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The true test is not whether they are exhaustively descriptive of the article de

signated, but whether in themselves and as they are commonly used by those who u
nderstand their meaning , they are reasonably indicative and descriptive of the
thing intended. If they are thus descriptive, and not arbitrary, they cannot be
appropriated from general use and become hte exclusive property of anyone. (Ong
Ai Gui vs Director of Philippine Patent Office GR No. L-6235, 28 March 1955)
It cannot be registered for to do so would exclude others who are also engaged i
n producing similar products and using the same words in their similar trade or
services. Descriptive terms, which may be used to describe the product adequatel
y, cannot be monopolized by a single user and are available to all. (Vicente B.
Amador, Trademarks under The Intellectual Property Code, 1999, page 22)
Pro
suggestive
Suggestive terms are those which, in the phraseology of one court, require "imag
ination, thought and perception to reach a conclusion as to the nature of the go
ods." Such terms, "which subtly connote something about the product," are eligib
le for protection in the absence of secondary meaning. While suggestive marks ar
e capable of shedding "some light" upon certain characteristics of the goods or
services in dispute, they nevertheless involve "an element of incongruity," "fig
urativeness," or " imaginative effort on the part of the observer."
A mark must be a visible sign that distinguishes goods or services of an enterpr
ise (Sec. 121.1 of the IP Code)
Fanciful and arbitrary with no dictionary meaning that can be associated with th
e goodscovered by the mark, most especially when used in connection with LPG Gas
Others would not describe their products normaly with being super.
Con
Ong Ai Gui vs Director of the Philippine Patent Office GR L-6235 (March 1955)
Descriptive
Sample Office Action Responses Descriptiveness
Example #1: DeliverE
Example #2: BUSINESS WITHOUT INTERRUPTION
Example #3: NETBACKUP
Example #4: MARKETTOOLS
Example #5: SARATOGA SYSTEMS
Example #1: DeliverE (Stylized: Mixed Case) (Apr. 20, 1999)
[Application covered: "managing advertising for others on global computer networ
ks; 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 ma
rket research for others concerning users of global computer networks."]
The Examining Attorney posits that "Applicant's mark merely describes the delive
ry of advertising services for others." Pointing to but a single reference in th
e universe of registered marks, which is for unrelated services, the Examining A
ttorney characterizes Applicant's mark as a "non-distinctive trade term." With a
ll 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 a
nd is entitled to registration on the Principal Register.
[DIRECT DELIVERY NETWORK (and Design) is registered for "defining and implementi
ng product marketing programs for others which access customer prospects through
existing databases," but the exclusive right to DIRECT DELIVERY NETWORK is disc
laimed.]
The evidence presented by the Examining Attorney is not relevant to the registra
bility of Applicant's mark. First, as is apparent from a comparison of the respe
ctive recitations of services, Applicant and the owner of the cited registration
, the Yellow Pages Publishers Association, use their mark in connection with who
lly unrelated services. Whether DIRECT DELIVERY NETWORK merely describes some as
pect 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 regi
stration, it appears likely that the record reflected use of the mark in connect
ion with the delivery of Yellow Pages directories to residences or businesses, a
s is the common practice in the industry. Certainly, then, the Examining Attorne
y should not rely on the disclaimer in this registration as evidence of the mean
ing of Applicant's mark, which is used in a completely different context.
Furthermore, as the Examining Attorney is aware, disclaimers can be made volunta
rily 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 descriptiv
e term with respect to the registrant's services, or even that the disclaimer wa
s required to obtain registration. In sum, the Examining Attorney should not rel
y on this reference in his consideration of Applicant's mark.
