Tod Reed Arbutina

Trademark Trial and Appeal Board

Dec 28, 2020

88219477 (T.T.A.B. Dec. 28, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tod Reed Arbutina
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Serial No. 88219477
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John W. McIlvaine of The Webb Law Firm,
for Tod Reed Arbutina.
Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, and Greenbaum
and Johnson, Administrative Trademark Judges.

Opinion by Johnson, Administrative Trademark Judge:
I. Background
Tod Reed Arbutina (“Applicant”) seeks registration on the Principal Register of
the mark DIGITAL ASSET COOPERATIVE (CO-OP),1 in standard characters (“the

1 Application Serial No. 88219477, filed on December 6, 2018, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to
use the mark in commerce.

Page references to the application record are to the downloadable .pdf version of the United
States Patent and Trademark Office’s (“USPTO” or “Office”) Trademark Status & Document
Retrieval (TSDR) system. Citations to the briefs on appeal are to TTABVUE, the Board’s
online docketing system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
Serial No. 88219477
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Applied-For Mark”), as a mark for “cooperative advertising and marketing services
for advertising members’ shared digital assets in virtual e-commerce marketplaces in
exchange for subscriber revenues and any other direct or in-direct forms of payment,”
in International Class 35.
The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the Applied-For Mark
is merely descriptive of Applicant’s services.2 Applicant filed a Request for
Reconsideration3, and the Examining Attorney denied the request. Nearly three months
later, Applicant filed a Notice of Appeal4. The case has been briefed. We affirm the
refusal.
II. Law, Evidence, and Analysis
A. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act prohibits the registration of a mark which,
when used on or in connection with an applicant’s goods or services, is merely
descriptive of them. “A term is merely descriptive 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

number, and any number(s) following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
2 Examining Attorney’s Brief, 6 TTABVUE 3.
3 March 3, 2020 Request for Reconsideration After Final Action at 1-4.
4 Notice of Appeal, 1 TTABVUE. The next day, Applicant filed a Petition to the Director “to
Revive an Abandoned Application for failure to timely respond to an Office Action due to the
COVID-19 outbreak.” June 2, 2020 Petition to Director at 1-7. The petition was dismissed
several months later. Nov. 4, 2020 Petition Decision at 1-2.
Serial No. 88219477
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USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987). Descriptiveness is analyzed in relation to an
applicant's identified goods or services, “the context in which the [term] 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”; that a term
may have other meanings in different contexts is not controlling. In re Bayer
Aktiengesellschaft, 82 USPQ2d at 1831. And, descriptiveness is not considered in the
abstract. Id. The question is whether someone who knows what the goods or services
are will understand the term to convey information about them. DuoProSS Meditech
Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012).
As here, when two or more merely descriptive terms are combined, the
determination of whether the composite mark is also merely descriptive turns on
whether the combination of terms evokes a new and unique 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. See, e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1372, 1374 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software
for managing a database of records that could include patents and for tracking the
status of the records by means of the Internet).
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The Examining Attorney argues that the term “digital asset cooperative” is merely
descriptive of Applicant’s identified services because it immediately conveys
knowledge about a feature or the subject matter of Applicant’s services, specifically
that the “wording merely describes the purpose of applicant’s services, a cooperative
enterprise for collective advertising of the members’ digital assets.”5 In contrast,
Applicant contends that “digital asset cooperative” is not merely descriptive because
the term is used for “a platform in which a client’s digital assets can be collectively
maintained and managed,” and because the term is rendered “incongruous or unique”
by combining the elements “digital asset” and “cooperative.”6
B. Evidence
In order to determine whether the Applied-For Mark is merely descriptive, we
must evaluate the evidence. The Examining Attorney proffered a Wikipedia page and
dictionary definitions to show that “digital asset cooperative” describes the
fundamental purpose of Applicant’s services. Specifically, “digital asset” is defined in
Wikipedia as “anything that exists in a binary format and comes with the right to

5 Examining Attorney’s Brief, 6 TTABVUE 6.
6 Applicant’s Appeal Brief, 4 TTABVUE 7.
Serial No. 88219477
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use,”7 and cooperative, abbreviated as “co-op,”8 is defined in the AMERICAN HERITAGE
DICTIONARY as “an enterprise or organization that is owned or managed jointly by
those who use its facilities or services.”9
The Examining Attorney also submitted blogs, articles, and abstracts from
Internet web sites that discuss “digital assets” and the cooperative marketing and
management of them in a variety of industries.
• From MediaValet.com:
Many people consider digital assets to only include photos
and videos, but over the years, others have started
including other digital files in their definition, such as
documents, presentations, and spreadsheets. … [I]t’s
important to remember that the file format is only part of
the definition. The other portion … is derived from the
value the asset brings to the company.10

