America Online, Inc.

Trademark Trial and Appeal Board

Oct 27, 1999

No. 75280610 (T.T.A.B. Oct. 27, 1999)

Paper No. 12
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 27,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re America Online, Inc.
___________
Serial No. 75/280,610
___________
Jeffrey S. Standley of Standley & Gilcrest for applicant.
Kelly L. Williams, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
____________
Before Cissel, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
CompuServe Incorporated filed a trademark application,
which has been assigned to America Online, Inc.,1 to
register the mark VIRTUAL KEY for “computer services,
namely, computer programming for on-line information
services and global computer information network
communications; computer consultation services for on-line

1 While Section 10 of the Trademark Act, 15 U.S.C. 1060, permits
assignment of intent-to-use applications only under limited
circumstances, the propriety of this assignment is not before us.
Serial No. 75/280,610
2
information services and global computer information
network communications; designing and updating computer
security software for on-line and global computer
information network communications; monitoring security
systems for on-line information services and global
computer information network communications.”2
The Trademark Examining Attorney has finally refused
registration, under Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive in connection with its services.3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney submitted excerpts from the
Random House Personal Computer Dictionary (2nd ed. 1996)
defining “virtual” as “not real … [and] is popular among
computer scientists and is used in a wide variety of

2 Serial No. 75/280,610, in International Class 42, filed April 24,
1997, based on an allegation of a bona fide intention to use the mark
in commerce.
3 The final refusal to register also included a requirement to amend the
identification of services. Applicant complied with the requirement in
a request for reconsideration. The request for reconsideration was
filed in a timely manner, but it was associated with this application
file only after the filing of the briefs in this appeal. The Board did
not remand the application to the Examining Attorney to expressly
respond to the request for reconsideration because both briefs adopt
the identification of services as amended in the request for
reconsideration. Thus, we consider the amendment to be accepted and
the issue on appeal limited to the refusal under Section 2(e)(1).
Serial No. 75/280,610
3
situations … it distinguishes something that is merely
conceptual from something that has physical reality” and
“key” as “a password or table needed to decipher encoded
data.” The Examining Attorney contends that, rather than
creating a unique phrase with a non-descriptive meaning
that is different from the meaning of the individual terms,
the combination of the two terms, VIRTUAL KEY, “merely
describes a feature of the applicant’s computer
programming, computer security software, and security
systems services as including conceptual passwords to
decipher encoded data.” The Examining Attorney submitted
copies of three articles from the LEXIS/NEXIS database in
support of her position.
Applicant admits that the term “virtual” is commonly
used in the computer industry, but contends that there is
no evidence in the record that when “virtual” is combined
with “key” the combination merely describes the enumerated
services.4 Rather, applicant contends that the mark is
suggestive of its services.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately

4 In support of its argument, applicant cited a non-precedential
decision of the Board and did not submit a copy of the decision. As
noted by the Examining Attorney, the Board does not take notice of such
Serial No. 75/280,610
4
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
The evidence before us consists only of two dictionary
definitions and copies of three articles from the
LEXIS/NEXIS database. While the Examining Attorney’s
search report indicates that a NEXIS search for “virtual
key” and “computer” or “software” revealed 69 articles, she
entered only three of those articles in this record and
there is no indication that these three articles are a

decisions and we have not considered this decision as it is described
Serial No. 75/280,610
5
representative sample. It is not necessary for the
Examining Attorney to submit all of the stories found in
her search of the NEXIS/LEXIS database; however, she must
submit a sufficient number of them to enable the Board to
determine the meaning of the term in question to the
relevant public. We must presume that the excerpts
selected for submission provide the best, if not the only,
support of the refusal to register available from that
source. See, In re Homes & Land Publishing Corp., 24
USPQ2d 1717 (TTAB 1992), and cases cited therein.
Further, of the three articles submitted, one of the
articles is from a United Kingdom publication and pertains
to business in the United Kingdom. We have no evidence
concerning the possible circulation of that publication in
the United States from which to infer its possible impact
on the perceptions of the relevant public in this country.
See, In re Men’s International Professional Tennis Council,
1 USPQ2d 1917 (TTAB 1986). Another of the articles is from
a wire service, thus, the extent to which this information
was available to the general public is unknown. A
proprietary newswire article is circulated primarily to
newspapers and news journals whose editors select from the
releases those stories of sufficient interest to publish.

by applicant.
Serial No. 75/280,610
6
The article’s appearance in the NEXIS database does not
prove that the news release appeared as a story in any
newspaper or magazine. This story is evidence that the
author used the phrase “virtual key” in a certain manner
and that editors were exposed to such use. However, we
cannot conclude that the public was exposed to the story.
See, In re Men’s International Professional Tennis Council,
supra.
The third article submitted is relevant5 and includes
the following use of the phrase “virtual keys”: “The CA
[certification authority] is an entity or service that
distributes electronic keys for encrypting information and
electronic certificates for authenticating user and server
identities. The CA also issues new passwords, or ‘virtual
keys,’ when a password is forgotten or misplaced.” This
reference, however, does not persuade us to conclude that
the relevant public understands the phrase VIRTUAL KEY as a
reference to computer services of the type described
herein. While the use of “virtual keys” in this article is
not inconsistent with the connotation asserted by the
Examining Attorney, it is the only such reference and,

5 This article is from the September, 1996, edition of Health Management
Technology.
Serial No. 75/280,610
7
therefore, it does not convince us that this term is widely
understood to have this meaning.
Based on this meager example, we cannot reach the
conclusion argued by the Examining Attorney, namely, that
“these stories demonstrate that the phrase ‘virtual key’ is
used in the computer industry to refer to a conceptual
password used to unlock, to access or to decipher encoded
data.” The most we can conclude from this record is that
VIRTUAL KEY is suggestive in connection with the identified
services. Thus, we find that the phrase VIRTUAL KEY is not
merely descriptive in connection therewith. It requires
some, albeit minimal, thought to determine the nature of
applicant’s services or at least a feature of those
services.
We readily admit that our determination on this issue
is not free from doubt. However, where there is doubt on
the question of mere descriptiveness, that doubt is to be
resolved in applicant’s behalf and the mark should be
published for opposition. See, In re Rank Organization
Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases cited
therein.
Serial No. 75/280,610
8
Decision: The refusal under Section 2(e)(1) of the
Act is reversed.
R. F. Cissel
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board