Setting aside the earlier registration, the Examining Attorney's position appear
s to be based on two faulty assumptions: (1) that relevant consumers will percei
ve Applicant's mark as merely the word "delivery"; and (2) that the word "delive
ry" describes some aspect of Applicant's services. Neither is correct. Because t
he 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," create
s a significantly different commercial impression from "delivery," and therefore
, consumers would not perceive the mark and its meaning as "delivery." Even if c
onsumers were to deconstruct, translate, and reassemble Applicant's mark, the ma
rk 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." C
apitalizing the final letter "E" creates a separate syllable with primary stress
, pronounced as though the "E" were another word in the mark: "delver ". The capit
alization of the final letter will cause the relevant consumer to distinguish th
is 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 wo
rd. For these reasons, relevant consumers would not pronounce the mark as "deliv
ery," and therefore, Applicant's mark would not be perceived as simply a misspel
ling 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 t
he field of high technology. The well known tax preparation product TurboTax ill
ustrates this phenomenon. Consumers pronounce TurboTax as the two words "turbo t
ax," rather than as turbotax, just as RoboTix would be pronounced differently th
an robotics. A similar two-word pronounciation applies to compounds formed of on
e 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, no
t "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 i
n the mark, there is an association with the field of high technology and digita
l 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). Exam
ples of this stylization include: eBay (personal online trading community), eCom
pany (web site design and web solutions), eSoft (web services for connecting bus
inesses 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 TRUS
Te (for services dealing with privacy issues on the Internet). So many technolog
y 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-r
elated 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 lette
rs in lower case type. Having become well-trained to pronounce the "E" separatel
y, consumers are extremely unlikely to read, pronounce, and perceive Applicant's
mark as the word "delivery." Accordingly, Applicant's mark does not merely desc
ribe its services as "delivery." (FN1: Nor would "delivery" be an appropriate de
scription of Applicant's services in any event. Applicant principally manages ad
vertising campaigns and measures the response to those campaigns. Although Appli
cant's services also include the dissemination of advertising and promotional of
fers via electronic mail, dispatching an e-mail message does not constitute "del
ivery" any more than dropping a circular into a U.S. Postal Service collection b
ox 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 diff
erent and unique impression of Applicant's mark as suggesting both that Applican
t's services are "on the cutting edge" and that Applicant comes through in the c
lutch that Applicant delivers. Reading the mark as a whole, then, relevant consu
mers 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 conn
otations of the distinct "E", consumers must exercise multiple mental steps to u
nderstand the meaning conveyed by the mark as applied to Applicant's services. A
n 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 o
ne encountering it the nature of Applicant's services, see TMEP 1209.01(a) ("a de
scriptive term . . . immediately tells something about the goods and services"),
it is not merely descriptive. It is evident therefore that relevant consumers w
ould not immediately reach the conclusion that Applicant's mark describes what t
he Examining Attorney has stated as "the delivery of advertising services for ot
hers." As a result, Applicant's mark is not merely descriptive, but at worst, su
ggestive.
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 h
and, 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; re
fusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FO
OT not merely descriptive for antiperspirant foot deodorant; doubts to be resolv
ed in favor of publication; refusal reversed). Accordingly, the Examining Attorn
ey should withdraw the refusal under Section 2(e)(1).
Example #2: BUSINESS WITHOUT INTERRUPTION (Sept. 18, 2000)
The Examining Attorney founds her refusal of registration of BUSINESS WITHOUT IN
TERRUPTION on the proposition that the mark "would immediately be understood as
describing the function or purpose of Applicant's goods, that is, a software sys
tem for running business without interruption." With all due respect to the Exam
ining Attorney, this analysis appears to be based on a misapplication of the leg
al requirements for finding a mark to be merely descriptive of the applied-for g
oods. BUSINESS WITHOUT INTERRUPTION cannot describe the function or purpose of A
pplicant's software with any degree of precision, because "interruption" has a m
ultiplicity of meaning in the field of business. At most, Applicant's mark sugge
sts the desired result of deploying Applicant's software, and does not immediate
ly describe the function or purpose of those goods. Because thought and imaginat
ion is required to understand the nature of Applicant's goods, the mark is sugge
stive, 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 i
n connection with which it is used. If the information about the product or serv
ice is indirect or vague, then the mark is considered suggestive, not descriptiv
e. 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 A
pplicant's goods. See TMEP 1209.01(a) ("a descriptive term immediately tells some
thing about the goods or services"). Applicant's mark is in fact suggestive beca
use "imagination, thought, or perception is required to reach a conclusion on th
e nature of the goods or services." In re Quik-Print Shops, Inc. 616 F.2d 523, 5
25, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980).
INTERRUPTION. The Examining Attorney has assumed that "business without interrup
tion" 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 hu
rricane 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 busi
ness may be interrupted in innumerable ways, from network connectivity failures
and printing problems to hard disk crashes and rude messaging systems that preve
nt work until a message is answered. Because "interruption" does not have a spec
ific meaning in relation to "business" or the computer field, Applicant's mark i
s ambiguous and incapable of immediately conveying information about Applicant's
goods.
