Yuzu Labs Public Benefit Corporation

Trademark Trial and Appeal Board

Jul 6, 2017

No. 86746143 (T.T.A.B. Jul. 6, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Yuzu Labs Public Benefit Corporation
_____

Serial No. 86746143
_____

Molly B. Markley of Young Basile Hanlon & MacFarlane, P.C. for Yuzu Labs Public
Benefit Corporation.

Samuel R. Paquin, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
_____

Before Shaw, Masiello, and Goodman, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Yuzu Labs Public Benefit Corporation (“Applicant”) filed an application for
registration on the Principal Register of the designation SITECONNECT in
standard characters as a mark for the following services:1
Providing temporary use of a non-downloadable web-
based software platform that enables users to locate and
connect with clinical research sites for the purpose of
participating in clinical research studies; providing

1 Application Serial No. 86746143 was filed on September 2, 2015 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), on the basis of Applicant’s asserted use of the mark in
commerce. In this decision, page references to the application record refer to the .pdf
version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system.
References to the briefs refer to the Board’s TTABVUE docket system.
Serial No. 86746143

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temporary use of a non-downloadable website featuring a
software platform that enables users to locate and connect
with clinical research sites for the purpose of
participating in clinical research studies, in International
Class 42.
The Trademark Examining Attorney refused registration on the ground that
Applicant’s applied-for mark is merely descriptive of Applicant’s services, under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was
made final, Applicant appealed to this Board and filed a request for reconsideration.
The Examining Attorney denied the request for reconsideration and this appeal was
resumed. The case is fully briefed.
1. Evidentiary objections.
Applicant attached three pages of evidence to its brief, and the Examining
Attorney has objected to this evidence as untimely under 37 C.F.R. § 2.142(d).
Applicant points out that the evidence attached to the brief consists of copies of
evidence already made of record with Applicant’s request for reconsideration.2 The
evidence filed with the request for reconsideration was timely and we have
considered it. It was unnecessary to refile the evidence with Applicant’s brief. The
Board generally will not go through the exercise of comparing evidence attached to
a brief with the prosecution record to determine whether it is properly of record.
2. Refusal under Section 2(e)(1).
A mark is merely descriptive of services within the meaning of Section 2(e)(1) if
it forthwith conveys an immediate idea of an ingredient, quality, characteristic,

2 Applicant’s reply brief, 10 TTABVUE.
Serial No. 86746143

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feature, function, purpose or use of the services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely
descriptive is determined in relation to the services for which registration is sought
and the context in which the mark is used, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978);
In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate
whether someone who knows what the services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not
immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of the services. See In re Gyulay, 3 USPQ2d at 1010;
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973).
Applicant and the Examining Attorney have made of record the following relevant
definitions:
site:
The place where a structure or group of structures was, is,
or is to be located: a good site for the school;
A website.
THE AMERICAN HERITAGE DICTIONARY, .3

3 Office Action of December 11, 2015 at 7.
Serial No. 86746143

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*****
site:
the place where something (such as a building) is, was or
will be located;
a place that is used for a particular activity;
a spatial location of an actual or planned structure or set
of structures (as a building, town, or monuments);
the place, scene, or point of an occurrence or event ;
one or more internet addresses at which an individual or
organization provides information to others ; especially : WEB SITE.
MERRIAM-WEBSTER DICTIONARY, .4
*****
site:
Site may refer to:
- Location (geography), a point or an area on the
Earth’s surface or elsewhere;
…
- Building site, a place where construction takes place;
In information technology:
- Website, a set of related web pages containing
content;
- Active Directory Site, an object that represents a
geographic location that hosts networks.
…
WIKIPEDIA, .5

4 Office Action of July 1, 2016 at 8.
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*****
connect:
To join to or by means of a communications circuit: Please
connect me to the number in San Diego. Her computer is
connected to the Internet;
To become joined or united: two streams connecting to
form a river;
To establish a rapport or relationship; relate: The
candidate failed to connect with the voters.
THE AMERICAN HERITAGE DICTIONARY, .6
*****
connect:
to join or fasten together usually by something
intervening;
to become joined
;
to have or establish a rapport ;
to establish a communications connection .
MERRIAM-WEBSTER DICTIONARY, .7
*****
The Examining Attorney points out that Applicant’s identification of services uses
the words at issue, describing the purpose of the services as “enabl[ing] users to …
connect with clinical research sites.” The Examining Attorney contends:

5 Request for reconsideration of December 30, 2016 at 11.
6 Office Action of December 11, 2015 at 8.
7 Office Action of July 1, 2016 at 9.
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Specifically, SITE refers to the clinical research sites of
the users and CONNECT refers to the function of the
software. … Together, SITECONNECT immediately
conveys information to the relevant consumer regarding
the purpose and/or function of the applicant’s services ….8
Applicant, in its brief, states that it “accepts the term ‘connect’ is descriptive of the
services.”9 Applicant focuses primarily on the meaning of the term SITE, and argues
that “the term ‘site’ has several meanings that are suggestive of Applicant’s
services. The term is not immediately descriptive when it conveys several
interpretations.”10 Applicant elaborates:
The term “site” is defined as “a place that is used for a
particular activity” …. Additionally, the term “site” refers
to a “website” and an “active directory site” …. All the
definitions of the term “site” suggest various features of
Applicant’s services. The “site” may refer to the
Applicant’s own website used to connect users and
research. It may refer to the research center’s website. It
may refer to the scheduling website. Or, the term site can
refer to a physical building where the clinical research is
conducted. The term has several connotations, and can be
interpreted to suggest several different characteristics.11
The definitions of record show that SITE is a word of broad applicability in
various contexts. However, as we have noted above, we consider Applicant’s mark in
the context of the services for which it is used. Applicant’s specimens of use and the
other evidence relating to Applicant show that the purpose of Applicant’s service is
to facilitate the recruitment of participants for clinical research studies. Applicant’s

8 Examining Attorney’s brief, 9 TTABVUE 8.
9 Applicant’s brief at 3, 7 TTABVUE 4.
10 Id.
11 Id. at 4, 7 TTABVUE 5.
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substitute specimen of use, an online advertisement, refers to the “clinical research
sites” mentioned in the identification of services as “sites” and “clinical sites” (“Built
for any site’s workflow”; “Connecting people with clinical sites”).12 Applicant’s
original specimen of use refers to them as “recruitment websites” (“Screening call
scheduling for recruitment websites”).13 Other web pages of Applicant also refer to
them as “sites” and “clinical sites”:
How does SiteConnect benefit sites and potential
participants?14
an online scheduling platform for clinical research
recruitment for Sites and Sponsors. Connect more
meaningfully … and boost productivity at clinical sites.15
37% of the time sites spend on recruitment activities is
spent playing phone tag.16
Applicant’s web page provides a customer testimonial showing that the customer
uses the word “site” to refer to the “clinical research sites” at issue:
The ability to easily schedule screening calls has benefits
for both the site and the potential participant. It increases
site productivity …17
On this record it is clear that SITE has descriptive meaning in the context of
Applicant’s services. Applicant’s contention, quoted above, that SITE has several
different meanings that “suggest various features of Applicant’s services” (i.e.,

12 Specimen filed June 9, 2016.
13 Specimen filed September 2, 2015.
14 Office Action of December 11, 2015 at 6.
15 Office Action of July 1, 2016 at 6.
16 Id. at 7.
17 Id.
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“Applicant’s own website,” “the research center’s website,” “the scheduling website,”
and “a physical building where the clinical research is conducted”) is unavailing
because, in the context of Applicant’s services, all of these meanings of SITE refer,
in a descriptive way, to “features” of the services. A term that has multiple
meanings, all of which are merely descriptive of the services, remains merely
descriptive within the meaning of Section 2(e)(1). See In re Carlson, 91 USPQ2d
1198, 1201 (TTAB 2009). We do not agree with Applicant that these meanings of
SITE are “several connotations” of the word that “suggest various features” of the
services. Rather, the dictionary definitions and other evidence demonstrate that
these are denotations of the word SITE which describe features of the services.
Turning to the mark as a whole, we consider whether the combination of the
component words of Applicant's mark “conveys any distinctive source-identifying
impression contrary to the descriptiveness of the individual parts.” In re Oppedahl
& Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). If, instead,
each component retains its merely descriptive significance in relation to the goods,
the combination results in a composite that is itself merely descriptive. See In re
Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002).
Applicant argues as follows:
The combination [of SITE and CONNECT] suggests
several characteristics of Applicant’s services –
Applicant’s website connects users to sponsors, research,
scheduling and a variety of information; research centers
are connected to patients; users and sponsors are
connected to research websites; patients are scheduled
(connected) for an appointment or meeting. There are
multiple suggestions of who and what is connected and
Serial No. 86746143

