TechnoMile LLC

Trademark Trial and Appeal Board

Feb 16, 2018

No. 86951231 (T.T.A.B. Feb. 16, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 16, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re TechnoMile LLC
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Serial No. 86951231
_____

Phillip Thomas Horton of The Law Office of Phillip Thomas Horton,
for TechnoMile LLC.
Brian Pino, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Kuhlke, Bergsman and Hightower,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
TechnoMile LLC (“Applicant”) seeks registration on the Principal Register of the
mark GOVCON SUITE (in standard characters) for “software as a service (SAAS)
services featuring software for use in database management in the field of
government contracting,” in Class 42.1

1 Application Serial No. 86951231 was filed on March 24, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as March 16, 2016.
Serial No. 86951231
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 2(e)(1), on the ground that
GOVCON SUITE is merely descriptive because it is comprised of two descriptive
terms that retain their descriptive significance when used in connection with
Applicant’s services. In addition, the Trademark Examining Attorney issued a final
requirement for information regarding Applicant’s services pursuant to Trademark
Rule 2.61(b), 37 C.F.R. § 2.61(b).
After the Trademark Examining Attorney made the refusal and requirement
final, Applicant appealed to this Board. We affirm the refusal to register and the
requirement for information.
I. Preliminary Issues
A. Applicant’s amendment to the Supplemental Register, in the
alternative, set forth in its Brief.
Applicant, in its Brief, requested that the Board amend the application to the
Supplemental Register if we find that GOVCON SUITE is merely descriptive.2 An
applicant may not amend to the Supplemental Register after the Board has affirmed
a refusal of registration on the Principal Register. See Trademark Rule 2.142(g),
37 C.F.R. § 2.142(g) (“An application which has been considered and decided on
appeal will not be reopened except for the entry of a disclaimer under section 6 of the
Act of 1946 or upon order of the Director, but a petition to the Director to reopen an
application will be considered only upon a showing of sufficient cause for

2 Applicant’s Brief, p. 13 (4 TTABVUE 14).
Serial No. 86951231
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consideration of any matter not already adjudicated.”). After having elected one of
the remedies available for contesting the basis for the refusal, namely, appeal rather
than amendment to the Supplemental Register, and having pursued the remedy to a
conclusion, the applicant may not change course to elect a different remedy. See In
re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016) (once final decision
rendered, request to amend to Supplemental Register not possible); In re Phillips-
Van Heusen Corp., 63 USPQ2d 1047, 1047 n.2 (TTAB 2002) (request in applicant’s
brief that if the refusals are maintained the application be amended to the
Supplemental Register denied because application which has been decided on appeal
will not be reopened).
B. Late filed evidence.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that “[t]he record in the
application should be complete prior to the filing of an appeal. Evidence should not
be filed with the Board after the filing of a notice of appeal.” Nevertheless, Applicant
attached to its brief an advertising brochure (4 TTABVUE 18-22) and six third-party
registrations consisting of the word “Suite” in connection software (4 TTABVUE 23-
28).3 The Trademark Examining Attorney, in his brief, objected to that evidence on

3 Although we have not considered this evidence in reaching our decision, we observe that
the word “Suite” is disclaimed in two of the registrations and one is registered under Section
2(f) of the Trademark Act, 15 U.S.C. § 1052(f). In the other three registrations, the word
“Suite” is part of a compound word (e.g., TRAFFICSUITE and OFFICESUITE). If a
compound word mark consists of an unregistrable component and a registrable component
combined into a single word, no disclaimer of the unregistrable component of the compound
word will be required. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981)
(finding that “[a] disclaimer of a descriptive portion of a composite mark is unnecessary . . .
if the elements are so merged together that they cannot be regarded as separable elements.
Serial No. 86951231
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the ground that it was not made of record prior to the appeal.4 The objection is
sustained and the evidence attached to Applicant’s brief is not considered. See In re
Fiat Grp. Mktg. & Corp Commc’n S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014); In re
Pedersen, 109 USPQ2d 1185, 1189 (TTAB 2013).
II. Trademark Rule 2.61(b) requirement for information.
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), provides that “[t]he Office may
require applicant to furnish such information, exhibits, affidavits or declarations, and
such additional specimens as may be reasonably necessary to the proper examination
of the application.”
In his July 7, 2016 and January 25, 2017 Office Actions, the Trademark
Examining Attorney required Applicant to explain whether the terms GOVCON,
SUITE or GOVCON SUITE have any significance as applied to the Applicant’s
services, or any significance in the relevant industry or trade, other than as a service
mark. Applicant did not respond to the requirement for such information as initially
set forth in the former Office Action or as made final in the latter Office Action.
Applicant has a duty to respond to an information requirement. See Star Fruits
S.N.C. v. United States, 393 F.3d 1277, 73 USPQ2d 1409, 1415 (Fed. Cir. 2005) (“So
long as there is some legitimate reason for seeking the information . . . the applicant
has a duty to respond.”). If the applicant does not believe that it has relevant
information, applicant should submit a statement to this effect. In re Planalytics, Inc.,

