Virginia Tech Intellectual Properties, Inc.

Trademark Trial and Appeal Board

Jul 21, 1999

No. 75158235 (T.T.A.B. Jul. 21, 1999)

Paper No. 10
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 21, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Virginia Tech Intellectual Properties, Inc.
________
Serial No. 75/158,235
_______
James W. Hiney, Esq. for Virginia Tech Intellectual
Properties, Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney)
_______
Before Simms, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 27, 1996 Virginia Tech Intellectual
Properties, Inc. filed an intent-to-use application to
register on the Principal Register the mark SITEPLANNER for
“interactive software package allowing user to assess the
coverage regions of transmitters for wireless
communications systems in indoor environments to create a
building floor plan in real time” in International Class 9.
Ser. No. 75/158235
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark, if used on applicant’s
identified goods, would be merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing. We affirm.
The Examining Attorney contends that the applied-for
mark immediately describes a characteristic, use or purpose
of applicant’s stated goods in that it merely describes
both (1) the software which “functions as a site planner
because it plans for the site of wireless communication
system installations” (brief, p. 3); and (2) the intended
users of the goods, namely, a professional person involved
in site planning.
In support of her refusal to register, the Examining
Attorney submitted (i) the Webster’s New World Dictionary
definitions of “site” as “2. the place where something is,
was or is to be located,” and “plan” as “2a. a scheme or
program for making, doing, or arranging something; project,
design, schedule, etc.”; and (ii) copies of excerpts of
published stories retrieved from the Nexis database to show
that site planners are those who arrange for the location
of things, and they would be intended users of applicant’s
Ser. No. 75/158235
3
software product to locate the optimum place for the
wireless communication system within a structure.
Applicant argues that (1) the goods on which applicant
intends to use the mark SITEPLANNER are software packages
which are “used to select a site not plan it” (brief, p.
6); and (2) the PTO has allowed seven other similar marks
for computer software.
The test for descriptiveness is well settled. A term
is considered merely descriptive within the meaning of
Section 2(e)(1), if, when considered in conjunction with
the goods with which it is intended to be used, it
immediately and forthwith conveys information about the
nature of the goods, or about a quality, characteristic,
feature, purpose or function thereof. See In re MetPath
Inc., 223 USPQ 88 (TTAB 1984). It is not necessary that
the term describe all of the properties or functions of the
goods or services in order for the term to be considered
merely descriptive thereof; rather it is sufficient if the
term describes a significant attribute or idea about them.
And, of course, whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods or services for which registration is sought and the
possible significance that the term may have to the average
purchaser of the goods or services because of the manner of
Ser. No. 75/158235
4
its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(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 question is not whether
someone presented with only the mark could guess what the
goods are. Rather, the question is whether someone who
knows what the goods are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990).
Our primary reviewing court in the case of In re Gould
Paper Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987) [SCREENWIPE held generic for wipes that clean
computer and television screens], held that the Patent and
Trademark Office may satisfy its evidentiary burden by
means of dictionary definitions showing that the “separate
words joined to form a compound have a meaning identical to
the meaning common usage would ascribe to those words as a
compound”.
The distinction made by applicant is that its software
product will not plan anything, but it will peruse data and
select a site, while planning the site is done subsequent
to the selection thereof. This is a distinction consumers
will not likely make given the ordinary meaning of the
component words “site” and “planner.” Moreover, the
Ser. No. 75/158235
5
applied-for mark does not involve any incongruous word
combinations, and there is no imagination needed to
understand the meaning of SITEPLANNER either in the context
of the function of the goods or in referring to intended
users of the goods.
Thus, when the Nexis evidence referring to “site
planners” is viewed together with the dictionary
definitions in the record of the terms “site” and “plan,”
we are of the opinion the applied-for mark, the term
SITEPLANNER, is merely descriptive of the goods on which
applicant intends to use the mark, i.e., software used to
assess optimum locations for wireless communications
systems within a building. That is, the term immediately
and without conjecture or speculation describes a
significant feature, function or the intended users of
applicant’s goods. See In re Cryomedical Sciences Inc., 32
USPQ2d 1377 (TTAB 1994) (SMARTPROBE merely descriptive of
disposable cryosurgical probes); In re Copytele Inc., 31
USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely
descriptive of facsimile terminals employing
electrophoretic displays); In re Eden Foods Inc., 24 USPQ2d
1757 (TTAB 1992) (DOUBLE CERTIFIED ORGANIC held merely
descriptive of pasta); Domino’s Pizza Inc. v. Little
Ser. No. 75/158235
6
Caesar Enterprises Inc. 7 USPQ2d 1359 (TTAB 1988) (SINGLE,
DOUBLE and TRIPLE merely descriptive of applicant’s pizza);
and In re IBP, Inc., 228 USPQ 304 (TTAB 1985) (requirement
for a disclaimer of the merely descriptive terms “select
trim” for pork affirmed).
Applicant’s argument based on the PTO’s supposed
allowance of seven other similar marks for computer goods
is of no avail. First, mere listings of third-party
registrations is not probative evidence. See In re Duofold
Inc., 184 USPQ 638 (TTAB 1974); In re Hub Distributing,
Inc., 218 USPQ 285 (TTAB 1983); and In re Hungry Pelican,
Inc., 219 USPQ 1202 (TTAB 1983). See also, Weyerhaeuser
Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). Second, three of
the listings are applications, not registrations.1 Third,
the Board does not have the records of those files before
us, and each case must be decided on its own record. See
In re Scolastic Testing Service, Inc., 196 USPQ 517 (TTAB
1977).

1 We note for the record that the list sets forth only the
registration (or application) numbers and the purported marks.
There is no information as to the goods or services involved, or
as to the ownership (many may be owned by the same entity), or as
to disclaimers, Section 2(f) claims or any other such matters.
Ser. No. 75/158235
7
Decision: The refusal to register under Section
2(e)(1) is affirmed.
R. L. Simms
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board