Example #1: DeliverE
Example #2: BUSINESS WITHOUT INTERRUPTION
Example #3: NETBACKUP
Example #4: MARKETTOOLS
Example #5: SARATOGA SYSTEMS
[Application covered: "managing advertising for others on global computer networks; tracking responses to advertising disseminated via global computer networks; e-mail marketing services, namely, dissemination of advertising and promotional offers for others via electronic mail; assisting advertisers in identifying and being introduced to potential customers on computer networks; and conducting market research for others concerning users of global computer networks."]
The Examining Attorney posits that "Applicant's mark merely describes the delivery of advertising services for others." Pointing to but a single reference in the universe of registered marks, which is for unrelated services, the Examining Attorney characterizes Applicant's mark as a "non-distinctive trade term." With all due respect, the Examining Attorney has not carried his burden of proof that Applicant's mark is merely descriptive. In fact, Applicant's mark is used in an idiomatic fashion, and is stylized in a manner that emphasizes its function as a brand. Accordingly, as explained in more detail below, the mark is suggestive and is entitled to registration on the Principal Register.
[DIRECT DELIVERY NETWORK (and Design) is registered for "defining and implementing product marketing programs for others which access customer prospects through existing databases," but the exclusive right to DIRECT DELIVERY NETWORK is disclaimed.]
The evidence presented by the Examining Attorney is not relevant to the registrability of Applicant's mark. First, as is apparent from a comparison of the respective recitations of services, Applicant and the owner of the cited registration, the Yellow Pages Publishers Association, use their mark in connection with wholly unrelated services. Whether DIRECT DELIVERY NETWORK merely describes some aspect of the services of publishers of Yellow Pages directories has no bearing on Applicant's services. Although we have not reviewed the file for the cited registration, it appears likely that the record reflected use of the mark in connection with the delivery of Yellow Pages directories to residences or businesses, as is the common practice in the industry. Certainly, then, the Examining Attorney should not rely on the disclaimer in this registration as evidence of the meaning of Applicant's mark, which is used in a completely different context.
Furthermore, as the Examining Attorney is aware, disclaimers can be made voluntarily by the applicant of a trademark application, per TMEP §1213.01(c). Therefore, one cannot conclude that there was any evidence that "delivery" is a descriptive term with respect to the registrant's services, or even that the disclaimer was required to obtain registration. In sum, the Examining Attorney should not rely on this reference in his consideration of Applicant's mark.
Setting aside the earlier registration, the Examining Attorney's position appears to be based on two faulty assumptions: (1) that relevant consumers will perceive Applicant's mark as merely the word "delivery"; and (2) that the word "delivery" describes some aspect of Applicant's services. Neither is correct. Because the mark is stylized to emphasize and distinguish the letter "E," in contrast to the rest of the mark, the mark is pronounced differently than "delivery," creates a significantly different commercial impression from "delivery," and therefore, consumers would not perceive the mark and its meaning as "delivery." Even if consumers were to deconstruct, translate, and reassemble Applicant's mark, the mark does not immediately convey the nature of Applicant's services, and therefore, the mark is not merely descriptive.
Applicant's stylization of its mark as DeliverE — with a capitalized final letter "E" — dictates a significantly different pronunciation than the word "delivery." Capitalizing the final letter "E" creates a separate syllable with primary stress, pronounced as though the "E" were another word in the mark: "delíver É". The capitalization of the final letter will cause the relevant consumer to distinguish this part of the mark as a meaningful contribution to the commercial impression of the mark as a whole, rather than simply functioning as the final letter of a word. For these reasons, relevant consumers would not pronounce the mark as "delivery," and therefore, Applicant's mark would not be perceived as simply a misspelling of the word "delivery," nor a phonetic equivalent of the same.
Combining two words into a unitary whole is a practice with which consumers are quite familiar due to its widespread usage in the marketplace, particularly in the field of high technology. The well known tax preparation product TurboTax illustrates this phenomenon. Consumers pronounce TurboTax as the two words "turbo tax," rather than as turbotax, just as RoboTix would be pronounced differently than robotics. A similar two-word pronounciation applies to compounds formed of one letter and a word, such as Apple's iMac, which is pronounced "I Mac," and not imac. Consumers recognize that such unitary marks are to be pronounced as though they were two words. Consistent with this pattern, the stylization of Applicant's mark will lead consumers to read, pronounce, and perceive it as Deliver E, not "delivery."
Furthermore, consumers readily recognize that when the letter "E" is prominently used as part of a mark in a case contrasting with the other letters/syllables in the mark, there is an association with the field of high technology and digital media. Many marks in the industry use a distinctive "e" at the beginning of a word in lower-case type, in contrast to the adjacent capitalized letter(s). Examples of this stylization include: eBay (personal online trading community), eCompany (web site design and web solutions), eSoft (web services for connecting businesses to the Internet), eShare (software and services for online businesses), and eROWE (custom-made graphics and multimedia on the web). Other companies use the letter "e" in contrasting lower-case type at the end of a mark, such as TRUSTe (for services dealing with privacy issues on the Internet). So many technology companies are using these two patterns in so many contexts that consumers can't help but see and pronounce the "E" separately when they encounter technology-related marks.
Applicant's mark capitalizes on this familiar pattern, displaying a distinctive capital "E" positioned at the end of a mark, which contrasts with adjacent letters in lower case type. Having become well-trained to pronounce the "E" separately, consumers are extremely unlikely to read, pronounce, and perceive Applicant's mark as the word "delivery." Accordingly, Applicant's mark does not merely describe its services as "delivery." (FN1: Nor would "delivery" be an appropriate description of Applicant's services in any event. Applicant principally manages advertising campaigns and measures the response to those campaigns. Although Applicant's services also include the dissemination of advertising and promotional offers via electronic mail, dispatching an e-mail message does not constitute "delivery" any more than dropping a circular into a U.S. Postal Service collection box constitutes "delivery." As the Examining Attorney undoubtedly can appreciate from Trademark Office operations, mailing provides no guarantee of receipt.)