The Examining Attorney has presented no evidence, and there is no reason to beli
eve that INTERRUPTION has any more specific meaning with respect to Applicant's
goods. Such ambiguity demonstrates that the term INTERRUPTION is not merely desc
riptive 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 understandi
ng of the goods necessary to classify a mark as merely descriptive. The court fo
und 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 th
e "ingredients, qualities, or characteristics of the goods" listed in the applic
ation: etched metal electronic components; flexible circuits; actuator bands for
disk drives; print bands; increment disks; [and] flexible assemblies for disk d
rives. Thus, the term "technology" was not merely descriptive. Similarly, the te
rm "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 revers
ing 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 h
ereto as Exhibit A), the Board reiterated the significance of such multiple mean
ings. In Siemens, the Board agreed with the Applicant that the proposed mark was
not descriptive, noting that there were several different interpretations of ap
plicant's mark. Similarly, in In re PointCast Incorporated, Allen's Trademark Di
gest, 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 Examin
ing Attorney's definitions did not prove that SMARTSCREEN had a readily recogniz
ed meaning with respect to the Applicant's goods. The Board would likely apply t
he same reasoning to the word INTERRUPTION in this case.
The Examining Attorney bears the burden of showing that a mark is merely descrip
tive of the relevant goods and services. In re Merrill, Lynch, Pierce, Fenner, a
nd Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q. 1141, 1143 (Fed. Cir. 1987). No such e
vidence has been presented. In particular, the Examining Attorney has provided n
o 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 p
urchaser that the goods would in some manner reduce the likelihood that the cond
uct of business would be interrupted, this provides no information about the nat
ure or use or function or characteristics of the goods. Instead, it provides inf
ormation only about the hoped-for end result of deploying the product. The Exami
ning 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 c
ase law demonstrates that such a remote objective falls within the realm of sugg
estion 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 a
spirations, many of which are registered every year. Recent examples of such mar
ks include COMMUNITIES AT PEACE for promoting public awareness of gang violence
(FN1: Registration No. 2,324,912 (February 29, 2000)), HARMONY for sound-activat
ed vibrators to discourage snoring (FN2: Registration No. 2,169,365 (June 30, 19
98).), 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 exce
ed the Office's statutory mandate to refuse registration of marks that are merel
y descriptive.
The leading cases establishing that a mark stating the purpose of the goods is m
erely 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 Cour
t 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. Accor
dingly, the CCPA found that the mark "informed the trade of the purpose for whic
h its goods are made and of the use to which they are to be put." In Sheaffer, t
he CCPA affirmed the refusal to register the mark FINELINE for mechanical pencil
s. 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 goo
ds. Both cases are marked by the interchangeable use of the terms "use" and "pur
pose," indicating that the purpose criterion was closely tied to the immediate f
unction of the goods.
The line between a mark that merely describes the purpose of the goods, and a ma
rk that suggests the nature of the goods is narrowly drawn. In In re The Realist
ic Company, 440 F.2d 1393, 169 U.S.P.Q. (BNA) 610 (C.C.P.A. 1971), the CCPA cons
idered the application of these precedents to the mark CURV' for use in connecti
on 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 los
t. 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 connec
t 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 woul
d threaten to completely subsume the category of suggestive marks, contrary to c
ontrolling precedent and Office practice.
To the extent the Examining Attorney finds Applicant's BUSINESS WITHOUT INTERRUP
TION mark to fall within the "gray area" between obviously descriptive and sugge
stive 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 Penn
walt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FOOT not merely descriptive f
or antiperspirant foot deodorant; doubts to be resolved in favor of publication;
refusal reversed). Accordingly, the Examining Attorney should withdraw the refu
sal under Section 2(e)(1).
Example #3: NETBACKUP (July 10, 2001)
Refusal of Registration. The Examining Attorney founds his refusal of registrati
on of the Applicant's mark on the following syllogism: (1) the term "network bac
kup" 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 Examinin
g 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 arg
ument from beginning to end are characteristic of a suggestive, not a descriptiv
e, mark.
Absence of Evidence. It is worth emphasizing at the outset that the Examining At
torney has presented no evidence that Applicant's mark is used to describe Appli
cant's goods. In determining whether a word has a descriptive or suggestive sign
ificance 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 indus
try do not use the term as a descriptive reference, this is evidence that the te
rm 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/NEX
IS research use either Applicant's mark, or the two-word phrase NET BACKUP to re
fer to or to describe goods comparable to the Applicant's. Accordingly, this res
earch 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 Examini
ng Attorney's proposed amendment to its identification of goods: "computer softw
are for network backup and restoration." Accordingly, the computer software at i
ssue is as listed above. The determination of whether a mark is merely descripti
ve must be made not in the abstract but, rather, in relation to the goods for wh
ich 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 Exam
ining Attorney's analysis: the term network backup does not merely describe Appl
icant's goods.