. . for example, . . . by combining two words or terms, one of which would be unregistrable by
itself . . .”).
4 Trademark Examining Attorney’s Brief (6 TTABVUE 3).
Serial No. 86951231
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70 USPQ2d 1453, 1457 n.2 (TTAB 2004). An applicant’s failure to respond to an
information requirement is grounds for refusal. See In re Harley, 119 USPQ2d 1755,
1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief
failed to address the relevant refusals, including a refusal based on noncompliance
with a requirement for information); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701
(TTAB 2003) (“The Trademark Rules of Practice have the effect of law, and failure to
comply with a request for information is grounds for refusal of registration.”); In re
SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (finding registration properly refused
where applicant ignored information requirement).
We find that the information requirement was reasonably necessary to the proper
examination of the application, as stated in Trademark Rule 2.61(b), because the
information is directly relevant to the issue of whether GOVCON SUITE is merely
descriptive. Applicant has not argued otherwise. In view of the above, the refusal to
register Applicant’s mark because Applicant failed to respond to the Trademark Rule
2.61(b) final requirement for information is proper and is affirmed.5

5 While we are able to review the record to determine whether GOVCON SUITE is merely
descriptive without the benefit of Applicant’s response to the information requirement,
Applicant’s failure to respond to the requirement permits us to draw an adverse evidentiary
inference regarding the issue to which the requirement was directed. See In re AOP LLC, 107
USPQ2d 1644, 1651 (TTAB 2013) (because applicant had failed to comply with examining
attorney’s information requirement, “to the extent there is any ambiguity regarding the
origin and certification of applicant’s goods we address both [merely descriptive and
deceptively misdescriptive] refusals in the alternative based on the presumption that had
applicant directly and fully responded to the examining attorney’s inquiries, the responses
would have been unfavorable”); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB
2008) (making factual presumptions unfavorable to applicant in considering alternative
statutory refusals under §§ 2(e)(2) and 2(e)(3), in view of applicant’s failure to comply with
examining attorney’s requirement for information as to the geographic origin of the goods).
Serial No. 86951231
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In view of our decision with respect to the Trademark Rule 2.61(b) requirement,
we deem the substantive Section 2(e)(1) mere descriptiveness refusal to be moot.
Applicant’s failure to comply with the Trademark Rule 2.61(b) requirement is a
sufficient basis, in itself, for affirming the refusal to register applicant’s mark. See In
re DTI P’ship LLP, 67 USPQ2d at 1702. Nevertheless, for purposes of completeness,
we consider the Section 2(e)(1) refusal.
III. Whether GOVCON SUITE is merely descriptive?
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
Serial No. 86951231
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guesswork, and we must consider “the context in which [the mark] is being used, 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 or intended use.” In re Chamber
of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d
at 1831). In other words, we evaluate whether someone who knows what the goods or
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012); In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive 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.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d at 1318 (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 developing and deploying application programs); In re Putman Publ’g. Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
Serial No. 86951231
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On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363
(SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing
head at one end, the head being of solid uninterrupted construction without prongs”).
In this regard, “incongruity is one of the accepted guideposts in the evolved set of
legal principles for discriminating the suggestive from the descriptive mark.” In re
Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199 USPQ at 498
(the association of applicant’s mark TENNIS IN THE ROUND with the phrase
“theater-in-the-round” creates an incongruity because applicant’s services do not
involve a tennis court in the middle of an auditorium). Thus, we must consider the
issue of descriptiveness by looking at the mark in its entirety.
“GOVCON” is an abbreviation of the term “Government Contractor.” Applicant’s
specimen of use uses GovCon as an abbreviation for “Government Contractor”:
GovCon Suite Built 100% on Salesforce
* * *
Built 100% on Salesforce, GovCon Suite offers a Complete
Solution for Government Contractors to not just manage
their pipeline but to generate one.
The Trademark Examining Attorney submitted the evidence listed below to show
“GOVCON” used as an abbreviation for “Government Contractor”:
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• Acronym Finder (acronymfinder.com) identifies “GovCon” as “Government
Contractor.”6
• A copy of Registration No. 4698731 for the mark TORCHWOOD GOVCON
for, inter alia, “consulting in the field of procuring government contracts for
the purchase of goods and labor contracting services,” with Registrant
disclaiming the exclusive right to use “GOVCON.”7
• An excerpt from the R3BusinessSolutions website (r3bsolutions.com) that
reads as follows:
R3 GovCon Suite
Solutions for a Better GovCon Workplace
R3 helps GovCon organizations achieve better results by
improving their way of working. …8
* * *
Contract Management for GovCon
R3 Contract Management for GovCon is a practical,
flexible and affordable software solution designed
specifically for small to mid-size Federal Government
Contractors. …
GovCon Program Management
Program Management in GovCon organizations is
challenging work because the structured requirements of