The powerful public association between the letter E and cutting edge technology creates a mark that is, in fact, suggestive. Because "E" has a broad technology connotation, "Deliver E" does not immediately inform consumers about the nature of Applicant's services. Instead, relevant consumers will form an entirely different and unique impression of Applicant's mark as suggesting both that Applicant's services are "on the cutting edge" and that Applicant comes through in the clutch — that Applicant delivers. Reading the mark as a whole, then, relevant consumers would perceive Applicant's mark as: "we deliver the promise of technology."
Because Applicant's mark conjures up the idiom "we deliver," as well as the connotations of the distinct "E", consumers must exercise multiple mental steps to understand the meaning conveyed by the mark as applied to Applicant's services. An idiom, by definition, cannot be understood from the individual meanings of its elements. (Webster's II New College Dictionary, Houghton Mifflin Company, 1995). Therefore, because Applicant's mark therefore does not immediately convey to one encountering it the nature of Applicant's services, see TMEP §1209.01(a) ("a descriptive term . . . immediately tells something about the goods and services"), it is not merely descriptive. It is evident therefore that relevant consumers would not immediately reach the conclusion that Applicant's mark describes what the Examining Attorney has stated as "the delivery of advertising services for others." As a result, Applicant's mark is not merely descriptive, but at worst, suggestive.
To the extent the Examining Attorney finds Applicant's DELIVERE (Stylized) mark to fall within the "gray area" between obviously descriptive marks, on the one hand, and suggestive marks on the other, all doubts must be resolved in Applicant's favor. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983) (where combination of two merely descriptive terms creates a mark that might be either descriptive or suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FOOT not merely descriptive for antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal reversed). Accordingly, the Examining Attorney should withdraw the refusal under Section 2(e)(1).
The Examining Attorney founds her refusal of registration of BUSINESS WITHOUT INTERRUPTION on the proposition that the mark "would immediately be understood as describing the function or purpose of Applicant's goods, that is, a software system for running business without interruption." With all due respect to the Examining Attorney, this analysis appears to be based on a misapplication of the legal requirements for finding a mark to be merely descriptive of the applied-for goods. BUSINESS WITHOUT INTERRUPTION cannot describe the function or purpose of Applicant's software with any degree of precision, because "interruption" has a multiplicity of meaning in the field of business. At most, Applicant's mark suggests the desired result of deploying Applicant's software, and does not immediately describe the function or purpose of those goods. Because thought and imagination is required to understand the nature of Applicant's goods, the mark is suggestive, and therefore registrable on the Principal Register.
To be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used. If the information about the product or service is indirect or vague, then the mark is considered suggestive, not descriptive. See J. McCarthy, McCarthy on Trademarks and Unfair Competition §11.19, at 11-26 (4th ed. 1998).
Applying these principles, Applicant's mark is not descriptive. BUSINESS WITHOUT INTERRUPTION does not immediately convey to one encountering it the nature of Applicant's goods. See TMEP § 1209.01(a) ("a descriptive term… immediately tells something about the goods or services"). Applicant's mark is in fact suggestive because "imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services." In re Quik-Print Shops, Inc. 616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980).
INTERRUPTION. The Examining Attorney has assumed that "business without interruption" is a readily understood phrase that has a particular meaning. However, the conduct of business may be interrupted for a wide variety of reasons, from a hurricane or power outage to a family emergency or flight delay, or simply a dead cell phone battery. Even in the context of computer systems, the conduct of business may be interrupted in innumerable ways, from network connectivity failures and printing problems to hard disk crashes and rude messaging systems that prevent work until a message is answered. Because "interruption" does not have a specific meaning in relation to "business" or the computer field, Applicant's mark is ambiguous and incapable of immediately conveying information about Applicant's goods.
The Examining Attorney has presented no evidence, and there is no reason to believe that INTERRUPTION has any more specific meaning with respect to Applicant's goods. Such ambiguity demonstrates that the term INTERRUPTION is not merely descriptive with respect to Applicant's goods. As the United States Court of Appeals for the Federal Circuit explained in In re Hutchinson Technology Incorporated, 852 F.2d 552, 555 (Fed. Cir. 1988); 7 U.S.P.Q.2D (BNA) 1490, 1492, 1493, a term that can has multiple meanings does not convey the sort of immediate understanding of the goods necessary to classify a mark as merely descriptive. The court found the term "technology" to be a very broad term, encompassing many categories of goods, and that the idea "technology" does not convey an immediate idea of the "ingredients, qualities, or characteristics of the goods" listed in the application: etched metal electronic components; flexible circuits; actuator bands for disk drives; print bands; increment disks; [and] flexible assemblies for disk drives. Thus, the term "technology" was not merely descriptive. Similarly, the term "interruption" fails to provide immediate information about Applicant's goods, and therefore is not merely descriptive with respect to those goods.
The Trademark Trial and Appeal Board continues to apply this principle in reversing refusals of registration. In its recent decision in In re Siemens Stromberg-Carlson, Allen's Trademark Digest, Vol. 13, No. 6, at 30 (Dec. 1999) (attached hereto as Exhibit A), the Board reiterated the significance of such multiple meanings. In Siemens, the Board agreed with the Applicant that the proposed mark was not descriptive, noting that there were several different interpretations of applicant's mark. Similarly, in In re PointCast Incorporated, Allen's Trademark Digest, Vol.13, No. 4, at 59 (Oct. 1999) (attached hereto as Exhibit B), the Board found that because SMART has multiple, commonly understood meanings, the Examining Attorney's definitions did not prove that SMARTSCREEN had a readily recognized meaning with respect to the Applicant's goods. The Board would likely apply the same reasoning to the word INTERRUPTION in this case.