The phrase "network backup" is an ambiguous moniker that cannot provide real inf
ormation about the functions, features or characteristics of specific software p
roducts. 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 wh
ether the data being backed up resides only on a central server, or on any serve
r, 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 dest
ination 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 softw
are, the phrase "network backup" means about the same thing as "designed after t
he mid-1980s."
Furthermore, the phrase never was technically correct: neither Applicant's softw
are nor other backup applications back up the "network." Regardless of how caref
ully data is captured from any number of servers, workstations, portable compute
rs, 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 restor
ed. It is impossible to truly "back up" a network without maintaining a function
al duplicate of it, a feat that no computer software could perform.
Thus, even if the Examining Attorney were correct that Applicant's mark would in
stantly be interpreted by relevant consumers to mean "network backup," that phra
se itself is not sufficiently direct or informative to meet the Office's test fo
r a mark to be deemed merely descriptive. To be deemed merely descriptive, a mar
k must directly provide the consumer with reasonably accurate knowledge of the c
haracteristics 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 Exami
ning Procedure 1209.01(a) ("a suggestive term differs from a descriptive term, wh
ich immediately tells something about the goods or services").
Moreover, unlike the identification proposed by the Examining Attorney, the phra
se "network backup" is only loosely related to the functions identified in the A
pplication. Applicant's software supports the disaster recovery functions of bac
kups with sophisticated storage management and replication capabilities. The phr
ase "network backup," simply does not convey the nature of modern storage manage
ment software applications.
Applicant's Mark. The second step in the Examining Attorney's syllogism posits t
hat Applicant's mark, NETBACKUP, is the equivalent of and would instantly be und
erstood to represent the phrase "network backup." There is absolutely no evidenc
e in the record in support of this position, and it relies on an impermissible d
issection 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 mode
rn interpretation of the two-word phrase "net backup" in the field of computer s
oftware is susceptible to so many different interpretations that it cannot be de
emed to merely describe Applicant's goods.
As the Examining Attorney is aware, a composite mark consisting of two or more d
escriptive 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 meaning
s one possibly descriptive, and the other suggestive of some other association c
an be called suggestive, as the mark is not 'merely' descriptive." See J. McCart
hy on Trademarks and Unfair Competition 11:19, at 11-28 (4th ed. 2001). E.g., Bli
sscraft 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 p
olyethylene pitcher and is suggestive of MOLLY PITCHER of Revolutionary time). M
oreover, Applicant need not demonstrate that NETBACKUP evokes an historical imag
e or an incongruity: mere ambiguity is sufficient to overcome evidence that a ma
rk 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 inte
rpretations).
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, NETBACK
UP, suggestive rather than descriptive. Although Applicant does not dispute that
the abbreviation NET can be interpreted to refer to the term "network," the abb
reviation 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 foun
d in computer dictionaries which define NET as an abbreviation for words other t
han "network." The Microsoft Computer Dictionary defines NET as short for either
Internet or Usenet. (FN1: Microsoft Computer Dictionary, 4th Ed., at 307. (Atta
ched hereto as Exhibit A).) No mention of "network" is even made. In fact, the v
ery same online computer dictionary that the Examiner uses to present evidence o
f the term BACKUP, defines NET as short for Internet. (FN2: Webopedia. http://we
bopedia.internet.com/TERM/N/Net.html. (Attached hereto as Exhibit B).) Once agai
n, "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 'Int
ernet,'" (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/2001/7
5048668.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 Con
sulting Inc., 150 F.3d 620, 47 U.S.P.Q.2d 1672, 1675 n.1 (6th Cir. 1998), Interm
atic Inc. v. Toeppen, 947 F. Supp. 1227, 40 U.S.P.Q.2d 1412, 1414 (N.D. Ill. 199
6), and Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 2
3 USPQ2d 1698, 1699 (Fed. Cir. 1992).
Since the abbreviation NET is most commonly understood to mean "Internet, " as e
videnced by the computer dictionary definitions and cases cited above, the mark
NETBACKUP used on Applicant's goods could be interpreted to mean computer softwa
re 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 a
nd stores information contained on one's web site, so as to protect that informa
tion in case of system failures.
