The Board of Regents of the University of Nebraska of Varner Hall

Trademark Trial and Appeal Board

Jun 19, 2002

No. 75766621 (T.T.A.B. Jun. 19, 2002)

Mailed: June 19, 2002
Paper No. 18
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Board of Regents of the University of Nebraska of
Varner Hall, assignee of Nebraska Technology Development
Corporation1
________

Serial No. 75/766,621
Serial No. 75/766,623
_______

Christopher M. Goff and Laura R. Polcyn of Senniger,
Powers, Leavitt & Roedel for applicant.

Rebecca A. Smith, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On August 3, 1999, applicant filed two applications,
both to register on the Principal Register the mark shown

1 The original applicant, Nebraska Technology Development
Corporation, assigned both involved applications to The Board of
Regents of the University of Nebraska of Varner Hall, and
recorded the assignment document with the Assignment Branch of
the USPTO. See Reel 2047, Frame 0234.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 75/766621 & 75/766623
2
below. In addition, both applications include a disclaimer
of “.com,” and the following description of the mark: “The
mark comprises the letter C next to a globe, with the words
CLASS.COM printed beneath said logo.”

Application Serial No. 75/766,621 was originally based
on claimed use dates of October 1998, but in applicant’s
June 23, 2000 response, it requested that the basis be
changed from Section 1(a) of the Trademark Act to Section
1(b), claiming a bona fide intention to use the mark, which
was accepted by the Examining Attorney pursuant to
Trademark Rule 2.34(a)(2)(i). See also, TMEP §806.03(c)
(Third Edition 2002). The goods and services involved in
that application were amended several times and
ultimately were set forth as follows:
“educational software featuring courses
of instruction at the high school level
rendered remotely via a global computer
network on a private, independent-
study, single-student basis” in
International Class 9; and

“educational services, namely,
providing courses of instruction at the
high school level rendered remotely via
a global computer network on a private,
Ser. Nos. 75/766621 & 75/766623
3
independent-study, single-student
basis” in International Class 41.

Application Serial No. 75/766,623 was originally based
on applicant’s assertion of a bona fide intention to use
the mark in commerce, and that remains the basis of the
application. The goods involved therein were amended
several times and ultimately were set forth as follows:
“printed instructional materials,
namely instructional course materials
in the fields of high school
equivalency diploma certification and
high school education for use in
connection with courses of instruction
rendered remotely via a global computer
network on a private, independent-
study, single-student basis” in
International Class 16.

Registration has been finally refused in each
application under Section 6(a) of the Trademark Act, 15
U.S.C. §1056(a), on the basis of applicant’s failure to
comply with a requirement to disclaim the words
“CLASS.COM.” Such term, according to the Examining
Attorney, is merely descriptive of applicant’s goods and
services within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), and therefore must be
disclaimed. However, in view of applicant’s disclaimer of
“.com,” and as the Examining Attorney stated in her briefs
on appeal, “the only issue on appeal is the requirement for
the disclaimer of the term CLASS.” (Briefs, p. 2.)
Ser. Nos. 75/766621 & 75/766623
4
Applicant has appealed, and briefs have been filed in
each application. Applicant did not request an oral
hearing in either application.
Because the applications involve common questions of
law and fact, and in the interests of judicial economy, we
have consolidated the appeals for purposes of final
decision. Thus, we have issued this single opinion.
It is the Examining Attorney’s position that the term
‘CLASS’ is merely descriptive of a feature of applicant’s
goods and services. That is, applicant offers classes or
courses of instruction which are available through its
computer software; that applicant’s instructional course
materials are used to teach classes; and that applicant’s
educational service involves providing courses or classes.
As evidence in support of her position, the Examining
Attorney submitted (i) the following dictionary definition
of the term “class” from The American Heritage Dictionary
(1992): “4. b. a group of students who meet at a regularly
scheduled time to study the same subject. c. the period
during which such a group meets: had to stay after class”;
and (ii) printouts of excerpted stories retrieved from the
Nexis database to demonstrate that the term “class” is used
synonymously with the term “course” to mean educational
classes, as well as additional Nexis stories to demonstrate
Ser. Nos. 75/766621 & 75/766623
5
that “class” is often used to refer to on-line courses or
classes. Some representative examples of these stories are
set forth below (emphasis added):
Headline: Area School Districts Plan
United Push for More State Aid
...For example, the state guidelines
are based on high schools using a six-
period day. But as districts have
pushed students to take more rigorous
courses, schools have added more
periods to fit those classes into the
school day....
“The Washington Post,” September 6,
2000;

