Wired Solutions, LLC

Trademark Trial and Appeal Board

Jun 18, 2003

No. 76128628 (T.T.A.B. Jun. 18, 2003)

Mailed: June 18, 2003
Paper No. 12
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wired Solutions, LLC
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Serial No. 76/128,628
_______
Erik B. Cherdak of Steptoe & Johnson, LLP for Wired
Solutions, LLC.
Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Seeherman, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Wired Solutions, LLC has appealed from the final
refusal of the Trademark Examining Attorney to register
INTERACTIVE PROFILE CARD for "consulting services[,] namely
designing and facilitating implementation of electronic
compact disc based business cards for use in personal
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/128,628
2
computer disc players."1 Registration has been refused
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1), on the ground that applicant's mark is merely
descriptive of its identified services.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not request an oral hearing.
A mark is merely descriptive, and therefore prohibited
from registration by the provisions of Section 2(e)(1) of
the Trademark Act, if it immediately conveys knowledge of
the ingredients, qualities or characteristics of the goods
[or services] with which it is used. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
It is the Examining Attorney's position that
INTERACTIVE PROFILE CARD describes a feature or
characteristic of applicant's consulting services, namely,
that applicant's services are to design and facilitate
implementation of a type of business card which contains a
company or personal profile. In support of her position,
the Examining Attorney has submitted dictionary definitions
of the component words of the mark, as well as excerpts of
articles taken from both the LEXIS/NEXIS database and
1 Application Serial No. 76/128,628, filed September 14, 2000,
based on an asserted bona fide intention to use the mark in
commerce.
Ser No. 76/128,628
3
materials taken from various websites. In particular, she
points to an article at www.multinepal.com/misc/hmc
entitled "An innovation in the Digital CD Industry" which
refers to "[a] combination of CD and the traditional
business card" which "[f]its into the mini CD layer in your
CD ROM drive" and lists, as applications for this
Multipurpose Digital CD Card:
Business card—A business card with a
difference. Containing your company
profile or introduction in a streaming
multimedia presentation.
Profile Card—For describing about
famous personalities and their
achievements. [sic] and the list is
never ending....2
In addition, the Examining Attorney has submitted
evidence that the term "profile card" is used for a card,
whether paper or electronic, that provides information
about a person or thing. For example:
Using information from "fantasy profile
cards" that includes statistics for
every major league player....
"Newsbytes," March 4, 1996
"The use of faculty profile cards for
disseminating information."
"Special Libraries," January 1994
...City to City features a personal-
profile card....
2 This article, of course, is not evidence of the truth of the
matters discussed in the article, but it does reflect the manner
in which the terms are viewed by both the author of the article
and those who are exposed to it.
Ser No. 76/128,628
4
"MacUser," September 1988
The Graduate Profile Card is presented
to seniors at graduation and is an
accumulation of pertinent
information....
www.pcs.k12.va.us/public/school-
board/profile-card.htm.
Further, we note from applicant's own statements that
its business involves preparing "interactive business cards
which are custom-developed for each customer." Response
filed August 16, 2001. In addition, applicant, in response
to the Examining Attorney's request for information about
its services, submitted a printout from the website of
bionicarts.com.3 This material contains a "dialog box" with
the following entry:
Interactive Profile Cards (IPCs)
The IPC is a business card-sized CD ROM
that showcases a company's
products/services and dynamically
directs consumers to take effective
action. Customized using full motion
graphics, original audio and
distributed like business cards, the
IPC is a marketing tool that generates
core results and trackable statistics.
Where print, TV, and radio ads do not
produce clear ROI, the IPC is 100%
3 Although the application is based on applicant’s asserted
intention to use the mark, and although the submitted material
makes no mention of applicant's name (nor does it indicate the
specific url from which the material was taken, nor even that it
was printed directly from a website), we assume that this
material represents applicant's use of its mark in view of the
statement in applicant's response that "additional information
regarding the use of the MARK in commerce has been attached
hereto as EXHIBIT A." (emphasis in original)
Ser No. 76/128,628
5
accountable for its results using
intuitive client-side tracking.
Applicant's use of the plural form "Interactive
Profile Cards" shows that applicant itself promotes
INTERACTIVE PROFILE CARD as the name of the product which
it designs. Further, applicant's statements in prosecuting
this application show that "interactive business card" has
a readily understood meaning, while the NEXIS and other
evidence demonstrates that "profile card" has an equally
well-understood meaning. No thought or imagination is
required to understand that INTERACTIVE PROFILE CARD, used
in connection with an electronic business card, is an
interactive card which contains the profile of an
individual or company. The evidence of record demonstrates
that the relevant class of consumers would immediately
understand, upon seeing the term INTERACTIVE PROFILE CARD
in connection with designing and facilitating the
implementation of electronic compact disc based business
cards, that the subject of the service is this type of
business card. The term INTERACTIVE PROFILE CARD thus is
merely descriptive of the services, because it immediately
conveys information about a central feature of the design
and implementation services. See In re Ethnic Home
Lifestyles Corp., __USPQ2d__, Serial No. 75/943,763 (TTAB
Ser No. 76/128,628
6
June 4, 2003) (ETHNIC ACCENTS merely descriptive of
"entertainment in the nature of television programs in the
field of home décor" because ethnic accents are significant
features or the subject matters of such programs).
Applicant argues that its mark is suggestive and not
descriptive because "consumers must use thought and
imagination to determine the nature of the MARK--there is
no immediate way to perceive the MARK and to immediately
determine that consulting services in the creative
marketing via compact disc field (among others) may be
obtained." Brief, p. 3. (emphasis in original) It appears
from applicant's brief, as well as its previous
submissions, that applicant takes the position that because
its mark does not specifically reference services, it
cannot be descriptive of its services. For example, in the
response filed August 16, 2001, applicant states that "the
terms 'service' or 'services' are in no way part of the
MARK itself and no reasonable interpretation of same would
lead one to immediately deduce that services are in fact
provided." (emphasis in original)
However, this argument ignores the well-established
principle that the question of descriptiveness is
determined not in the abstract, but in relation to the
goods on which, or the services in connection with which,
Ser No. 76/128,628
7
it is used or proposed to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Thus, the question is not whether one who was not aware of
applicant's services would be able to guess, upon seeing
the mark, that applicant provided any services. Rather,
the question is whether one who was aware of the services
provided by applicant would understand that a feature of
the services is the design and implementation of
interactive electronic business cards which provide
profiles of the individual or company.
We find that INTERACTIVE PROFILE CARD does immediately
convey this information, and therefore that the mark is
merely descriptive of the identified services.
Decision: The refusal of registration is affirmed.