The abbreviation NET also refers to the term "usenet." Usenet is "a worldwide ne
twork of UNIX systems that has a decentralized administration and is used as a b
ulletin board system by special-interest discussion groups. Usenet, which is con
sidered part of the Internet, is composed of thousands of newsgroups, each devot
ed 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: Microso
ft Computer Dictionary, 4th Ed., at 462. (Attached hereto as Exhibit D).) In thi
s sense, a consumer of Applicant's goods could easily interpret NETBACKUP to ref
er to software that copies and stores information shared on Usenet for use in di
saster recovery.
Additionally, the term NET has a more fundamental definition, which used in conj
unction 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 "t
o protect, cover or surround with." (FN5: Webster's II New College Dictionary, 1
995, Houghton Mifflin Company, at 734. (Attached hereto as Exhibit E).) As the E
xaminer contends and the Applicant concedes, the term BACKUP, when used in conne
ction with the Applicant's goods, refers to software that is used to copy and st
ore data. Therefore, NETBACKUP provides a metaphor for something which entraps a
nd contains information. In addition, "net" is defined as "ultimate: final" (FN6
: Id.) Therefore, NETBACKUP can also be a metaphor for the replication and stora
ge of data in a final form. Understanding a metaphor, by definition, (FN7: The d
efinition of "metaphor" is: "A figure of speech in which a term is transferred f
rom an object it ordinarily designates to an object it may designate only by imp
licit comparison or analogy" Webster's II New College Dictionary, 1995, Houghton
Mifflin Company, at 688. (Attached hereto as Exhibit F).) requires imagination a
nd 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 Applica
nt's goods. As the United States Court of Appeals for the Federal Circuit explai
ned in In re Hutchinson Technology Incorporated, 852 F.2d 552, 555 (Fed. Cir. 19
88); 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 classi
fy 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; fl
exible circuits; actuator bands for disk drives; print bands; increment disks; [
and] flexible assemblies for disk drives. Thus, the term "technology" was not me
rely descriptive. The same reasoning applies to the term NET in relation to Appl
icant'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 differe
nt 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 Di
gest, Vol. 13, No. 6, at 30 (Dec. 1999) (attached hereto as Exhibit G).) the Boa
rd agreed with the Applicant that the proposed FAST FEATURE PLATFORM mark was no
t descriptive, noting that there were several different interpretations of appli
cant'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 i
n 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 understo
od meanings, the Examining Attorney's definitions did not prove that SMARTSCREEN
had a readily recognized meaning with respect to the Applicant's goods. The Boa
rd 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 n
ature of the goods. NETBACKUP is in fact suggestive of the Applicant's goods bec
ause "imagination, thought, or perception is required to reach a conclusion on t
he 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 determinati
on 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 L
anham Act. As explained in Section 1209 of the Trademark Manual of Examining Pro
cedure,
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 p
ossibility 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 co
mputer software. As demonstrated by his LEXIS/NEXIS research results, the mark h
as not been used by others, and as Applicant holds no monopoly in the field of s
torage 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 wi
thin the "gray area" between obviously descriptive marks, on the one hand, and s
uggestive 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 combinati
on of two merely descriptive terms creates a mark that might be either descripti
ve or suggestive, doubts are to be resolved in favor of applicant; refusal rever
sed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI- FOOT not mer
ely descriptive for antiperspirant foot deodorant; doubts to be resolved in favo
r 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 NETBACK
UP mark, as a whole, has become distinctive as applied to Applicant's goods. Bec
ause 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 o
n any appropriate evidence tending to show that the mark distinguishes the Appli
cant's goods. 37 C.F.R. 2.41(a); TMEP 1212.03. It is well-established that Applica
nt 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 ha
s acquired distinctiveness. TMEP 1212.05.
Applicant's claim of distinctiveness based on five years' use in commerce is sup
ported by the accompanying Declaration of Jay A. Jones which is incorporated her
ein by this reference. The Jones Declaration evidences that the mark has become
distinctive of Applicant's services through Applicant's continuous use of the ma
rk in commerce for at least the five years preceding Applicant's execution of th
e 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 A
ttorney should withdraw his refusal of registration based on descriptiveness.