The Examining Attorney bears the burden of showing that a mark is merely descriptive of the relevant goods and services. In re Merrill, Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q. 1141, 1143 (Fed. Cir. 1987). No such evidence has been presented. In particular, the Examining Attorney has provided no evidence as to the common understanding of Applicant's mark as a whole.
Purpose. Even if Applicant's mark were deemed to directly inform a prospective purchaser that the goods would in some manner reduce the likelihood that the conduct of business would be interrupted, this provides no information about the nature or use or function or characteristics of the goods. Instead, it provides information only about the hoped-for end result of deploying the product. The Examining Attorney may believe that this ambiguous message falls within the rubric of describing the purpose of Applicant's goods. However, a careful review of the case law demonstrates that such a remote objective falls within the realm of suggestion rather than description. Furthermore, to construe the case law otherwise would be inconsistent with both common sense and Office practice.
The term purpose should not be interpreted to include an aspiration as remote as the elimination of interruptions in the conduct of business. Stretching the law to this extent would preclude the registration of all marks reflecting remote aspirations, many of which are registered every year. Recent examples of such marks include COMMUNITIES AT PEACE for promoting public awareness of gang violence (FN1: Registration No. 2,324,912 (February 29, 2000)), HARMONY for sound-activated vibrators to discourage snoring (FN2: Registration No. 2,169,365 (June 30, 1998).), and BUSINESS AT THE SPEED OF THOUGHT for satellite communication services (FN3: Registration No. 2,345,474 (April 25, 2000).). Overextending the reach of purpose would impermissibly narrow the protection of suggestive marks, and exceed the Office's statutory mandate to refuse registration of marks that are merely descriptive.
The leading cases establishing that a mark stating the purpose of the goods is merely descriptive were In re General Permanent Wave Corporation, 118 F.2d 1020, 49 U.S.P.Q. (BNA) 184 (C.C.P.A. 1941) and In re W. A. Sheaffer Pen Co., 158 F.2d 390, 72 U.S.P.Q. (BNA) 129 9C.C.P.A. 1946). In General Permanent Wave, the Court of Customs and Patent Appeals (CCPA) considered the mark VAPER MARCEL for hair waving pads. The Applicant admitted that its goods were "used in applying vapor marcels," and the misspelling of vapor as vaper was viewed as immaterial. Accordingly, the CCPA found that the mark "informed the trade of the purpose for which its goods are made and of the use to which they are to be put." In Sheaffer, the CCPA affirmed the refusal to register the mark FINELINE for mechanical pencils. The CCPA determined that because the pencil was capable of and intended to be used to write fine lines, the mark immediately described the purpose of the goods. Both cases are marked by the interchangeable use of the terms "use" and "purpose," indicating that the purpose criterion was closely tied to the immediate function of the goods.
The line between a mark that merely describes the purpose of the goods, and a mark that suggests the nature of the goods is narrowly drawn. In In re The Realistic Company, 440 F.2d 1393, 169 U.S.P.Q. (BNA) 610 (C.C.P.A. 1971), the CCPA considered the application of these precedents to the mark CURV' for use in connection with permanent wave curling solution. Even though CURV' suggests "a possible result of the intended use" of the goods, because the mark does not "convey any definite or immediate meaning" it was deemed not merely descriptive of the goods.
The suggestive implication of Applicant's mark in relation to Applicant's goods is considerably more remote than CURV' for permanent wave curling solution. The immediate purpose of Applicant's computer software for backing up and restoring computer data, for example, is to create an archive of data and to retrieve data from that archive, so that data need not be recreated from scratch if it is lost. Such capabilities contribute to the aspiration suggested by Applicant's mark, but a degree of imagination and a number of mental steps are required to connect the two. The same is true of all of Applicant's goods.
To assert that BUSINESS WITHOUT INTERRUPTION merely describes Applicant's goods would so telescope the relevant consumers' thought process that it would embrace even a paper clip, the absence of which can stop work while one searches around the office for the indispensable fastener. Such a distorted interpretation would threaten to completely subsume the category of suggestive marks, contrary to controlling precedent and Office practice.
To the extent the Examining Attorney finds Applicant's BUSINESS WITHOUT INTERRUPTION mark to fall within the "gray area" between obviously descriptive and suggestive marks, all doubts must be resolved in Applicant's favor. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983) (where combination of two merely descriptive terms creates a mark that might be either descriptive or suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FOOT not merely descriptive for antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal reversed). Accordingly, the Examining Attorney should withdraw the refusal under Section 2(e)(1).
Refusal of Registration. The Examining Attorney founds his refusal of registration of the Applicant's mark on the following syllogism: (1) the term "network backup" merely describes Applicant's goods; (2) Applicant's mark NETBACKUP would be understood by relevant consumers to have the same meaning as "network backup;" and, therefore, (3) Applicant's mark immediately conveys the nature of Applicant's goods and is merely descriptive of them. With all due respect to the Examining Attorney, as explained in further detail below, there are flaws in every step of this analysis, and the multiple layers of reasoning required to carry the argument from beginning to end are characteristic of a suggestive, not a descriptive, mark.
