Useful Networks, Inc.

Trademark Trial and Appeal Board

Mar 3, 2010

No. 77364008 (T.T.A.B. Mar. 3, 2010)

Mailed:
March 3, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Useful Networks, Inc.
________

Serial No. 77364008
Serial No. 77364155
_______

Jamie B. Bischoff and Troy E. Larson of Ballard Spahr LLP
for Useful Networks, Inc.

Geoffrey Fosdick, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney)
_______

Before Bucher, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Useful Networks, Inc. (“applicant”) filed intent-to-
use applications on the Principal Register for the mark
USEFUL NETWORKS, in standard character form (Serial No.
77364008), and the mark USEFUL NETWORKS and design, shown
below (Serial No. 77364155).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77364008
Serial No. 77364155
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Applicant has sought to register its marks for the goods
and services set forth below:
Computer software applications which
employ the use of location and presence
for locating persons, animals, personal
property and automobiles; computer
software platform for facilitating
location and presence information
exchange for use in locating persons,
animals, personal property and
automobiles, in Class 9; and

Computer software consulting services
for the development of software
employing the use of location and
presence, in Class 42.

The Examining Attorney issued a final refusal for the
USEFUL NETWORKS application, in standard character form,
under Section 2(e)(1) of the Trademark Act of 1946,
15 U.S.C. §1052(e)(1), on the ground that USEFUL NETWORKS,
when used in connection with applicant’s computer software
and software consulting services, is merely descriptive.
With respect to the USEFUL NETWORKS and design application,
the Examining Attorney issued a final requirement that
applicant disclaim the exclusive right to use the term
“Useful Networks” on the ground that “Useful Networks” is
merely descriptive. See Section 6(a) of the Trademark Act
of 1946, 15 U.S.C. §1056(a).
In an order dated August 26, 2009, the Board
consolidated the appeals in these applications.
Serial No. 77364008
Serial No. 77364155
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The Examining Attorney contends that the term USEFUL
NETWORKS is merely descriptive because it directly conveys
the fact that applicant’s software and software consulting
“utilize communication network devices to create useful
social networks for its customers and clients.”1 To support
the refusal and requirement for a disclaimer, the Examining
Attorney submitted the following evidence:
1. A dictionary definition of the word “useful”:
1: capable for being put to use;
especially: serviceable for an end or
purpose
2: of a valuable or productive kind
2

2. A dictionary definition of the word “network,”
with, inter alia, the following meanings:
3a: an interconnected or interrelated
chain, group or system
b: a system of computers, peripherals,
terminals and databases connected by
communications lines

* * *

5: a usually informally interconnected
group or association of persons (as
friends or professional colleagues)3

1 Examining Attorney’s Brief, unnumbered page 5.
2 Merriam-Webster Online (no url or date provided).
3 Id.
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3. An excerpt from applicant’s website that promotes
the ability of applicant’s software to “[use] location to
bring people closer together, a natural extension of the
social networking phenomenon.”4 Also, the excerpt from
applicant’s website describes applicant’s software as
providing a platform for allowing computer applications to
incorporate location data. For example:
Useful Networks is committed to
simplifying mobile location for all
partners in the mobile content
ecosystem.

Location aware marketing allows
businesses to increase effectiveness of
advertising spend (sic), and lets
customers learn about products and
services which are relevant to them.

Mobile customers need to know what is
going [on] in the world around them.
Instant access to locally relevant
content makes the mobile experience
infinitely more useful.

The UN Platform streamlines the process
of on-boarding 3rd party content
providers who require location.

The UN Platform gives customers total
control over who, what, when and how
they can be located.

Applicant contends that “Useful Networks” is not
merely descriptive because it takes a multiple step
reasoning process “to conclude that products bearing this

4 No date or URL provided.
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mark are for use in physically locating people.” In
addition, applicant asserts that USEFUL NETWORKS “merely
suggests a desirable end result of Applicant’s goods and
services, without describing the goods and services
themselves” and the composite mark “evokes a unique
commercial impression apart from any sense conveyed by the
individual components.”5 Applicant submitted the following
evidence to support its contention that USEFUL NETWORKS is
not merely descriptive:
1. An excerpt from applicant’s website showing that
applicant’s software and services employ mobile location
technology.6 Essentially, applicant’s software “is a
toolset that application developers can apply to use
Location Based Services (LBS) across multiple carriers.”7
2. Copies of nine registrations on the Principal
Register for software products and/or services that consist