6 July 7, 2016 Office Action (TSDR 7). References to the TSDR database are to the .pdf
version.
7 July 7, 2016 Office Action (TSDR 37).
8 January 25, 2017 Office Action (TSDR 11).
Serial No. 86951231
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Federal contracting and the fact that contracts/programs
are almost always different. …9
• An excerpt from the GovConWire website (govconwire.com) that reports on
government contracts.10 The website provides the following information:
About GovConWire
The premier source of breaking business news for the
government contracting industry, GovConWire provides
informative, to-the-point stories of the most significant
contract awards, top-level executive moves, M&A activities
and financial results of the sector’s most notable players.
GovConWire is always on top of the most recent
contracting activities and is updated in real time as the
news breaks.11
• An excerpt from the GovCon 360° website (govcon360.com) reporting on
government contracting.12 For example,
2015 Greater Washington Government Contractor Awards
Nominations
Nominations for the 2015 Greater Washington
Government Contractor Awards are now open. Be a part of
the premier celebratory event honoring the leadership,
innovation and commitment to the excellence of the people
and businesses in the region’s government contracting
community by nominating outstanding GovCon businesses
and executives.
• An article posted on the Washington Technology website
(washingtontechnology.com):

9 Id. at TSDR 13.
10 January 25, 2017 Office Action (TSDR 20-31).
11 Id. at TSDR 31.
12 January 25, 2017 Office Action (TSDR 32-33).
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Former CGI exec named to GovCon hall of fame
Donna Morea, the former president of CGI Technologies
and Solutions, is the first female named to the Greater
Washington Government Contractor Hall of fame for her
contributions to the industry.13
• An excerpt from the Tysons Regional Chamber of Commerce website
(tysonschamber.org):
GovCon Council
The Tysons Corner area has a long history as the home for
many firms operating in the federal and state sectors. …
Now, with the list of contracting firms in Tysons measuring
in the hundreds, it was logical for the Tysons Regional
Chamber of Commerce to form its Government Contractor
Council.14
• The “FAQs for the GovConNet Procurement Conference” sponsored by the
Montgomery County Chamber of Commerce (montgomerycountychamber
.com) providing information regarding a government contracting conference
including information about “GovCon Software,” federal procurement, and
a state, local and department tracks.15
Who can benefit from attending the GovNet Procurement
Conference?
Those businesses ready to do business with federal, state
and local governments, primes and each other. Also,
businesses that support the government contracting
community e.g. service providers.16