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the meaning of “site” changes with the various
information or user connected. More information is
needed to understand the nature of the services.18
The Examining Attorney responds:
The dictionary definitions of record show SITE and
CONNECT are commonly understood English words
whose meanings do not change because of the order they
are presented or their manner of use. … [T]he order of the
wording does not create a separate commercial
impression.19
The relevant customers would readily understand the meanings of the words SITE
and CONNECT in the context of the services. In Applicant’s mark the words are not
ordered in a standard grammatical structure, and we bear in mind that an unusual
order of the words could change the message that is conveyed by the mark.
However, in this case, we do not perceive any non-descriptive meaning arising from
the order of the words SITE and CONNECT in Applicant’s mark. As we have noted
above, we consider whether someone who knows what the services are will
understand the mark to convey information about them. DuoProSS Meditech v.
Inviro Med. Devices, 103 USPQ2d at 1757. In the context of Applicant’s services,
customers would readily understand SITECONNECT as describing a service that
provides a connecting function to “sites.” As the identification of services indicates,
Applicant’s customers wish to “locate and connect with clinical research sites.” The
evidence shows that such clinical research sites refer to themselves as “sites” and
seek to “connect more meaningfully” with potential participants in their research

18 Applicant’s brief at 6, 7 TTABVUE 7.
19 Examining Attorney’s brief, 9 TTABVUE 8.
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studies. The fact that the mark, alone, does not convey every detail of the nature of
Applicant’s service does not render the mark suggestive. A mark need not
immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive. In re Gyulay, 3 USPQ2d at 1010. We do
not agree that “more information is needed” in order for a customer to understand
that Applicant’s service provides a facility for desired communications (connecting)
with clinical research sites.
We have considered Applicant’s other arguments, but find them unavailing.
Applicant points out that the Examining Attorney has not shown that the single
word SITECONNECT has any definition. However, it is not necessary that a term
appear in a dictionary for that mark to be found merely descriptive. In re SPX
Corp., 63 USPQ2d 1592, 1596 (TTAB 2002). Moreover, combining two words which
are merely descriptive into a single term by the deletion of a space does not avoid a
finding of mere descriptiveness for the combined term. Id.
Applicant also argues that SITECONNECT is not “used by any other business”
and that it is “a unique designation that is not needed by third parties to describe
their services.20 However, there is no need to demonstrate that others have used the
mark at issue or that they need to use it, although such proof might be highly
relevant to an analysis under Section 2(e)(1). In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1515 (TTAB 2016). The fact that Applicant may be the first or only
user of a term does not render that term distinctive if it otherwise meets the

20 Applicant’s brief at 4 and 6, 7 TTABVUE 5 and 7.
Serial No. 86746143

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standard set forth in In re Gyulay, In re Chamber of Commerce, and DuoProSS. See
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004)
(trademark law does not countenance someone obtaining “a complete monopoly on
use of a descriptive term simply by grabbing it first”) (citation omitted); see also
Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960)
(even novel ways of referring to a product may nonetheless be merely descriptive);
In re Phoseon Tech. Inc., 103 USPQ2d 1822, 1826 (TTAB 2012).
Applicant also points out that the USPTO has previously registered the mark
SITECONNECT for computer hardware and web-based services relating to
carwashes and convenience stores. See Reg. No. 4732355.21 The details of that
registration are distinguishable from the case before us and does not affect our
analysis. We must decide each case on its own merits and “[e]ven if some prior
registrations had some characteristics similar to [applicant’s] application, the PTO’s
allowance of such prior registrations does not bind the Board.” In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see also In re Cordua
Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is
required to examine all trademark applications for compliance with each and every
eligibility requirement ….”).
After careful review of all of the evidence and arguments that are properly of
record, including those not specifically discussed herein, we find that the

21 Applicant’s response of December 30, 2016 at 12-13.
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designation SITECONNECT is merely descriptive of Applicant’s services within the
meaning of Trademark Act Section 2(e)(1).
3. Request for amendment to Supplemental Register.
Applicant, in its brief, states:
Applicant preserved its right to amend its mark on the
Supplemental Register pending a decision on the issue of
descriptiveness Should the Board maintain the
Examiner’s refusal to register SITECONNECT on the
Principal Register, the Applicant respectfully requests the
Board amend the application or remand to the Examiner
to enter the amendment.22
Applicant’s request for reconsideration clearly did not effect an amendment of the
application to seek registration on the Supplemental Register. (“While the
Application is suitable for amendment to the Supplemental Register, … such an
amendment is not now made.”)23
The Board’s ability to amend an application that it has reviewed on appeal is
limited See 37 C.F.R. § 2.142(g) (“An application which has been considered and
decided on appeal will not be reopened except for the entry of a disclaimer… or upon
order of the Director….”). The Board can neither amend the application as
requested nor remand the Application after decision on appeal to allow Applicant to
amend the application. In re Societe D’Exploitation de la Marque Le Fouquet’s, 67
USPQ2d1784, 1789 (TTAB 2003). See TBMP § 1218.
Decision: The refusal under Section 2(e)(1) is AFFIRMED.

22 Applicant’s brief at 7, 7 TTABVUE 8.
23 Applicant’s request for reconsideration filed December 30, 2016 at 3.