5 Applicant’s Brief, pp. 5-6.
6 www.useful-networks.com.
7 “Location-based service” is “a service provided to a wireless
mobile device based on the device’s location. Location-based
services can range from simple services, such as listing nearby
restaurants, to more complex features such as connecting to the
Internet to monitor traffic conditions and find the least
congested route to a destination.” Microsoft Computer
Dictionary, p. 316 (5th ed. 2002). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
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in part of the words “use,” “user,” or “useful” without a
disclaimer or a claim of acquired distinctiveness.
3. A second excerpt from applicant’s website to show
that “[a]pplicant’s products are location-based software
programs that combine multiple different technologies,
including mobile communication technologies, geographic
positioning, and information systems to find people.”
Applicant’s software applications, inter alia, “allow users
to get information and find local businesses based on
proximity. Maps and turn-by-turn navigation provides (sic)
users with not only the what, but the where, and how to get
there.”
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the products or services for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, the question is not whether someone
presented with only the mark could guess what the goods or
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services are. Rather, the question is whether someone who
knows what the goods and services are will immediately
understand the mark as directly conveying information about
them (i.e., whether someone familiar with location-based
services will understand that the term “Useful Networks”
directly conveys information about them). In re Tower Tech
Inc., 64 USPQ2d 1314, 1317 (TTAB 2002); see also In re
Patent and Trademark Services, Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
Based on the record, it is clear that applicant’s
location-based software applications and consulting services
related to such software applications create “useful
networks” (i.e., valuable connections between users and
service providers). While the term “useful networks” does
not in and of itself directly convey that the software
applications and services related thereto involve location-
based services, it is a laudatory term and merely
descriptive of the goods and services because it describes a
quality that all networking software and services aspire to
achieve (i.e., to make useful connections for its users).
In this regard, a laudatory term that describes the merits
of the goods and/or services is merely descriptive because
it describes the characteristics or quality of the goods in
a condensed form. In re Nett Designs Inc., 236 F.3d 1339,
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57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (THE ULTIMATE BIKE
RACK found to be merely descriptive and, therefore, subject
to disclaimer); see also In re Best Software Inc., 63 USPQ2d
1109, 1111 (TTAB 2002) (the term “Best” in the mark BEST!
IMPERATIV HRMS is merely descriptive, in a laudatory sense,
of applicant’s software and, therefore, must be disclaimed);
In re Dos Padres Inc., 49 USPQ2d 1860, 1861 (TTAB 1998)
(QUESO QUESADILLA SUPREME for cheese is merely descriptive
because “Queso Quesadilla is a generic term for a type of
cheese and “supreme” is a laudatory term); In re
Consolidated Cigar Co., 35 USPQ2d 1290, 1293 (TTAB 1995)
(SUPER BUY merely descriptive of tobacco products).
Computer software utilizing location and presence capability
and consulting services regarding such location-based
tchnology increases the usefulness the software applications
derived by the users of the programs and associated
communication devices and, therefore, is the epitome of a
“useful network.”
Applicant’s argument that the term USEFUL NETWORKS does
not convey any information regarding software and services
related to locating people misses the point. The term
USEFUL NETWORKS is a condensed form of describing the
outstanding quality of the software and software consulting
services to which it is applied (i.e., creating valuable
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connections between users and service providers). Such a
laudatory expression would not be indicative of origin to
the purchasing public. For the same reasons, we are not
persuaded by applicant’s argument that USEFUL NETWORKS
merely suggests a desirable result. To the contrary, we
find that the term USEFUL NETWORKS directly describes the
purpose of applicant’s goods and services; that is, the
creation of useful networks of mobile communication device
users.
Applicant’s argument that the term USEFUL NETWORKS
“evokes a commercial impression apart from its individual
components” is equally unavailing. In determining whether
a mark is merely descriptive, we must consider the mark in
its entirety. As argued by applicant, common words may be
descriptive when standing alone, but when used together in
a composite mark, they may become a valid trademark because
the combination has a unique commercial impression apart
from the individual components.8 See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054, 1057 (TTAB 1989). However, if each component
retains its descriptive significance in relation to the
goods and services, without the composite term creating a

8 Applicant’s Brief, pp. 10-12.

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unique or incongruous meaning, then the resulting
combination is also merely descriptive. In re Tower Tech.,
Inc., 64 USPQ2d at 1317-18. In this regard, we find that
when the words “Useful” and “Networks” are combined
together, as applicant has combined them, they retain their
laudatory, descriptive meaning in relation to the goods and
services without the composite term creating a unique or
incongruous meaning.
Finally, applicant argues that the Examining Attorney
has not submitted any evidence “that USEFUL and NETWORKS
are commonly used in combination with one another, or that
they are readily identified as belonging to common or
practical word formulations.”9 However, the fact that an
applicant may be the first and only user of a merely
descriptive term does not justify registration if the only
significance conveyed by the term is merely descriptive.
See In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087
(TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985).
In view of the foregoing, we find that the term USEFUL
NETWORKS for the goods and services identified in the
applications is merely descriptive.

9 Applicant’s Brief, p. 11.
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Decision: The refusal to register the mark USEFUL
NETWORKS, in standard character form (Serial No. 77364008)
is affirmed and registration to applicant is refused.
In the application for the mark USEFUL NETWORKS and
design (Serial No. 77364155), the requirement that applicant
disclaim the exclusive right to use the term “Useful
Networks” is affirmed and registration to applicant is
refused. However, in the event that applicant submits the
required disclaimer within thirty days from the mailing date
of this decision, the refusal to register will be set aside
and the application will proceed to publication.10 See
Trademark Rule 2.142(g).

10 A proper disclaimer would read: "No claim is made to the
exclusive right to use Useful Networks apart from the mark as
shown."