7 March 13, 2019 Office Action at 3 (citing https://en.wikipedia.org/wiki/Digital_asset).
Regarding evidence from Wikipedia, we note that “[t]he Board gives guarded consideration
to evidence taken from Wikipedia, bearing in mind the limitations inherent in this reference
work, so long as the non-offering party has an opportunity to rebut the evidence by
submitting other evidence that may call its accuracy into question.” In re Hinton, 116
USPQ2d 1051, 1053 n.10 (TTAB 2015); see also In re Swatch Group Management Services
AG, 110 USPQ2d 1751, 1754 n.4 (TTAB 2014) (Board considered Wikipedia evidence
submitted with examining attorney’s first office action, which applicant had an opportunity
to rebut); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.03
(2020). Here, Applicant also cites the Wikipedia page for the term “digital asset,” so we
consider the Wikipedia evidence for whatever probative value it may have.
8 We take judicial notice of “co-op” as an abbreviation for “a cooperative.” THE AMERICAN
HERITAGE DICTIONARY (2020) (https://ahdictionary.com/word/search.html?q=co-op) (last
accessed Dec. 15, 2020). The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format or have regular fixed editions. 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); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
9 March 13, 2019 Office Action at 2 (citing THE AMERICAN HERITAGE DICTIONARY, https://
www.ahdictionary.com/word/search.html?q=cooperative).
10 Id. at 7 (What is a Digital Asset?, https://www.mediavalet.com/blog/what-is-a-digital-asset-
2/).
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• From Researchgate.net:
In this paper we present a series of activities carried out
within the National Research Council of Italy (CNR) and
aimed at the development of a unique, certified and open
archive of CNR’s digital research products … we then
briefly talk about OA issues and the role played by CNR’s
Information System Office in providing technological tools
for digital asset management … We then talk about the
solution we propose for the development of a unique,
certified and open archive using a cooperative approach
that takes into account previous experiences, existing
repositories, policy and organizational issues.11 (emphasis
added)
• From SproutLoud, a “Through Channel Marketing Automation” company
focusing on digital marketing platforms utilizing co-op marketing and payment
solutions: “An outdated Digital Asset Management tool can derail even the
most effective National-to-Local Marketing strategy. When it becomes a
bottleneck for local marketing tasks or a deterrent keeping partner networks
from participating in brand-preferred Co-Op Advertising campaigns, it’s time
to look for an upgrade.”12
• From JGSullivan Interactive, a company offering digital marketing
management solutions combined with co-op management of marketing and

11 Oct. 4, 2019 Final Office Action at 4 (Maurizio Lancia et al., Cooperative Digital Asset
Management in the Scientific Field: Strategies, Policies, Interoperability and Persistent
Identifiers, in A KEYPHRASE-BASED PAPER RECOMMENDER SYSTEM pp. 144-59 (located at
https://www.researchgate.net/publication/221333894_Cooperative_Digital_Asset_Managem
ent_in_the_Scientific_Field_Strategies_Policies_Interoperability_and_Persistent_
Identifiers) (abstract)).
12 Id. at 5 (Elizabeth Vempala, Is Your Digital Asset Management Tool Right for Your
Partners?, SPROUTLOUD (last visited Dec. 17, 2020), https://sproutloud.com/blogs/is-your-
digital-asset-management-tool-right-for-your-partners).
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payment processes: “Corporate ad budgets are shrinking every year and every
co-op dollar is more important than ever. … JG Sullivan’s marcom portal with
integrated ad builder, digital asset management, and co-op system is the
winning solution to lock down the entire local marketing process.”13
• From the Interactive Advertising Bureau, an industry trade group focused on
digital ad marketing: “Internet advertising brings with it a range of new
challenges … Offering guidance on next steps in digital gaining a foothold in
the sector, ‘Co-Op Advertising: Digital’s Lost Opportunity?’ provides
recommendations to meet those challenges head on ….”14
• From F&I and Showroom Magazine, an automotive retail and finance industry
trade publication:
Digital asset management systems (DAMs) once had
promise. Unfortunately, they suffer from low adoption
rates, fail to engage dealers, and can’t build out a localized
marketing campaign. … Trends point to the eventual
elimination of the standard co-op model in favor of a dealer-
centric, digital-friendly alternative.15
In support of his position, Applicant, who also cited the Wikipedia page for “digital
asset,”16 proffered a link to Nolo.com’s encyclopedia page that discusses “digital
assets”:

13 Id. at 6 (Co-Op Management, https://www.jgsullivan.com/our-technology/co-op-
management/).
14 Id. at 7 (https://www.iab.com/insights/co-op-advertising-digitals-lost-opportunity-a-new-
study-by-iab-local-search-association/).
15 Id. at 8-14 (Ben Carcio, Time to Reimagine Co-Op Marketing, F&I AND SHOWROOM (Mar.
8, 2018), https://www.fi-magazine.com/311124/time-to-reimagine-co-op-marketing).
16 Sept. 13, 2019 Response to Office Action at 1; see also supra p. 4.
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Technically speaking, digital assets are any “electronic
record” that you own, license, or control. This includes just
about any online account or digital file that you have
authority to access – email, online banking, social media
accounts, cloud storage, blogs, and just about anything else
that you do online, on your phone, or on your computer that
requires a login.17
C. Analysis
Based on the evidence of record, the Applied-For Mark, DIGITAL ASSET
COOPERATIVE (CO-OP), is merely descriptive of “cooperative advertising and
marketing services for advertising members’ shared digital assets in virtual e-
commerce marketplaces in exchange for subscriber revenues and any other direct or
in-direct forms of payment.”
The record establishes that “digital asset” is an expansive term encompassing
“anything that exists in a binary format and comes with the right to use.” The term
incorporates photos, videos, documents, presentations, spreadsheets, email, online
banking, social media accounts, cloud storage, blogs, and “just about anything else
that you do online, on your phone, or on your computer that requires a login.”
The record also establishes that a “cooperative,” or “co-op,” is “an enterprise or
organization that is owned or managed jointly by those who use its facilities or
services.” So, when they see the term “Cooperative (CO-OP),” used with “Digital
Asset,” consumers are likely to think that digital assets are jointly, or cooperatively,
managed. The record includes evidence from digital asset management firms, trade

17 Sept. 13, 2019 Response to Office Action at 1 (citing https://www.nolo.com/legal-
encyclopedia/what-are-digital-assets.html (last accessed Dec. 17, 2020)).
Serial No. 88219477
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organizations, trade publications, blogs, and a research abstract showing the use of
“CO-OP” or “cooperative” in connection with “digital asset.” This type of evidence can
signal that a term is merely descriptive. Cf. In re Recreational Equipment, Inc., 2020
USPQ2d 11386, at *5 (TTAB 2020) (without any evidence, the record does not support
a finding that the mark CO-OP is merely descriptive of the goods claimed in the
application) (citing Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202
USPQ 100, 105 (CCPA 1979) (identifying types of evidence useful in determining
consumer perception, such as purchaser testimony, consumer surveys, and listings in
dictionaries, trade journals, newspapers and other publications)).
Applicant contends that the Examining Attorney has failed to supply any evidence
that DIGITAL ASSET COOPERATIVE (CO-OP) is used in conjunction with what
Applicant describes as “a platform in which a client’s digital assets can be collectively
maintained and managed by owner of said mark.”18 However, a determination of
mere descriptiveness must be based on the significance of the terms in connection
with the services listed in the identification. Here, the record evidence, as well as the
identification itself—which includes the terms “digital asset” and “cooperative”—
demonstrate that the Applied-For Mark is merely descriptive of Applicant’s services.
Applicant also contends that the combination of the terms “digital asset” and
“cooperative (CO-OP)” results in DIGITAL ASSET COOPERATIVE (CO-OP) being
unique, or incongruous.19 But the terms “digital asset” and “cooperative” retain their

18 Applicant’s Appeal Brief, 4 TTABVUE 7.
19 Id.
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descriptive meanings when combined: basically, the collective management of digital
assets. No new or non-descriptive meaning is created by combining the terms, so their
composite is merely descriptive and unregistrable. In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314,
1317-18 (TTAB 2002)); see also Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion
Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (MEDICAL EXTRUSION
TECHNOLOGIES merely descriptive of medical extrusion goods produced by using
medical extrusion technologies). In fact, here, “cooperative” is used in a non-source
identifying way that describes Applicant’s business structure. See TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.03(d) (Oct. 2018); cf. In re
Recreational Equipment, Inc., 2020 WL 11386, at *2, 6, 7 (“co-op” described
applicant’s business structure, but without sufficient evidence, proposed mark
CO- OP not merely descriptive; no per se rule equating descriptiveness of source with
descriptiveness of goods). Generally, a mark composed of combined descriptive terms
is registrable only where the combination of such terms creates a unitary mark with
a unique, incongruous, or nondescriptive meaning in relation to the services claimed.
In re Oppedahl & Larson LLP, 71 USPQ2d at 1372, 1374. Again, that principle does
not apply to DIGITAL ASSET COOPERATIVE (CO-OP).
III. Conclusion
The record supports a finding that the Applied-For Mark, DIGITAL ASSET
COOPERATIVE (CO-OP), immediately conveys to average consumers information
about a quality, feature, or characteristic of the services claimed in the application.
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Decision: The refusal to register under Section 2(e)(1) is affirmed.