Example #4: MARKETTOOLS (Jan. 12, 2001)
Refusal of Registration. Despite the Applicant's arguments to the contrary, the
Examining Attorney has refused registration of Applicant's mark on the grounds t
hat MARKETTOOLS is merely descriptive of the applied-for services. For the reaso
ns set forth in its response to Office Action No. 1, filed March 17, 2000, Appli
cant 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, Applica
nt herewith submits in the alternative (FN1: See TMEP 1212.02(c) (applicant permi
tted to argue that a mark is inherently distinctive and, in the alternative, tha
t it has acquired distinctiveness).) evidence of the mark's substantial reputati
on and goodwill, which entitle the mark to registration on the Principal Registe
r 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 th
at 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 distin
guishes the Applicant's services. 37 C.F.R. 2.41(a); TMEP 1212.03. As the Applican
t is not required to provide conclusive evidence of its marks distinctiveness, b
ut merely a prima facie showing of acquired distinctiveness, TMEP 1212.01, in lig
ht 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 Ser
vices. As the name of the Applicant's company, MarketTools, Inc. ("MarketTools")
, and its principal identity, MARKETTOOLS has been widely used as a source indic
ator of Applicant's services. Since 1998, the Applicant has aggressively promote
d the MARKETTOOLS name and its services through a wide variety of advertising te
chniques, 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 engagemen
ts at trade conferences. For example, last November, Nigel Hopkins, Vice Preside
nt of MarketTools, Inc. made a presentation at the 2000 EXPLOR forum sponsored b
y 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 Fo
rum: Continuing Progress in Online Research, November 16-17, 2000, Chicago, Illi
nois.) In addition, MarketTools regularly attends trade shows across the nation
to promote the MARKETTOOLS services, including the AMA Marketing Research Confer
ence, Chicago, Illinois, September 10-13 2000 and the 2000 EXPLOR Forum: The Eme
rgence 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 e
asy way to collect feed-back data, but MarketTools' core consumers are market re
search professionals. As a result of the exposure provided by its extensive adve
rtising and its provision of a unique and valuable service, MarketTools and the
MARKETTOOLS services have achieved significant recognition in the market researc
h industry.
The MARKETTOOLS services are considered to be among the best of their kind as ev
idenced by the following:
MarketTools was selected as one of Forbes.com's "Best of the Web" and described
as one of the "most promising B2B (business-to-business) web sites."
ICONOCAST, an award winning online publication geared to the Internet marketing
industry, includes MarketTools in a list of three providers of online market res
earch computer applications.
Upside Magazine chose MarketTools to give a presentation at the exclusive, invit
ation only, LAUNCH! event which allowed MarketTools to present its products and
services to a highly receptive audience of media, analysts, venture capitalists
and industry executives.
MarketTools executive Nigel Hopkins was chosen as one of five market research se
rvice professionals to be interviewed for an article in the marketing trade publ
ication Quirk's Marketing Research Review.
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 promot
e the development and use of responsible one-to-one marketing technology and pra
ctices, and through its membership in the Counsel for Marketing and Opinion Rese
arch, an organization representing the interests of the market research industry
. MarketTools is listed in the WorldOpinion directory of market research provide
rs, 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 lar
gest "old economy" consumers of market research services, evidencing their recog
nition 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 companie
s, as:
General Mills
Staples.com
Procter & Gamble
Lexis-Nexis
Washington Post
Sun Microsystems
Abilizer Solutions Inc. (formerly Perksatwork, Inc.)
C&R Research Services, Inc.
Monitor Group
Peppers and Rogers Group
Wired Magazine
As result of being associated with such a notable list of clients, the MARKETTOO
LS name and mark has come to identify the source of Applicant's much sought-afte
r market research services, and contributed to its reputation as a successful co
mpany with an annual amortized revenue of approximately $5.4 million.
While Not Yet a Household Name, There is Wide Recognition of The MARKETTOOLS Mar
k 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-kno
wn companies that have appeared in various publications with diverse readership.
For example:
MarketTools' partnership with General Mills was reported in The Wall Street Jour
nal, The New York Times, Investor's Business Daily, CNET News, Saint Paul Pionee
r Press, bizjournals.com, eMarketer's Daily News, FOX Market Wire, the Marin Ind
ependent Journal and distributed by the Associated Press.
Staples.com's use of the MARKETTOOLS services appeared in the InternetNews onlin
e news publication.