Absence of Evidence. It is worth emphasizing at the outset that the Examining Attorney has presented no evidence that Applicant's mark is used to describe Applicant's goods. In determining whether a word has a descriptive or suggestive significance as applied to merchandise, it is proper to take notice of the extent to which it has been used by others on such merchandise. Where others in the industry do not use the term as a descriptive reference, this is evidence that the term is neither a natural nor obvious way to describe the goods. Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (T.T.A.B. 1975), aff'd, 189 U.S.P.Q. 348 (C.C.P.A. 1976).
None of the articles selected from the Examining Attorney's exhaustive LEXIS/NEXIS research use either Applicant's mark, or the two-word phrase NET BACKUP to refer to or to describe goods comparable to the Applicant's. Accordingly, this research demonstrates that Applicant's mark is "neither a natural nor obvious way" to describe Applicant's goods.
Applicant's Goods and "Network Backup." Applicant declines to accept the Examining Attorney's proposed amendment to its identification of goods: "computer software for network backup and restoration." Accordingly, the computer software at issue is as listed above. The determination of whether a mark is merely descriptive must be made not in the abstract but, rather, in relation to the goods for which registration is sought. A careful analysis of both Applicant's goods and the evidence showing use of "network backup" undermines the first prong of the Examining Attorney's analysis: the term network backup does not merely describe Applicant's goods.
The phrase "network backup" is an ambiguous moniker that cannot provide real information about the functions, features or characteristics of specific software products. Instead, the phrase appears to have been coined to distinguish products that operate on a computer network from an earlier generation of products that were not "network-aware." The phrase "network backup" cannot inform customers whether the data being backed up resides only on a central server, or on any server, or on both workstations and servers, or only on workstations, or on portable computers, or on handheld computers. The phrase also is ambiguous as to the destination of the data, whether a local tape drive or disk array, a remote private server, a remote Internet server, or some combination of these storage locations. In the context of the information sought by relevant consumers of backup software, the phrase "network backup" means about the same thing as "designed after the mid-1980s."
Furthermore, the phrase never was technically correct: neither Applicant's software nor other backup applications back up the "network." Regardless of how carefully data is captured from any number of servers, workstations, portable computers, and handheld computers, rebuilding a network after a disaster is an awesome task that may involve days of labor even before the backed-up data can be restored. It is impossible to truly "back up" a network without maintaining a functional duplicate of it, a feat that no computer software could perform.
Thus, even if the Examining Attorney were correct that Applicant's mark would instantly be interpreted by relevant consumers to mean "network backup," that phrase itself is not sufficiently direct or informative to meet the Office's test for a mark to be deemed merely descriptive. To be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used. If information about the product or service is indirect or vague, then the mark is considered suggestive, not descriptive. See J. McCarthy, McCarthy on Trademarks and Unfair Competition §11.19, at 11-26 (4th ed. 1998); Trademark Manual of Examining Procedure §1209.01(a) ("a suggestive term differs from a descriptive term, which immediately tells something about the goods or services").
Moreover, unlike the identification proposed by the Examining Attorney, the phrase "network backup" is only loosely related to the functions identified in the Application. Applicant's software supports the disaster recovery functions of backups with sophisticated storage management and replication capabilities. The phrase "network backup," simply does not convey the nature of modern storage management software applications.
Applicant's Mark. The second step in the Examining Attorney's syllogism posits that Applicant's mark, NETBACKUP, is the equivalent of and would instantly be understood to represent the phrase "network backup." There is absolutely no evidence in the record in support of this position, and it relies on an impermissible dissection of Applicant's mark. In fact, NETBACKUP is not used by Applicant or by others as a synonym or substitute for the phrase "network backup," and the modern interpretation of the two-word phrase "net backup" in the field of computer software is susceptible to so many different interpretations that it cannot be deemed to merely describe Applicant's goods.
As the Examining Attorney is aware, a composite mark consisting of two or more descriptive words may be suggestive or fanciful and therefore registrable. E.g., In re Colonial Stores, Inc., 394 F.2d 549, 552-53, 157 U.S.P.Q. 382, 385 (C.C.P.A. 1968) (SUGAR & SPICE as a whole not merely descriptive for bakery products); W.G. Reardon Laboratories, Inc. v. B. & B. Exterminators, Inc., 71 F.2d 515, 517, 22 U.S.P.Q. 22, 24 (4th Cir. 1934) (MOUSE SEED as a whole not descriptive for poisonous pellets used to kill mice). In fact, "a mark that connotes two meanings — one possibly descriptive, and the other suggestive of some other association — can be called suggestive, as the mark is not 'merely' descriptive." See J. McCarthy on Trademarks and Unfair Competition §11:19, at 11-28 (4th ed. 2001). E.g., Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 U.S.P.Q. 55, 60 (2nd Cir. 1961) (POLY PITCHER not merely descriptive because it connotes both a polyethylene pitcher and is suggestive of MOLLY PITCHER of Revolutionary time). Moreover, Applicant need not demonstrate that NETBACKUP evokes an historical image or an incongruity: mere ambiguity is sufficient to overcome evidence that a mark is merely descriptive. E.g., In re Diet Tabs, Inc., 231 U.S.P.Q. 587 (T.T.A.B. 1986) (refusal of registration reversed because the mark had two possible interpretations).