Headline: Irish Dance Classes Are
Stepping Into Suburbs
Lake in the Hills and the Hampshire
Park District will team up to offer
Irish step dance classes beginning
Wednesday. They are among the latest
to bring Irish dance courses,...
“Chicago Tribune,” September 5, 2000;

Headline: Hanahan Students Celebrate
Jump in SAT Scores
Turner and Cross Principal Figgins
Frayer plan to offer enrichment
courses, possibly during the summer,
for students who are serious about
college. Those classes will
concentrate on English and math skills.
“The Post and Courier” (Charleston,
SC), September 5, 2000;

Headline: Playing at the Fair;
Politiking [sic] for the Eager
...Higher Education is reporting an
impressive gain in the number of people
taking college courses over the
Internet. According to the IBHE, the
number of enrollees this spring in the
Illinois Virtual Campus – 26,214 – is
Ser. Nos. 75/766621 & 75/766623
6
almost double the number of students
who took on-line classes last fall.
“The Pantagraph” (Bloomington, IL),
August 20, 2000; and

Headline: Atlanta Public School
Students Taking On-Line Classes at Home
...District educators have developed
several on-line classes – including
algebra I, algebra II, advanced
placement language arts and economics –
that will count toward graduation. The
courses cost $275 each.
The state’s largest school district is
the first in Georgia to offer on-line
courses developed by its educators to
all of its high school students.
Students at about 20 Georgia high
schools take on-line classes through
the Virtual High School project, a
Concord, Mass.-based program developed
with a federal grant to offer
challenging Web-based courses.
“The Washington Times,” August 11,
2000.

Applicant maintains that the term ‘CLASS’ is
suggestive and does not immediately convey the nature of
applicant’s goods and services because the term has
numerous definitions; that the term “class” carries a
suggestive double entendre suggesting applicant’s goods and
services are “high quality” or the “best of their kind”;
that applicant does not offer courses to a traditional
group of students meeting together at a single location;
and that any doubt as to mere descriptiveness is resolved
in applicant’s favor.
Ser. Nos. 75/766621 & 75/766623
7
In support of its position applicant referenced two
different dictionaries to show the multiple meanings of the
term “class.” In applicant’s June 23, 2000 response
(unnumbered p. 4) applicant sets forth 10 definitions of
the term from Webster’s New Collegiate Dictionary,
including the following:
“(1) a group sharing the same economic
or social status (i.e., the working
class); (2) social rank, especially
high social rank; (3) high quality
(elegance); (4) a course of
instruction; (5) a body of students
meeting regularly to study the same
subject, or the period during which
such a body meets; (6) a body of
students or alumni whose year of
graduation is the same....”

In applicant’s brief (p. 4) applicant sets forth 13
definitions of the term from Merriam-Webster’s Collegiate
Dictionary, including the following:
“(1) a body of students meeting
regularly to study the same subject;
(2) the period during which such a body
meets; (3) a course of instruction; (4)
a body of students or alumni whose year
of graduation is the same; (5) a group
sharing the same economic or social
status (i.e., the working class); (6)
social rank, especially high social
rank; (7) high quality (elegance)....