13 January 25, 2017 Office Action (TSDR 34-42).
14 January 25, 2017 Office Action (TSDR 43).
15 January 25, 2017 Office Action (TSDR 44-46).
16 Id. at TSDR 45.
Serial No. 86951231
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• An article posted on the Marketwired website (marketwired.com)
September 27, 2016:17
NeoSystems GovCon Experts and Fed Pubs Launch
Financial Management System “Health Checkup” and
Diagnostics for Government Contractors
NeoSystems Corp, a leading provider of managed services
… Hosting and Strategic Systems Integration Consulting
Services, is pleased to announce that it is launching an
initiative to help government contractors to assess their
business systems and operational health then provide
corresponding pro-active recommendations to thrive in
these challenging times. NeoSystems’ experts, with over
300 cumulative years of experience in GovCon accounting,
project management, and compliance, are providing a free
online operational health survey, providing diagnostic
grades, expert advice, and then will host a complimentary
webinar “Business Health Systems Check” on Monday,
October 3, 2016, from 12 pm-1pm EDT.18
The word “Suite” is defined, inter alia, as “Computers. a group of software
programs sold as a unit and usually designed to work together.”19 In addition, the
Trademark Examining Attorney submitted copies of 11 third-party registrations
consisting in part of the word “Suite” used in connection with software-as-a-service
where the registrants disclaimed the exclusive right to use the word “Suite.” It is
proper to consider these registrations as a form of a dictionary definition. Institut
National des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d

17 January 25, 2017 Office Action (TSDR 47-50).
18 Id. at TSDR 48.
19 Dictionary.com based on the Random House Dictionary (2018). The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010).
Serial No. 86951231
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1190, 1196 (Fed. Cir. 1992) (third-party registrations show the sense in which a word
is used in ordinary parlance and that a particular term has descriptive significance
as applied to certain goods or services); Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978) (“we find no error in
the citation of nine third-party registrations ‘primarily to show the meaning of * * *
[‘zing’] in the same way that dictionaries are used’”); Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 91, 189 USPQ 693, 694 (CCPA 1976) (third-party registrations “may
be given some weight to show the meaning of a mark in the same way that
dictionaries are used”).
When the terms GOVCON and SUITE are combined to form the mark GOVCON
SUITE used in connection with “software as a service (SAAS) services featuring
software for use in database management in the field of government contracting,”
each term, GOVCON and SUITE, retain its individual, descriptive meanings and
directly convey that the composite GOVCON SUITE refers to government contracting
software. The combined terms do not create an incongruous term or a mark with a
non-descriptive meaning. In other words, there is no imagination or multiple step
reasoning necessary for a consumer of government contracting software to
understand that GOVCON SUITE describes the purpose, function and user of
Applicant’s software.
Applicant argues that GOVCON SUITE is not merely descriptive under the three-
part test set forth in No Nonsense Fashions, Inc. v. Consol. Food Corp., 226 USPQ
502 (TTAB 1985), that includes competitors’ need to use the mark and use of the mark
Serial No. 86951231
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by competitors. However, as pointed out by the Trademark Examining Attorney
during the prosecution of the application and its appeal brief, the No Nonsense
Fashions test has been rejected. See In re Carlson, 91 USPQ2d 1198, 1203 (TTAB
2009).
Since this decision issued in 1985, there have been
numerous decisions from the Court of Appeals for the
Federal Circuit and the Board making clear that the test
for descriptiveness is whether a term “immediately conveys
knowledge of a quality, feature, function, or characteristic
of the goods or services with which it is used.” In re Bayer
Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay,
820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987).
Further, with respect to applicant’s statement that “the
Examiner has also failed to show that any competitor has
used, or will ever have need to use, the terms
URBANHOUZING or HOUZING in connection with real
estate services,” brief, pp. 5-6, the test for descriptiveness
is set out in the preceding sentence. There is no
requirement that the Office prove actual competitor use or
need; it is well established that even if an applicant is the
only user of a merely descriptive term, this does not justify
registration of that term. See In re BetaBattInc., 89
USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems,
Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson,
225 USPQ 790, 792 (TTAB 1985).
In re Carlson, 91 USPQ2d at 1203.
We find that the mark GOVCON SUITE is merely descriptive when used in
connection with “software as a service (SAAS) services featuring software for use in
database management in the field of government contracting.”
Decision: The refusals to register Applicant’s mark GOVCON SUITE are
affirmed.