In addition, the MARKETTOOLS services have been described in many widely read pu
blications in the fields of market research and business, including the followin
g technology, business and local news publications and resources:
Red Herring
TechWeb.com
Power Source
Upside
Marin Independent Journal
Internetnews.com
Hoover's Online
Applicant's advertising and promotional activities, and the sales success and me
dia coverage they have generated, have established wide recognition, especially
among consumers of market research services, that the MARKETTOOLS mark is strong
ly associated with Applicant and its services.
The evidence described above and provided herewith in the form of the Declaratio
n 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 hi
s refusal to register the mark under Trademark Act 2(e)(1).
Request for Additional Information. The Examining Attorney has requested additio
nal information of little relevance to the issues presented by this case. Nevert
heless, Applicant is confident that its mark is registrable, and responds as fol
lows:
The wording MARKET TOOLS has no significance either (1) in the relevant trade or
industry or (2) as applied to Applicant's services, other than as an indication
of the source of Applicant's services. The absence of significance of this phra
se taken as a whole obviates the remaining inquiries.
The wording MARKET has multiple meanings with respect to the Applicant's service
s and the related trades and industries. As set forth in Applicant's earlier off
ice 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 mark
eting process. However, "market" may also be understood as a noun, short for "ma
rketplace," which is the general term used to refer to the entire commercial rea
lm, 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 "mark
et" 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 con
vey the sort of immediate understanding of the goods necessary to classify a mar
k as merely descriptive. The court found the term "technology" to be a very broa
d term, encompassing many categories of goods, and that the idea "technology" do
es not convey an immediate idea of the "ingredients, qualities, or characteristi
cs 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 info
rmation 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 revers
ing 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 t
o Applicant's earlier response), the Board reiterated the significance of such m
ultiple meanings. In Siemens, the Board agreed with the Applicant that the propo
sed mark was not descriptive, noting that there were several different interpret
ations 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 defi
nitions did not prove that SMARTSCREEN had a readily recognized meaning with res
pect to the Applicant's goods. The Board would likely apply the same reasoning t
o the word MARKET in this case.
The word "tool" similarly has a number of meanings. As the Examining Attorney ha
s pointed out, computer programs sometimes are referred to as tools. For example
, companies that create computer software for use in developing other computer s
oftware often use the term "software development tools." Applicant notes, howeve
r, that the Trademark Office consistently rejects Applicants' use of this phrase
in an identification of goods as indefinite, preferring the phrase "computer so
ftware 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 Examining Attorney requires that Applicant "explain in detail the meaning of
the term "MARKET" as used in connection with the services of the applicant." Ap
plicant does not ascribe a particular meaning to the term MARKET as used in its
mark MARKETTOOLS. The Examining Attorney is invited to review the pages of Appli
cant's web site attached hereto, as well as the extensive descriptions of its se
rvices set forth in the Declaration of William Schlegel, to confirm this fact fo
r himself.

The Examining Attorney requires that Applicant "explain in detail the meaning of
the term "TOOL" as used in connection with the services of the applicant." Appl
icant does not ascribe a particular meaning to the term TOOL as used in its mark
MARKETTOOLS. The Examining Attorney is invited to review the pages of Applicant
's web site attached hereto, as well as the extensive descriptions of its servic
es set forth in the Declaration of William Schlegel, to confirm this fact for hi
mself.

The Examining Attorney requires that Applicant "indicate for the record whether
the its [sic] services in any way involve the use of the software tools to perfo
rm market research." Applicant notes that whether it uses software products to p
rovide its services is irrelevant to whether its mark merely describes its servi
ces. All modern businesses utilize computer hardware and software to enable them
to provide their services. Accordingly, the question elicits information irrele
vant to the determination of the issue at hand.
The question also is deficient in that it leaves open to Applicant's personal ch
oice the question of whether it considers its internal computer software to be i
n the category of "tools." This, of course, is not the issue. The question invit
es Applicant to play a game of semantics rather than presenting or gathering evi
dence as to the understanding of relevant consumers of the significance of Appli
cant's mark. For all of these reasons, Applicant declines to answer the Examinin
g Attorney's question.
The Examining Attorney requires that Applicant "indicate for the record whether
any of its software may be described in any way as a market tool." For the reaso
ns listed under inquiry "d," Applicant believes that this inquiry is not relevan
t. In any event, Applicant does not use the terminology "market tool" in a descr
iptive manner.