The other evidence submitted by applicant consists of
photocopies of USPTO database records of eight third-party
registrations to show how the USPTO “has decided analogous
Ser. Nos. 75/766621 & 75/766623
8
cases.” (Reply brief, p. 2.) Applicant explained that
“[s]ignificantly, none of these examples disclaim the term
CLASS or COURSE, and none were issued under the provisions
of Section 2(f).” (Emphasis in original.) (Reply brief, p.
3.) Evidence submitted for the first time with the reply
brief is untimely and will not be considered. See
Trademark Rule 2.142(d). However, even if this evidence
had been considered, we point out that in seven of the
eight third-party registrations the involved mark was
presented as one word with no space, or with a hyphen or a
period (i.e., “dot”) between the words. Therefore,
standard USPTO disclaimer policy would be that a disclaimer
is not generally required in those situations. See TMEP
§§1213.05(a) and (a)(ii). The remaining third-party
registration is for the mark QUICK COURSE (Reg. No.
1,699,808), and it, in fact, does include a disclaimer of
the word “CLASS.”
Moreover, we note applicant’s specimens submitted in
application Serial No. 75/766,621 (originally based on
claimed dates of first use, but later amended to be based
on applicant’s assertion of a bona fide intention to use
the mark in commerce). The specimens appear to be
printouts from applicant’s website, carrying the title
“CLASS.COM Preliminary Website”; and including statements
Ser. Nos. 75/766621 & 75/766623
9
such as the following: “CLASS.COM will offer complete
online high school courses, course services...,” and “These
courses are now in use as part of an accredited online high
school operated by the Division of Continuing Studies
Independent Study High School at the University of
Nebraska-Lincoln.”
It is well settled that a term or phrase is considered
merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it immediately conveys information
concerning a significant ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Moreover, whether a term or phrase is merely descriptive is
determined in relation to the goods or services for which
registration is sought. See In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979). See also, In re Consolidated Cigar
Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
The Examining Attorney has established the
significance or meaning of the term ‘CLASS,’ as merely
descriptive of a significant feature of applicant’s goods
and services, specifically, that applicant provides
Ser. Nos. 75/766621 & 75/766623
10
consumers with a “class” in the context of applicant’s
educational services, educational software and its
education instructional materials. In fact, the fourth
listed definition in Webster’s dictionary and the third
definition in Merriam-Webster’s dictionary of “class,”
submitted by applicant, both support that fact -- “a course
of instruction.”
Applicant’s argument that the term has multiple
meanings (e.g., social or economic status, high quality,
alumni who graduated the same year) is simply not
persuasive as the Board must consider the question of mere
descriptiveness not in a vacuum, but in the context of the
identified goods and services. Further, applicant’s
argument that the mark has a double entendre is essentially
relating the term “class” specifically to one of the many
definitions thereof--that is, high quality, elegance. This
is not so much a double entendre as it is simply
emphasizing one of the numerous meanings already argued by
applicant.
Applicant’s argument that its identified goods and
services do not involve “a body of students meeting
regularly to study the same subject” is unpersuasive of a
different result herein. It is clear that applicant’s
goods and services, as identified, will be used or offered
Ser. Nos. 75/766621 & 75/766623
11
through the Internet and not in a traditional “brick and
mortar” school. However, the “body of students meeting
together..” is simply one of the definitions of “class”.
The record is clear that “class” also means “a course of
instruction” which is clearly involved in applicant’s goods
and services. The method by which the goods and services
are offered is not determinative, especially where, as
here, the Examining Attorney has submitted several stories
retrieved from Nexis establishing that it is commonly
understood that a person may individually take an online
course or class.
The Examining Attorney has established that “class” is
a merely descriptive term in the relevant fields involved
in applicant’s goods and services. Applicant has not
overcome the Examining Attorney’s evidence of the ordinary
meaning of the term “class” in relation to applicant’s
identified goods and services. See In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987)(Court affirmed the Board’s decision on a requirement
for a disclaimer of the merely descriptive term “FirsTier”
for banking services); In re Lean Line, Inc., 229 USPQ 781
(TTAB 1986) (requirement for a disclaimer of the merely
descriptive term “lean” for a variety of low calorie foods
affirmed); In re IBP, Inc., 228 USPQ 304 (TTAB 1985)
Ser. Nos. 75/766621 & 75/766623
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(requirement for a disclaimer of the merely descriptive
terms “select trim” for pork affirmed); and In re
Truckwriters Inc., 219 USPQ 1227 (TTAB 1983), aff’d
unpubl’d Appeal No. 84-689 (Fed. Cir., November 1, 1984)
(requirement for a disclaimer of the merely descriptive
term “writers” for insurance agency services affirmed).
As our primary reviewing court stated in Dena Corp. v.
Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d
1047, 1051 (Fed. Cir. 1991):
The Lanham Act’s disclaimer requirement
strikes a statutory balance between two
competing trademark principles. On the
one hand, it provides the benefits of
the Lanham Act to applicants for
composite marks with unregistrable
components. On the other hand, the Act
prevents an applicant from claiming
exclusive rights to disclaimed portions
apart from composite marks. The
applicant’s competitors in the same
trade must remain free to use
descriptive terms without legal
harassment. DeWalt, Inc. v. Magma
Power Tool, 289 F.2d 656, 662, 129 USPQ
275, 281 (CCPA 1961). By encouraging
definition of the rights claimed in a
composite mark, the Act discourages
unnecessary litigation.

Decision: The requirement under Section 6 for a
disclaimer of the term ‘CLASS’ is affirmed in each
application. However, this decision will be set aside and
the marks published for opposition if applicant, no later
than thirty days from the mailing date hereof, submits an
Ser. Nos. 75/766621 & 75/766623
13
appropriate disclaimer of ‘CLASS’ in the applications. See
Trademark Rule 2.142(g).