In the Office Action, the Examining Attorney supplied a definition of "backup," but no definition of "net." It is precisely the ambiguity of the term "net" that renders the two word phrase "net backup," and Applicant's unitary mark, NETBACKUP, suggestive rather than descriptive. Although Applicant does not dispute that the abbreviation NET can be interpreted to refer to the term "network," the abbreviation is not solely used to refer to "network" nor is it commonly understood to mean "network." Evidence of the multiple, common meanings of NET can be found in computer dictionaries which define NET as an abbreviation for words other than "network." The Microsoft Computer Dictionary defines NET as short for either Internet or Usenet. (FN1: Microsoft Computer Dictionary, 4th Ed., at 307. (Attached hereto as Exhibit A).) No mention of "network" is even made. In fact, the very same online computer dictionary that the Examiner uses to present evidence of the term BACKUP, defines NET as short for Internet. (FN2: Webopedia. http://webopedia.internet.com/TERM/N/Net.html. (Attached hereto as Exhibit B).) Once again, "network" is not part of the definition. The Trademark Trial and Appeal Board has taken notice of "the fact that 'net' is often a short form of the word 'Internet,'" (FN3: In re Excelnet (Guernsey) Limited, at 7 (TTAB February 14, 2001), available at http://www.uspto.gov/web/offices/com/sol/foia/ttab/2dissues/2001/75048668.pdf. Abstracted in Allen's Trademark Digest, Vol. 14, No. 11, at 28 (May 2001) (attached hereto as Exhibit C).) citing Data Concepts Inc. v. Digital Consulting Inc., 150 F.3d 620, 47 U.S.P.Q.2d 1672, 1675 n.1 (6th Cir. 1998), Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 40 U.S.P.Q.2d 1412, 1414 (N.D. Ill. 1996), and Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1699 (Fed. Cir. 1992).
Since the abbreviation NET is most commonly understood to mean "Internet, " as evidenced by the computer dictionary definitions and cases cited above, the mark NETBACKUP used on Applicant's goods could be interpreted to mean computer software which copies and stores the user's Internet preferences, such as one's cache or cookies. In addition, it could be interpreted to mean software which copies and stores information contained on one's web site, so as to protect that information in case of system failures.
The abbreviation NET also refers to the term "usenet." Usenet is "a worldwide network of UNIX systems that has a decentralized administration and is used as a bulletin board system by special-interest discussion groups. Usenet, which is considered part of the Internet, is composed of thousands of newsgroups, each devoted to a particular topic. Users can post messages and read messages from others in these newsgroups in a manner similar to users on dial-in BBSs." (FN4: Microsoft Computer Dictionary, 4th Ed., at 462. (Attached hereto as Exhibit D).) In this sense, a consumer of Applicant's goods could easily interpret NETBACKUP to refer to software that copies and stores information shared on Usenet for use in disaster recovery.
Additionally, the term NET has a more fundamental definition, which used in conjunction with BACKUP, provides a metaphor for the purpose or use of the Applicant's goods. A "net" is defined as "something that ensnares" or "to catch in" or "to protect, cover or surround with." (FN5: Webster's II New College Dictionary, © 1995, Houghton Mifflin Company, at 734. (Attached hereto as Exhibit E).) As the Examiner contends and the Applicant concedes, the term BACKUP, when used in connection with the Applicant's goods, refers to software that is used to copy and store data. Therefore, NETBACKUP provides a metaphor for something which entraps and contains information. In addition, "net" is defined as "ultimate: final" (FN6: Id.) Therefore, NETBACKUP can also be a metaphor for the replication and storage of data in a final form. Understanding a metaphor, by definition, (FN7: The definition of "metaphor" is: "A figure of speech in which a term is transferred from an object it ordinarily designates to an object it may designate only by implicit comparison or analogy…" Webster's II New College Dictionary, © 1995, Houghton Mifflin Company, at 688. (Attached hereto as Exhibit F).) requires imagination and thought.
The multiplicity of meanings of the word "net" demonstrate that this portion of the mark is ambiguous and cannot be considered merely descriptive of the Applicant's goods. As the United States Court of Appeals for the Federal Circuit explained in In re Hutchinson Technology Incorporated, 852 F.2d 552, 555 (Fed. Cir. 1988); 7 U.S.P.Q.2D (BNA) 1490, 1492, 1493, a term that has multiple meanings does not convey the sort of immediate understanding of the goods necessary to classify a mark as merely descriptive. The court found that the term "technology" does not convey an immediate idea of the "ingredients, qualities, or characteristics of the goods" listed in the application: etched metal electronic components; flexible circuits; actuator bands for disk drives; print bands; increment disks; [and] flexible assemblies for disk drives. Thus, the term "technology" was not merely descriptive. The same reasoning applies to the term NET in relation to Applicant's goods.
The Board regularly applies this principle in reversing refusals of registration. In In re Diet Tabs, Inc., 231 U.S.P.Q. 587 (T.T.A.B. 1986), the Board reversed the refusal of registration of DIET-TABS, because the mark could be interpreted to mean either "diet tablets" or "dietary tablets," each of which has a different significance in relation to "vitamin supplement tablets." Similarly, in In re Siemens Stromberg-Carlson, (FN8: Available at http://www.uspto.gov/web/offices/com/sol/foia/ttab/2eissues/1999/75048293.pdf. Abstracted in Allen's Trademark Digest, Vol. 13, No. 6, at 30 (Dec. 1999) (attached hereto as Exhibit G).) the Board agreed with the Applicant that the proposed FAST FEATURE PLATFORM mark was not descriptive, noting that there were several different interpretations of applicant's mark. And in In re PointCast Incorporated, (FN9: Available at http://www.uspto.gov/web/offices/com/sol/foia/ttab/2eissues/1999/75022018.pdf. Abstracted in Allen's Trademark Digest, Vol.13, No. 4, at 59 (Oct. 1999) (attached hereto as Exhibit H).) the Board found that because SMART has multiple, commonly understood meanings, the Examining Attorney's definitions did not prove that SMARTSCREEN had a readily recognized meaning with respect to the Applicant's goods. The Board would likely apply the same reasoning to the word NET in this case.
In summary, Applicant's mark does not immediately convey information about the nature of the goods. NETBACKUP is in fact suggestive of the Applicant's goods because "imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services." In re Quik-Print Shops, Inc. 616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980). Accordingly, the refusal to register the mark based on §2(e)(1) of the Trademark Act should be withdrawn.
