Caleb Suresh Motupalli

Trademark Trial and Appeal Board

Oct 2, 2017

No. 86573858 (T.T.A.B. Oct. 2, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: October 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Caleb Suresh Motupalli
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Serial No. 86573858
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Caleb Suresh Motupalli, appearing pro se.

Allison Holtz, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Wellington, Lykos, and Larkin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Caleb Suresh Motupalli (“Applicant”), an individual, seeks registration on the
Principal Register of the standard character mark PERSON1 for, as amended:

1 The mark in the drawing page of the application appears as “Person,” but Applicant has
claimed the mark to be in standard character format with no claim as to special form. We
fine no significance to the mixed use of upper and lower case lettering in the drawing and we
assess the descriptiveness of a standard character mark by reference to the word, not how it
might be depicted in use (or even in the application in view of the standard character claim).
See In re Calphalon Corp., 122 USPQ2d 1153 (TTAB 2017).

Serial No. 86573858
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Wearable computer peripherals; Wearable computers; Wearable digital
electronic devices comprised primarily of headsets with ear phones and
microphone, virtual and augmented reality eyewear, a projector, a
telephone, display screens for viewing, and featuring software for the
collection, organizing, modifying, transmission, storage and sharing of
data and information in the field of personal life; software for personal
management, namely, software for organizing data and information,
sending and receiving texts, emails, data and information; smart phones;
tablet computers; and portable computers; display screens; goods featuring
a wristwatch, namely, smart watches in International Class 9.2

The Examining Attorney has refused registration on the basis that the mark is
merely descriptive of Applicant’s goods under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1).
Background
The prosecution of this application has been somewhat tortured and there is no
shortage of Office Actions and responses from Applicant. The following is an
abbreviated version of events leading to up to this decision.
In the first Office Action, the Examining Attorney made requirements involving a
more definite identification of goods and the submission of acceptable specimens of
use, but did not assert a substantive basis for refusal.3 After a series of back and forth
of Office Actions and Applicant’s responses, including multiple requests for
reconsideration, the Examining Attorney accepted an amendment to the

2 Application Serial No. 86573858, filed on March 24, 2015, based on use of the mark in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging March 17,
2015 as the date of first use and first use in commerce.
3 Office Action issued on June 28, 2015.
Serial No. 86573858
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identification of goods but maintained and made final the requirement for an
acceptable specimen of use.4
Applicant filed an appeal of the specimen refusal together with a request for
reconsideration.5 The Board instituted the appeal but suspended the proceeding to
remand the application to the Examining Attorney to address the request for
reconsideration.6 The Examining Attorney eventually approved Applicant’s specimen
of use and approved the application for publication for opposition.7
However, after the application was approved for publication, the Examining
Attorney issued an Office Action “in response to an Official Gazette Query conducted
by the Commissioner’s Office” and, for the first time, asserted the descriptiveness

