U. S. Tsubaki, Inc.

Trademark Trial and Appeal Board

Jun 15, 2001

No. 75103066 (T.T.A.B. Jun. 15, 2001)

06/15/01
Paper No. 21
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re U.S. Tsubaki, Inc.
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Serial No. 75/103,066
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James C. Wray for U.S. Tsubaki, Inc.
Jan A. Holland-Chatman, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Quinn, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
U.S. Tsubaki, Inc. has filed an application to
register the mark G.I.S. for “consultation services,
namely, providing geographic information systems for
assisting distributors in locating and identifying
potential customers for chains and sprockets.”1
Registration of the mark has been finally refused
under Section 2(e)(1) of the Trademark Act on the ground
1 Serial No. 75/103,066, filed May 13, 1996, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/103,066
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that the mark, if used in connection with the recited
services, would be merely descriptive thereof. The
requirement for an acceptable identification of services
has also been made final. The refusals have been appealed
and both applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
The Identification of Services Requirement
Before considering this requirement, a brief review of
the prosecution history in is order.
In the initial Office action, the Examining Attorney
objected to the recitation of services, as set out above,
as indefinite and requested amendment to “consultation
services relating to geographic information systems for
assisting distributors in locating and identifying
potential customers for chains and sprockets.” Applicant
responded by amending the services to “assisting
distributors of chains and sprockets in identifying
potential customers.” The Examining Attorney made no
specific reference to this amended identification of
services in the following Office action; he simply made the
requirement for an acceptable identification final, as well
as the pending Section 2(e)(1) refusal.
Applicant then filed a response in the nature of a
request for reconsideration and amended the identification
Ser No. 75/103,066
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of services to “consultation services for assisting
distributors of chains and sprockets in locating and
identifying potential customers for chains and sprockets.”
At this point, a new Examining Attorney was assigned to the
case who issued a continuation of the Section 2(e)(1) final
refusal, but made no mention of the identification of
services requirement. In view of applicant’s apparent
failure to timely file a notice of appeal the application
was concurrently held abandoned.
Upon review by the Board, it was determined that a
notice of appeal had been timely filed, as well as an
appeal brief, and the case was forwarded to the Examining
Attorney for preparation of a brief. The Examining
Attorney then filed a request for remand in order to
supplement the record of the prior Examining Attorney and
to more fully address the issue of applicant’s amended
identification of services. The request was granted and,
on remand, the Examining Attorney issued two further
actions finding applicant’s proposed amendment of services
unacceptable and subsequently making the requirement for an
acceptable recitation final. The Section 2(e)(1) refusal
was again made final. The appeal was then resumed and
applicant allowed time to file a supplemental brief.
Ser No. 75/103,066
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Applicant, in its brief, contends that the
identification of services now reads:
Consultation services for assisting distributors of
chain and sprockets in locating and identifying
potential customers for chains and sprockets.
The Examining Attorney maintains that this proposed
recitation of services is unacceptable in that it exceeds
the scope of the identification in the application as
filed. By deleting the language “providing geographic
information systems,” the Examining Attorney argues,
applicant has attempted to eliminate a specific feature of
its services and thus broaden the characteristics of its
consultation services.
Applicant, on the other hand, insists that the
Trademark Rules and the TMEP, specifically §804.09(a),
encourage deletion and thus the proposed amendment is
acceptable. Applicant also argues that the issue of the
amendment exceeding the scope of the original
identification should be withdrawn, not having been raised
until the third Office action following the amendment.
We would first point out that the initial final
refusal was in effect withdrawn when the case was remanded
to the Examining Attorney and a new non-final action was
issued with respect to the proposed amendment of the
identification of services. Applicant was given full
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opportunity to respond to the requirement for an acceptable
identification before the requirement was made final in the
second action. Applicant’s request that the requirement be
withdrawn is without merit.
Looking to the requirement on the merits, we are
guided by the language of the controlling rule, Trademark
Rule 2.71 (a):
The applicant may amend the application to clarify or
limit, but not to broaden, the identification of
goods and/or services.
We are in complete agreement with the Examining Attorney
that by applicant’s proposed elimination of the means by
which its consultation services are performed, i.e.,
geographic information systems, applicant would be
broadening the scope of its consultation services. This is
clearly impermissible under Rule 2.71(a).
While TMEP § 804.09(a) refers to deletion as one way
of limiting an identification of goods or services,
deletion is defined as the “elimination of an existing item
in an identification of goods and services in its
entirety.” As pointed out by the Examining Attorney,
applicant has not eliminated a particular item listed in
its identification in its entirety; applicant has simply
eliminated qualifying language with respect to the nature
of its consulting services. The resultant effect is a
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broadening of the scope of the services, not a limiting
thereof. The proposed amendment is unacceptable. For
purposes of the Section 2(e)(1) refusal, we consider the
identification of services to stand as originally set forth
in the application.2
Section 2(e)(1) Refusal
The Examining Attorney has refused registration under
Section 2(e)(1) on the basis that the proposed mark G.I.S.,
when used in connection with applicant’s services, would
be merely descriptive of a feature or characteristic of the
services. She argues that G.I.S. is a widely used
initialism3 for the term “geographic information systems”