The Presumption of Suggestiveness. In a close case, the law favors a determination that a mark is suggestive. Such a finding is particularly true when a finding of descriptiveness would not serve the policy goals of Section 2(e)(1) of the Lanham Act. As explained in Section 1209 of the Trademark Manual of Examining Procedure,
The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.
Neither of these concerns is implicated in this case.
The Examining Attorney has never suggested that competitors, resellers, or other interested might need to use Applicant's mark in order to describe competing computer software. As demonstrated by his LEXIS/NEXIS research results, the mark has not been used by others, and as Applicant holds no monopoly in the field of storage management software, there is no basis on which to speculate that others might need to use Applicant's mark in the future.
To the extent the Examining Attorney finds Applicant's NETBACKUP mark to fall within the "gray area" between obviously descriptive marks, on the one hand, and suggestive marks on the other, all doubts must be resolved in Applicant's favor. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983) (where combination of two merely descriptive terms creates a mark that might be either descriptive or suggestive, doubts are to be resolved in favor of applicant; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI- FOOT not merely descriptive for antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal reversed). Accordingly, the Examining Attorney should withdraw the refusal under Section 2(e)(1).
Acquired Distinctiveness. In the alternative, Applicant alleges that the NETBACKUP mark, as a whole, has become distinctive as applied to Applicant's goods. Because Applicant has used its mark in commerce for more than 5 years, Applicant is entitled to registration of its mark under Trademark Act §2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.
To establish that a mark is registrable under section 2(f), Applicant may rely on any appropriate evidence tending to show that the mark distinguishes the Applicant's goods. 37 C.F.R. §2.41(a); TMEP §1212.03. It is well-established that Applicant need present only a prima facie case of acquired distinctiveness, rather than conclusive evidence, to be entitled to registration, TMEP §1212.01, and that five years' use in commerce may be accepted as prima facie evidence that the mark has acquired distinctiveness. TMEP §1212.05.
Applicant's claim of distinctiveness based on five years' use in commerce is supported by the accompanying Declaration of Jay A. Jones which is incorporated herein by this reference. The Jones Declaration evidences that the mark has become distinctive of Applicant's services through Applicant's continuous use of the mark in commerce for at least the five years preceding Applicant's execution of the Declaration. (FN10: This evidence is submitted without prejudice to Applicant's right to submit further and additional evidence should the Examining Attorney continue his refusal to register Applicant's mark.) Accordingly, the Examining Attorney should withdraw his refusal of registration based on descriptiveness.
Refusal of Registration. Despite the Applicant's arguments to the contrary, the Examining Attorney has refused registration of Applicant's mark on the grounds that MARKETTOOLS is merely descriptive of the applied-for services. For the reasons set forth in its response to Office Action No. 1, filed March 17, 2000, Applicant continues to maintain that its mark is not merely descriptive of the nature of its services. In view of the Examining Attorney's position, however, Applicant herewith submits in the alternative (FN1: See TMEP §1212.02(c) (applicant permitted to argue that a mark is inherently distinctive and, in the alternative, that it has acquired distinctiveness).) evidence of the mark's substantial reputation and goodwill, which entitle the mark to registration on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f), as it has acquired distinctiveness through substantially exclusive and extensive use in interstate commerce such that the mark is indicative of the source of the applied-for services.
The MARKETTOOLS Mark Has Acquired Distinctiveness. To establish that MARKETTOOLS is registrable under section 2(f), Applicant provides herewith the Declaration of William Schlegel as appropriate evidence tending to show that the mark distinguishes the Applicant's services. 37 C.F.R. §2.41(a); TMEP §1212.03. As the Applicant is not required to provide conclusive evidence of its marks distinctiveness, but merely a prima facie showing of acquired distinctiveness, TMEP §1212.01, in light of the attached evidence, the refusal to register the MARKETTOOLS mark based on Trademark Act §2(e)(1) should be withdrawn.
The MARKETTOOLS Mark Has Been Widely Used In Connection With The Applicant's Services. As the name of the Applicant's company, MarketTools, Inc. ("MarketTools"), and its principal identity, MARKETTOOLS has been widely used as a source indicator of Applicant's services. Since 1998, the Applicant has aggressively promoted the MARKETTOOLS name and its services through a wide variety of advertising techniques, including in regional and national newspapers and business magazines, and on the Internet. (FN2: Attached hereto as Exhibit A are screen shots of the MarketTools web site.) Further promotional activities include speaking engagements at trade conferences. For example, last November, Nigel Hopkins, Vice President of MarketTools, Inc. made a presentation at the 2000 EXPLOR forum sponsored by the University of Wisconsin-Madison School of Business in Chicago, Illinois. (FN3: Attached hereto as Exhibit B is the program schedule for the 2000 EXPLOR Forum: Continuing Progress in Online Research, November 16-17, 2000, Chicago, Illinois.) In addition, MarketTools regularly attends trade shows across the nation to promote the MARKETTOOLS services, including the AMA – Marketing Research Conference, Chicago, Illinois, September 10-13 2000 and the 2000 EXPLOR Forum: The Emergence of Online Market Research, Chicago, Illinois, November 16-17, 2000.
Relevant Consumers Identify The MARKETTOOLS Mark With Applicant's Services. The MARKETTOOLS services could be useful to anyone who seeks a fast, efficient and easy way to collect feed-back data, but MarketTools' core consumers are market research professionals. As a result of the exposure provided by its extensive advertising and its provision of a unique and valuable service, MarketTools and the MARKETTOOLS services have achieved significant recognition in the market research industry.