4 Office Actions issued on August 3, 2015; October 25, 2015; November 23, 2015; December
19, 2015; March 21, 2016; April 17, 2016; and May 17, 2016 (“final” Office Action). Applicant’s
responses, including requests for reconsideration, filed on June 29, 2015; October 2, 2015;
October 25, 2015; November 24, 2015; February 27, 2016; March 22, 2016; and April 26, 2016.
5 1 TTABVUE.
6 2 TTABVUE.
7 We note that, as originally filed, the application contained a statement that the mark has
“become distinctive of the goods/services, as demonstrated by the attached evidence,” under
Section 2(f) of the Trademark Act. Prior to approving the application for publication, but after
the application had been remanded, the Examining Attorney advised Applicant that the
Section 2(f) acquired distinctiveness statement in the application was unnecessary because
the mark “appears to be inherently distinctive” and is thus “eligible for registration on the
Principal Register without proof of acquired distinctiveness.” See Office Action issued on
June 12, 2016. The Examining Attorney offered Applicant the opportunity to delete the
Section 2(f) claim, pursuant to TMEP § 1212.02(d) (April 2017). Applicant did not respond.
While a statement from an applicant that a mark has acquired distinctiveness may be
construed as an admission that the mark is merely descriptive, and thus not inherently
distinctive, the Section 2(f) claim was not pursued by Applicant or addressed again by the
Examining Attorney on appeal. Moreover, based on Applicant’s arguments later during
prosecution and on appeal, he clearly does not concede that his mark is merely descriptive
but argues that it is “inherently distinctive.” See Applicant’s response filed February 6, 2017.
In view of our ultimate decision in this appeal, we agree with the Examining Attorney’s initial
holding that the acquired distinctiveness statement is unnecessary. The Section 2(f) claim is
therefore deleted from the application file record.
Serial No. 86573858
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refusal now before us.8 This set off another series of back and forth of Office Actions,
and Applicant’s responses, including requests for reconsideration, leading to the
descriptiveness refusal being made final.9
The appeal was resumed by the Board. Applicant and the Examining Attorney
fully briefed the descriptiveness refusal.10
The Descriptiveness Refusal
The distinctiveness of a proposed mark spans a spectrum from coined and fanciful
terms to arbitrary to suggestive and then along a descriptiveness continuum (going
from merely descriptive to generic terms). See Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir. 1976) (discussing spectrum of
distinctiveness of marks.) A mark is deemed to be merely descriptive within the
meaning of Section 2(e)(1) and will be refused registration on the Principal Register
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods or services for which it is used. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). See also In re TriVita, Inc., 783 F.3d 872, 114

8 Office Action issued on September 5, 2016.
9 See Applicant’s responses filed on September 9, 2016; February 6, 2017; March 10, 2017.
Office Actions issued on October 11, 2016; March 5, 2017 (making descriptiveness refusal
“final”); and April 9, 2017.
10 10 TTABVUE (Applicant’s brief); 13 TTABVUE (Examining Attorney’s brief); and 14-15
TTABVUE (Applicant’s reply).

Serial No. 86573858
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USPQ2d 1574, 1575 (Fed. Cir. 2015). On the other hand and moving to the other side
of the spectrum, a mark is suggestive and registrable on the Principal Register if
imagination, thought or perception is required to reach a conclusion on the nature of
the goods or services. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ2d
505 (CCPA 1980); In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980). Distinguishing between a merely
descriptive term and a suggestive one is not always easy and the line between the
two is sometimes fine. See In re Recovery, Inc., 196 USPQ 830, 832 (TTAB 1977)
(acknowledging “difficulty in determining the suggestiveness or descriptiveness” of
the term RECOVERY which seems “at first blush, to possess a descriptive
significance” in connection with the involved services, but “to articulate the manner
in which the term … describes those services, one cannot come up with an immediate
response, but rather must engage in a mental process involving imagination,
speculation, and possibly stretching the meaning of the word to fit the situation.”).
The determination of whether a mark is merely descriptive or only suggestive
must be made in relation to the goods or services for which registration is sought, not
in the abstract. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82
USPQ2d at 1831. This requires consideration of the context in which the mark is used
or intended to be used in connection with those goods or services, and the possible
significance that the mark would have to the average purchaser of the goods or
services in the marketplace. In re Chamber of Commerce, 102 USPQ2d at 1219; In re
Serial No. 86573858
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Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987). Evidence that a term is merely descriptive to the relevant
purchasing public “may be obtained from any competent source, such as dictionaries,
newspapers, or surveys.” In re Bayer, 82 USPQ2d at 1831 (quoting In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986)); see also, In re
N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707 (Fed. Cir. 2017) (involving competence
of source of evidence.)
The Examining Attorney argues that the evidence she submitted “with regard to
the nature of ‘wearable’ goods show[s] that the term PERSON describes a significant
feature of these goods for wear on the human body, distinguishing them from a
wearable device for, for example, a dog or a horse.”11 The evidence in support of the
refusal is minimal. It includes two examples of third-party use of the term “person”
in connection with wearable electronic devices; the following are relevant excerpts:

[from www.broadcastsportsinc.com];12 and

11 13 TTABVUE 7.
12 P. 6, Office Action issued on September 5, 2016.
Serial No. 86573858
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[from www.alibaba.com website].13

The Examining Attorney also submitted internet printouts showing the term
“wearable computing” is defined as “electronic devices that are worn on the body or
clothes,”14 as well as the following definitions:15
PERSON: a human being; a person who likes or enjoys something specified;
{law} the body or clothing of a person, especially when considered as a place to
hide things.

CONSUMER: A person who buys goods and services.

13 Id. at p. 7.
14 From “The Free Dictionary” website (www.encyclopedia2.thefreedictionary.com). Id. at p.
18.
15 From “Merriam-Webster” website (www.merriam-webster.com); pp. 6-26, Office Action
issued on October 11, 2016.
Serial No. 86573858
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Based on this evidence, the Examining Attorney concludes that Applicant’s mark
“describes the intended users of applicant’s goods.”16
Applicant, on the other hand, essentially argues in his appeal brief that the
Examining Attorney has taken too broad of an approach with respect to the term
“person” and the descriptiveness refusal. Applicant asserts, “if PERSON is
descriptive for this reason then it is descriptive of virtually all goods, as long as the
goods are used by humans.”17 The Examining Attorney, replying to this specific
argument from Applicant, commented that she “agrees that Applicant has correctly
stated the policy.”18
On the record before us, we do not find that the term PERSON, by itself, conveys
any meaningful information regarding a quality, feature, function, characteristic or
purpose of the identified goods. As defined, the term is extremely broad and simply
means a human being; thus, a “person” will necessarily be the consumer for all goods
and services imaginable. As to the Examining Attorney’s argument that it will be
understood as describing the type of end user of the goods, i.e., distinguishing the
end-user from a possible non-human user of goods, the evidence to support this is
inadequate. First, we note we only have printouts from two websites. This hardly
demonstrates frequency nor does it offer any sense of parlance whereby “person” is
used in connection with wearable electronic goods in the manner suggested by the

16 13 TTABVUE 8.
17 10 TTABVUE 3.
18 13 TTABVUE 6.
Serial No. 86573858
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Examining Attorney. In this regard, we note the website evidence appears to show
“person” being used differently. With respect to the Alibaba website advertising a
GPS tracking device, the preceding language “for pet/…” preceding “person” certainly
helps clarify a particular meaning and significance of “person.” On the other hand,
the second website involves “Person-Wearable POV [point of view] Camera Systems,”
and emphasizes the location of the “person-wearable” product and “maximize[ing] the
comfort of the wearer.” That is, instead of identifying a human end user (to
distinguish from a non-human end user), the term “person” seems to be indicating
where the camera is placed, e.g., wearable on the body or “on the person.”
Ultimately, the term “person” can literally be a reference to anyone and be
understood in many different manners. There is insufficient evidence demonstrating
that consumers would readily understand it in connection with the identified goods
as conveying the information that the intended end user is a human being. The
“immediate idea” of a quality, feature, function, or characteristic of the goods or
services conveyed by a descriptive term “must be conveyed forthwith with a ‘degree
of particularity.’” Goodyear Tire & Rubber Co. v. Continental General Tire Inc., 70
USPQ2d 1067, 1069 (TTAB 2003) (citing In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978) and In re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990)).
Here, we find that PERSON does not do that in connection with Applicant’s wearable
computer and electronic goods, as identified in the application; rather, the term is too
vague as to what or how a “person” is being referred to – whether it is the consumer,
the end user of the goods, or if the term is somehow an expression of the goods being
Serial No. 86573858
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worn “on the person” – rendering the mark at least suggestive, not merely descriptive,
of the goods and thus registrable on the Principal Register.
Decision: The refusal to register Applicant’s mark is reversed.