and that when used in connection with applicant’s services
G.I.S. merely imparts information as to the type of system
which applicant employs to perform its potential customer
identification services.
As support for her position that the term GIS is a
recognized initialism for “geographic information systems”
the Examining Attorney refers to the Acronyms, Initialisms
2 We note that applicant has made no argument with respect to the
acceptability of the original identification. Thus, we assume
that applicant has acquiesced in the requirement that this
original identification must be reworded.
3 While the Examining Attorney has referred to G.I.S. as an
acronym, we find the more accurate manner in which to refer to
the term is as an “initialism.”
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& Abbreviations Dictionary (1987);4 various third-party
registrations containing the language “geographic
information systems” in the identifications and disclaimers
of the “GIS” portion of the marks; and numerous excerpts of
articles from the NEXIS database showing the cross-
reference of the term “geographic information systems” with
the letters GIS. In addition the Examining Attorney points
out that applicant has attached information to its appeal
brief showing similar usage of GIS by the United States
Geological Survey of the initialism GIS in reference to
“geographic information systems.”5
As a general rule, acronyms or initialisms of
descriptive words are only considered descriptive
themselves when they have become so generally understood as
representing descriptive words as to be accepted as
substantially synonymous therewith. See Avtex Fibers Inc.
v. Gentex Corp., 223 USPQ 625 (TTAB 1984) and the cases
cited therein. Here we find the evidence overwhelming that
GIS is a widely accepted initialism for the term
“geographic information systems.” Moreover, although
4 The dictionary entry shows GIS to be an initialism for
“geographic information systems” as used by the United States
Geological Survey.
5 Inasmuch as the Examining Attorney has made full reference and
use of the materials attached to applicant’s brief, we consider
the attachments to be of record.
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applicant argues that its mark is used with periods to
separate the letters and that this is simply an arbitrary
arrangement of letters, we do not agree. We find the
commercial impression and the information imparted thereby
to remain the same, as the initialism GIS.
The only remaining issue is whether this initialism
has descriptive significance when used in connection with
applicant’s consulting services. A term is merely
descriptive within the meaning of Section 2(e)(1) if it
immediately conveys information about a characteristic or
feature of the goods or services with which it is being
used, or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether or not a particular term is merely descriptive is
determined not in the abstract, but rather in relation to
the goods or services for which registration is sought, the
context in which the designation is being used, or is
intended to be used, and the significance the designation
is likely to have to the average purchaser as he or she
encounters the goods or services bearing the designation,
because of the manner in which it is used. See In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary that the term or phrase describe all the
characteristics or features of the goods or services in
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order to be merely descriptive; it is sufficient if the
term or phrase describes one significant attribute thereof.
See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991).
Applicant insists that its services involve assisting
distributors of chains and sprockets in identifying
customers; and that these consultation services do not
involve the use of geographic information services as
referenced by the United States Geological Survey.
As pointed out by the Examining Attorney, applicant’s
own identification of its services refutes this argument.
Furthermore, regardless of the particular focus of
applicant’s consulting services, the question here is the
means used to perform these services. The identification
specifically sets forth that these consulting services
employ “geographic information systems” as the means for
providing the desired information.
Applicant argues that the term GIS as referenced by
the United States Geological Survey is typically used in
connection with generating maps displaying data about
varying geographic features. Citing the attachments to its
brief, applicant argues that these maps are used primarily
for government, town planning, public utility management
and environmental management.
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Looking to the information attached to applicant's
brief, we find further disclosure with respect to the
nature and usages of geographic information systems. From
that which appears to be a Webpage of the U.S. Geological
Survey, we note the following general definition of a
“GIS”:
...a GIS is a computer system capable of assembling,
storing, manipulating, and displaying geographically
referenced information, i.e., data identified
according to their locations.
In the attachment from the source identified as “AGI” we
find that the uses of GIS disclosed therein are more wide-
spread than described by applicant. In addition to those
uses cited by applicant, we note reference to uses in
“engineering, business, marketing and distribution.”
Finally, as noted by the Examining Attorney, certain of the
NEXIS excepts of record also show reference to the use of
GIS and GIS consulting services in connection with various
types of industries.
All in all, we find the evidence sufficient to
demonstrate that GIS and GIS consulting services may be
used industry-wide. As such, applicant’s proposed mark
G.I.S., when used in connection with its consulting
services which in fact employ geographic information
systems, would be merely descriptive. The initialism
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G.I.S. as used by applicant in connection with its
consultation services, namely, providing geographic
information systems for assisting distributors in locating
and identifying potential customers for chains and
sprockets would immediately convey information as to a
significant feature of these consulting services, namely,
the means actually employed in assisting distributors in
locating potential customers. The evidence establishes
that the initialism is as equally descriptive as the words
“geographic information systems” themselves.
Decision: The refusal to register under Section
2(e)(1) is affirmed. The requirement for an acceptable
identification of services is also affirmed.
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