Web-Dialogs, Inc.

Trademark Trial and Appeal Board

Jun 10, 2003

No. 75638401 (T.T.A.B. Jun. 10, 2003)

Mailed: 6/10/03
Paper No. 13
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re WebDialogs, Inc.
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Serial No. 75/638,401
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Michael J. Bevilacqua and Barbara A. Barakat of Hale and
Dorr LLP for WebDialogs, Inc.
Irene D. Williams, Trademark Examining Attorney, Law Office
112 (Janice O'Lear, Managing Attorney).
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Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
WebDialogs, Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register
"WebDialogs" and design, as shown below, as a trademark for
"computer programs for use in establishing live interaction
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/638,401
2
sessions over local, national and global information
networks; computer hardware, namely computer server."1
The Examining Attorney has made final a requirement for
applicant to disclaim exclusive rights to "WebDialogs"
apart from the mark as shown.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not file a reply brief, nor did it
request an oral hearing.
Section 6 of the Trademark Act, 15 U.S.C. 1056(a),
provides that "the Director may require the applicant to
disclaim an unregistrable component of a mark otherwise
registrable." Section 2(e)(1) of the Act, 15 U.S.C.
1052(e)(1) prohibits, inter alia, registration of a term
which, when used on or in connection with the goods of the
applicant, is merely descriptive of them.
1 Application Serial No. 75/638,401, filed February 11, 1999,
and asserting a bona fide intention to use the mark in commerce.
Ser No. 75/638,401
3
It is the Examining Attorney's position that
"WebDialogs" is merely descriptive of applicant's goods
because it describes the function of the software, and
therefore it must be disclaimed. In support of this
position the Examining Attorney has made of record several
excerpts taken from the LEXIS/NEXIS database, including the
following:
...few have multiple web pages and none
comes close to the intensity of
Rockland's web dialogue.
"The Patriot Ledger" (Quincy, MA),
"January 31, 2002
He co-edits bitterlemons.org, an
Israeli-Palestinian Web-based dialogue.
"Los Angeles Times," April 21, 2002
Thus many programs that ate [sic-are]
made to read unstructured text such as
email or Web chat dialogs depend on
finding structured text they do
understand.
"Customer Interaction Solutions,"
April 1, 2002
Headline: Web dialogue is short and
sloppy; McGreevey and pupils share
cyber connection
"The Philadelphia Inquirer,"
January 16, 2002
...cross-departmental support teams,
outside vendors and partners—can
securely view and participate in a
unique shared Web-based dialog.
"Business Wire," March 25, 20022
2 Although a wire service report is not evidence that the
article has been circulated among the public, it does show the
author's understanding of a particular term.
Ser No. 75/638,401
4
The Examining Attorney has also submitted, with her
appeal brief, dictionary definitions of "web," "dialogue,"
"World Wide Web" and "interactive":3
web: capitalized WORLD WIDE WEB4
dialog: a. a conversation between two
or more persons; also: a similar
exchange between a person and something
else (as a computer)
b: an exchange of ideas and opinions
c: a discussion between representatives
of parties to a conflict that is aimed
at resolution5
interactive: 1. Acting or capable of
acting on each other.
2. Computer Science of or relating to a
two-way electronic or communications
system in which response is direct and
continual6
World Wide Web: Computer Science. An
information server on the Internet
composed of interconnected sites and
files, accessible with a browser.7
3 The Examining Attorney stated in her appeal brief that the
dictionary definitions were of record. In point of fact, the
definitions were not made of record prior to the filing of the
appeal, and therefore were never properly made of record. See
Trademark Rule 2.142(d). However, the Board may take judicial
notice of dictionary definitions, University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), and
we do so in this case.
4 Merriam-Webster On Line Dictionary
5 Merriam-Webster On Line Dictionary
6 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
7 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 75/638,401
5
A term is merely descriptive, and therefore
unregistrable pursuant to Section 2(e)(1) of the Act, if it
immediately conveys knowledge of an ingredient, quality,
function, feature, composition, purpose, attribute, use,
etc. of the goods or services in connection with which it
is used or intended to be used. See In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986). See also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
After reviewing the evidence of record, we have no
doubt that applicant's mark immediately describes the
purpose of its computer programs. Applicant's very
identification of goods—computer programs for use in
establishing live interaction sessions over local, national
and global information networks—shows that the software
allows people to have dialogs (live interaction sessions)
on the web (global information network). The NEXIS
excerpts show that phrases such as "web dialogue," Web-
based dialogue" and "Web chat dialogs" are used to refer to
the exchange of information that applicant's identified
computer programs are used to establish.
Ser No. 75/638,401
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It would require no imagination or thought on the part
of consumers viewing the term "WebDialogs" as part of a
trademark for "computer programs for use in establishing
live interaction sessions over local, national and global
information networks" to understand that the computer
programs enable dialogs on the web to occur. Applicant
itself acknowledges that its programs set up a place in the
information network where an interaction session can take
place. Thus, "WebDialogs" is merely descriptive of a
purpose of the computer programs, i.e., to set up a place
for web dialogs, or dialogs on the web.
Applicant points out that the NEXIS articles submitted
by the Examining Attorney are all dated on or after
January 1, 2002, which is almost three years after
applicant's application was filed. It is noted that the
search undertaken by the Examining Attorney retrieved 275
stories, and the nine which the Examining Attorney made of
record were presumably the first ones that were retrieved,
since NEXIS articles are displayed in reverse chronological
order. More importantly, even if we were to assume that
all references to "web dialogs" were made in articles
published after applicant's filing date, the uses shown in
the articles are descriptive uses, not third-party
trademark uses. Thus, we cannot view these uses as
Ser No. 75/638,401
7
infringing. Rather, they show that, even if applicant
intended, when it filed its application, to claim "web
dialogs" as part of its trademark, the authors of the
articles, and the public to whom the term has been exposed,
regard it as descriptive. Applicant's comment that it
alone uses the term "WebDialogs" as its trademark does not
in any way mandate a finding that this term is not merely
descriptive; on the contrary, one would not expect to find
third parties using a merely descriptive term as a
trademark.
Applicant also points out that six of the articles
submitted by the Examining Attorney do not use the specific
term "webdialogs." The fact that applicant runs the words
"web" and "dialogs" together to form "WebDialogs" does not
avoid the descriptiveness of this term, especially since
the special form in which "WebDialogs" is depicted in
applicant's mark, with a capital "W" and a capital "D,"
reinforces the commercial impression that it is the two
words. Nor does the fact that applicant uses the spelling
"dialogs," and several of the articles use "dialogues" or
"dialogue," avoid a finding of mere descriptiveness.
Clearly "dialogue" and "dialogue" are alternate spellings.
See The American Heritage Dictionary of the English
Language ©1970. Finally, although the articles submitted
Ser No. 75/638,401
8
by the Examining Attorney do not refer to computer
programs, or use "web dialog/web dialogues" to describe the
programs, the articles show that consumers regard this term
as indicating live interaction sessions over global
information networks. Because establishing these sessions
is what applicant's computer programs do, "WebDialogs"
describes the purpose of the programs.
Decision: The requirement for a disclaimer of
"WebDialogs" is affirmed, and therefore the refusal of
registration in the absence of such disclaimer is affirmed.
Applicant is allowed thirty days from the mailing date of
this decision to submit the required disclaimer, in which
case this decision will be set aside, and the application
will proceed to publication. See Trademark Rule 2.142(g).