The MARKETTOOLS services are considered to be among the best of their kind as evidenced by the following:
Furthermore, MarketTools' recognition as a key player in the marketing industry is evidenced by its membership in key professional organizations and listings in trade directories. MarketTools promotes its services through its membership in the Personalization Consortium, an advocacy group of businesses formed to promote the development and use of responsible one-to-one marketing technology and practices, and through its membership in the Counsel for Marketing and Opinion Research, an organization representing the interests of the market research industry. MarketTools is listed in the WorldOpinion directory of market research providers, a web site portal providing information and resources specifically targeted to the market research industry.
Applicant's Promotional Efforts Have Attracted a Large Number of Clients for the MARKETTOOLS Services. Applicant's promotional efforts have reached even the largest "old economy" consumers of market research services, evidencing their recognition of the MARKETTOOLS mark as an indicator of the Applicant's services. The impressive list of Applicant's clients includes such well-recognized leaders in the research arena, marketing consulting organizations and Fortune 1000 companies, as:
As result of being associated with such a notable list of clients, the MARKETTOOLS name and mark has come to identify the source of Applicant's much sought-after market research services, and contributed to its reputation as a successful company with an annual amortized revenue of approximately $5.4 million.
While Not Yet a Household Name, There is Wide Recognition of The MARKETTOOLS Mark as the Source of Market Research Services. Reports about the Applicant and the MARKETTOOLS services have not been exclusive to marketing industry publications. There have been numerous stories about MarketTools' partnerships with well-known companies that have appeared in various publications with diverse readership. For example:
In addition, the MARKETTOOLS services have been described in many widely read publications in the fields of market research and business, including the following technology, business and local news publications and resources:
Applicant's advertising and promotional activities, and the sales success and media coverage they have generated, have established wide recognition, especially among consumers of market research services, that the MARKETTOOLS mark is strongly associated with Applicant and its services.
The evidence described above and provided herewith in the form of the Declaration of William Schlegel tends to show that the mark distinguishes the Applicant's services and therefore establishes, prima facie, that MARKETTOOLS is registrable under Trademark Act §2(f). Accordingly, the Examining Attorney should withdraw his refusal to register the mark under Trademark Act § 2(e)(1).
Request for Additional Information. The Examining Attorney has requested additional information of little relevance to the issues presented by this case. Nevertheless, Applicant is confident that its mark is registrable, and responds as follows:
The wording MARKET has multiple meanings with respect to the Applicant's services and the related trades and industries. As set forth in Applicant's earlier office action response, "market" may be understood as a verb ("to market"), and the process of gathering knowledge about customer preferences is a step in the marketing process. However, "market" may also be understood as a noun, short for "marketplace," which is the general term used to refer to the entire commercial realm, and certainly Applicant's services are relevant to the commercial realm. The word "market" also is used as an adjective to modify "research" in the phrase "market research," which is relevant to Applicant's services. The fact that "market" has at least three relevant meanings deprives the term of direct descriptive significance with respect to Applicant's services and the trades and industries to which it relates.
As the United States Court of Appeals for the Federal Circuit explained in In re Hutchinson Technology Incorporated, 852 F.2d 552, 555 (Fed. Cir. 1988); 7 U.S.P.Q.2D (BNA) 1490, 1492, 1493, a term that can has multiple meanings does not convey the sort of immediate understanding of the goods necessary to classify a mark as merely descriptive. The court found the term "technology" to be a very broad term, encompassing many categories of goods, and that the idea "technology" does not convey an immediate idea of the "ingredients, qualities, or characteristics of the goods" listed in the application: etched metal electronic components; flexible circuits; actuator bands for disk drives; print bands; increment disks; [and] flexible assemblies for disk drives. Thus, the term "technology" was not merely descriptive. Similarly, the term "market" fails to provide immediate information about Applicant's services, and therefore is not merely descriptive with respect to those services.
The Trademark Trial and Appeal Board continues to apply this principle in reversing refusals of registration. In its recent decision in In re Siemens Stromberg-Carlson, Allen's Trademark Digest, Vol. 13, No. 6, at 30 (Dec. 1999) (attached to Applicant's earlier response), the Board reiterated the significance of such multiple meanings. In Siemens, the Board agreed with the Applicant that the proposed mark was not descriptive, noting that there were several different interpretations of applicant's mark. Similarly, in In re PointCast Incorporated, Allen's Trademark Digest, Vol.13, No. 4, at 59 (Oct. 1999), the Board found that because SMART has multiple, commonly understood meanings, the Examining Attorney's definitions did not prove that SMARTSCREEN had a readily recognized meaning with respect to the Applicant's goods. The Board would likely apply the same reasoning to the word MARKET in this case.
The word "tool" similarly has a number of meanings. As the Examining Attorney has pointed out, computer programs sometimes are referred to as tools. For example, companies that create computer software for use in developing other computer software often use the term "software development tools." Applicant notes, however, that the Trademark Office consistently rejects Applicants' use of this phrase in an identification of goods as indefinite, preferring the phrase "computer software for use in software development." As such, Applicant believes that "tool" standing alone cannot be considered the common commercial name of any specific type of software. Moreover, the Examining Attorney's argument is not that TOOLS describes Applicant's services, but that it may describe the fruits of Applicant's services – computer software. Applicant disagrees that this multiple-step chain of reasoning can establish that the word "tools" or, more importantly, its mark MARKETTOOLS, immediately describes its services.
The question also is deficient in that it leaves open to Applicant's personal choice the question of whether it considers its internal computer software to be in the category of "tools." This, of course, is not the issue. The question invites Applicant to play a game of semantics rather than presenting or gathering evidence as to the understanding of relevant consumers of the significance of Applicant's mark. For all of these reasons, Applicant declines to answer the Examining Attorney's question.