"Finally, the applicant must indicate for the record whether the applicant provi
des the tools to gather, organize and report business information." Applicant is
uncertain as to the Examining Attorney's reference to "the tools." Applicant pr
ovides services not properly described as "tools" for roughly the purposes liste
d in the Examining Attorney's inquiry.
In sum, the Examining Attorney's efforts to shift the focus of inquiry from Appl
icant's services to Applicant's internal technology is in error. The various con
tortions 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 cond
ition for publication and such action is solicited.
Example #5: SARATOGA SYSTEMS (Aug. 3, 1998)
The Origin of Applicant's Goods. The Examining Attorney has required that Applic
ant 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 i
n Saratoga, nor are they related to any of the various places named Saratoga. Ap
plicant's offices in California are located in the City of Campbell, and its goo
ds originate from there. Applicant also operates offices in Paris, France; Mnchen
, Germany; Stockholm, Sweden; and Berkshire, United Kingdom. Applicant has no ma
nufacturing sites, offices, nor other forms of business activity located in Sara
toga. 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 offic
es are located. However, there is an enormous leap between these observations an
d a refusal based on the argument that "applicant's goods come from the geograph
ical place named in the mark." That simply is not true, as is evident on the fac
e of the application and from the above response to the Examining Attorney's inq
uiry 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 Trade
mark Manual of Examining Procedure sets out three distinct requirements:
To establish a prima facie case for refusal to register a mark as primarily geog
raphically descriptive, the examining attorney must establish the following: (1)
the primary significance of the mark is geographic (see TMEP 1210.03); (2) purch
asers would be likely to think that the goods or services originate in the geogr
aphic 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 g
eographic 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 c
ommercial 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 geograph
ically descriptive. As evidenced by the Examining Attorney's extract from Webste
r's New Geographical Dictionary, Saratoga, California, is a small, largely resid
ential suburb of San Jose. There is no reason to believe that the average consum
er is familiar with Saratoga; more likely, it is as remote and obscure to the av
erage consumer as dozens of other bedroom communities throughout the nation. Acc
ordingly, the likely commercial impression of Applicant's mark on the average co
nsumer 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 f
or bananas," TMEP 1210.03(a), even consumers who were familiar with the town woul
d not associate it with commercial activities such as the production of computer
software. Accordingly, SARATOGA functions as an arbitrary designation in Applic
ant's mark.
Goods/Place Association. The Examining Attorney also has not established "purcha
sers would be likely to think that the goods or services originate in the geogra
phic place identified in the mark." In this case, because Applicant's goods do n
ot originate in Saratoga, the typical presumption of a goods/place association i
s 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 Veni
ce Maid Co., Inc., 222 U.S.P.Q. 618, 619 (TTAB 1984) ("that Venice is a large It
alian city that could, conceivably, be the source of a wide range of goods, incl
uding canned foods" such as applicant's canned lasagna and spaghetti, is insuffi
cient to establish a goods-place association; refusal of registration reversed).
The Examining Attorney's evidence does not establish that relevant consumers wou
ld draw a goods/place association between Applicant's mark and its goods. The ex
tract from Webster's New Geographical Dictionary does not provide "a 'reasonable
basis' for concluding that the public is likely to believe that the mark identi
fies the place from which the goods originate." TMEP 1210.04. On the contrary, th
e extract suggests quite the opposite. Saratoga is characterized first as a resi
dential community, second as an agricultural region containing one or more winer
ies, and third as the home of West Valley College. Nothing in the Examining Atto
rney's evidence suggests that relevant consumers would draw any association betw
een 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 diction
ary's authors were fully cognizant of the electronics industry, and would not ha
ve failed to indicate Saratoga's involvement in the industry if that were the ca
se.)
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 ge
ographically descriptive of both cities. Applicant strongly disagrees. This is n
ot 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 Camb
ridge, or San Francisco and Colma. On the contrary, the situation is more akin t
o that of San Carlos and Menlo Park, or Manassas and Woodbridge.
For all of the foregoing reasons, the Examining Attorney should withdraw the geo
graphic descriptiveness refusal, and pass this application to publication. (FN2:
Applicant's mark also is not primarily geographically misdescriptive of Applica
nt's goods within the meaning of section 2(e)(3) of the Trademark Act for the sa
me 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 secti
on 2(a) of the Trademark Act 2(a).)
Copyright 2006 Jefferson F. Scher. All Rights Reserved.