHONE merely descriptive of
facsimile terminals employing electrophoretic displays].
We find that the mark sought to be registered is
merely descriptive of significant attributes of applicant’s
services, that is, that the services include the provision
of location information and that such information is
provided for immediacy of use, i.e., on-demand. Despite
applicant’s contentions to the contrary, the definitions
submitted by the examining attorney as well as applicant’s
own use of the term “on-demand” in the informational
material displayed on its website show that the term ON-
DEMAND directly describes an attribute of applicant’s
services, namely that the services are provided “when asked
for” and in a “split second.” For this reason, applicant’s
contention that its services are not provided “on-demand”
because they are offered to customers that sign up and
request them, is unpersuasive. Additionally, the term
“location” is descriptive in relation to applicant’s
services as evidenced by the disclaimer. Indeed, the web
pages from applicant’s website confirm that location
information is included in the statistical information
provided about applicant’s clients.
Ser No. 77203841
8
We also find that the individual words do not lose
this descriptiveness in the combination ON-DEMAND LOCATION.
While a combination of words may be registrable if it
creates a unitary mark with a unique, nondescriptive or
incongruous meaning, in this case each component of
applicant’s mark ON-DEMAND LOCATION retains its descriptive
significance when used in the combination, and the
combination as a whole is merely descriptive of applicant’s
services. Put simply, we perceive no incongruity in
applicant’s mark. As stated, when purchasers and
prospective purchasers encounter the designation ON-DEMAND
LOCATION in the context of applicant’s services, it is
clear that it would immediately inform these purchasers
that applicant’s services include the provision of location
information and that such information is provided when
requested.
We thus conclude that the designation ON-DEMAND
LOCATION, when used in connection with applicant’s business
information services, namely, providing client
organizations with statistical and demographic information
about callers and visitors to their web sites, is merely
descriptive of such services.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.