In sum, the Examining Attorney's efforts to shift the focus of inquiry from Applicant's services to Applicant's internal technology is in error. The various contortions of argument required to characterize the terms "market" and "tools" as merely descriptive of Applicant's services are unpersuasive, and fail utterly to satisfy the Examining Attorney's burden of proof.
In view of the foregoing, Applicant believes that the application is now in condition for publication and such action is solicited.
The Origin of Applicant's Goods. The Examining Attorney has required that Applicant respond to the question "Do the applicant's goods originate in Saratoga, or are they otherwise related to this place?" Applicant's goods neither originate in Saratoga, nor are they related to any of the various places named Saratoga. Applicant's offices in California are located in the City of Campbell, and its goods originate from there. Applicant also operates offices in Paris, France; München, Germany; Stockholm, Sweden; and Berkshire, United Kingdom. Applicant has no manufacturing sites, offices, nor other forms of business activity located in Saratoga. Nothing about Applicant's goods bear any relation to Saratoga.
Refusal of Registration. The Examining Attorney is correct that Saratoga is the name of a town in Santa Clara County, the same county in which Applicant's offices are located. However, there is an enormous leap between these observations and a refusal based on the argument that "applicant's goods come from the geographical place named in the mark." That simply is not true, as is evident on the face of the application and from the above response to the Examining Attorney's inquiry pursuant to TMEP§ 1105.02. Accordingly, the refusal of registration should be withdrawn.
Nor are the other requirements for the refusal met. Section 1210.05 of the Trademark Manual of Examining Procedure sets out three distinct requirements:
To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney must establish the following: (1) the primary significance of the mark is geographic (see TMEP §1210.03); (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association (see TMEP §1210.04); and (3) the mark identifies the geographic origin of the goods or services (see TMEP §1210.01).
None of these propositions is tenable in this case.
Primary Significance of the Mark. As the Examining Attorney undoubtedly is aware, the use of a place name in a mark is arbitrary when the name either is remote or obscure to the average American consumer, or has no significant relation to commercial activities or the production of goods or services. TMEP §1210.03(a). In this case, SARATOGA should be deemed arbitrary.
The average American consumer would not recognize SARATOGA as primarily geographically descriptive. As evidenced by the Examining Attorney's extract from Webster's New Geographical Dictionary, Saratoga, California, is a small, largely residential suburb of San Jose. There is no reason to believe that the average consumer is familiar with Saratoga; more likely, it is as remote and obscure to the average consumer as dozens of other bedroom communities throughout the nation. Accordingly, the likely commercial impression of Applicant's mark on the average consumer is likely to bear no relation to the town of Saratoga.
Furthermore, the dictionary extract shows that Saratoga is primarily a site for non-commercial activity — a residential community. As in the case of "NORTH POLE for bananas," TMEP §1210.03(a), even consumers who were familiar with the town would not associate it with commercial activities such as the production of computer software. Accordingly, SARATOGA functions as an arbitrary designation in Applicant's mark.
Goods/Place Association. The Examining Attorney also has not established "purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark." In this case, because Applicant's goods do not originate in Saratoga, the typical presumption of a goods/place association is inapplicable. While it is conceivable that computer products will emerge from the garages of any residential community, it is clear that this bare possibility does not establish the requisite goods/place association. See, e.g., In re Venice Maid Co., Inc., 222 U.S.P.Q. 618, 619 (TTAB 1984) ("that Venice is a large Italian city that could, conceivably, be the source of a wide range of goods, including canned foods" such as applicant's canned lasagna and spaghetti, is insufficient to establish a goods-place association; refusal of registration reversed).
The Examining Attorney's evidence does not establish that relevant consumers would draw a goods/place association between Applicant's mark and its goods. The extract from Webster's New Geographical Dictionary does not provide "a 'reasonable basis' for concluding that the public is likely to believe that the mark identifies the place from which the goods originate." TMEP §1210.04. On the contrary, the extract suggests quite the opposite. Saratoga is characterized first as a residential community, second as an agricultural region containing one or more wineries, and third as the home of West Valley College. Nothing in the Examining Attorney's evidence suggests that relevant consumers would draw any association between SARATOGA and the computer software industry, let alone Applicant's specific goods. (FN1: By contrast, the Examining Attorney's dictionary extract indicates that Campbell, the site of Applicant's operations, is primarily involved in the business of "electronic equipment." This reference demonstrates that the dictionary's authors were fully cognizant of the electronics industry, and would not have failed to indicate Saratoga's involvement in the industry if that were the case.)
Geographic Origin of the Goods. As noted above, Applicant's goods originate from Campbell and not Saratoga. The Examining Attorney implies that the location of both Saratoga and Campbell in Santa Clara County establishes that SARATOGA is geographically descriptive of both cities. Applicant strongly disagrees. This is not a case in which a place name casts a large shadow over nearby communities, as one might expect in the case of, say, Los Angeles and Torrance, Boston and Cambridge, or San Francisco and Colma. On the contrary, the situation is more akin to that of San Carlos and Menlo Park, or Manassas and Woodbridge.
For all of the foregoing reasons, the Examining Attorney should withdraw the geographic descriptiveness refusal, and pass this application to publication. (FN2: Applicant's mark also is not primarily geographically misdescriptive of Applicant's goods within the meaning of section 2(e)(3) of the Trademark Act for the same reasons. In view the obscurity of the Saratoga name in relation to Applicant's goods, Applicant's mark cannot be deemed deceptive within the meaning of section 2(a) of the Trademark Act §2(a).)
Copyright © 2006 Jefferson F. Scher. All Rights Reserved.