No. 86340693 (T.T.A.B. Sep. 29, 2016)

John S. and James L. Knight Foundation, Inc.

Trademark Trial and Appeal BoardSep 29, 2016

No. 86340693 (T.T.A.B. Sep. 29, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 29, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re John S. and James L. Knight Foundation, Inc. ________ Serial No. 86340693 _______ Candice E. Kim of Greenberg Traurig, LLP for John S. and James L. Knight Foundation, Inc. Kelly Trusillo, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Zervas, Cataldo and Bergsman, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: John S. and James L. Knight Foundation, Inc. (“Applicant”) filed an application for registration of KNIGHT PROTOTYPE FUND (in standard characters) as a mark for the following services: Educational services, namely, providing programs, conferences, seminars, classes in the fields of journalism, media, community engagement, community development, arts and culture, education, and human services; Entertainment services, namely, producing, distributing, and exhibiting movies, films and documentaries in the fields of journalism, media, community engagement, Serial No. 86340693 - 2 - community development, arts and culture, education, and human services in International Class 42.1 The Trademark Examining Attorney required Applicant to disclaim the exclusive right to use PROTOTYPE FUND apart from the mark as shown, on the ground that this wording is merely descriptive of Applicant’s services. Applicant declined to enter the required disclaimer. The Examining Attorney made her requirement final and, on that basis, refused registration of the mark. This appeal ensued. Applicant and the Examining Attorney have filed briefs. Evidentiary Matter Applicant attached as Exhibit A to its appeal brief copies of TSDR printouts of its co-pending applications for the mark KNIGHT PROTOTYPE FUND. Applicant did not introduce these printouts into the record during prosecution of the involved application. Trademark Rule 2.141(d) reads as follows: The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. Inasmuch as the evidence comprising Exhibit A attached to Applicant’s appeal brief was not submitted during prosecution of the involved application, it is not timely and we give it no consideration. Applicant also attached to its appeal brief as Exhibits B and C definitions of the terms PROTOTYPE and FUND that are cumulative of definitions previously made 1 Application Serial No. 86340693 was filed on July 17, 2014 under Trademark Act § 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s assertion of June 18, 2012 as a date of first use and first use in commerce. Serial No. 86340693 - 3 - of record during prosecution. Accordingly, these definitions are redundant and we decline to take judicial notice thereof. Issue on Appeal The Director of the U.S. Patent and Trademark Office “may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Trademark Act § 6(a), 15 U.S.C. §1056(a). A mark or component is unregistrable if, “when used on or in connection with the goods of the applicant,” it is “merely descriptive … of them.” Trademark Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent and Trademark Office may require a disclaimer as a condition of registration if the term at issue is merely descriptive of any of the identified goods or services. In re Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is merely descriptive of goods or services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark or a component of a mark is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and every specific feature of the goods or services in order to be considered merely descriptive; it is enough if it describes one significant Serial No. 86340693 - 4 - attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Moreover, the term need not describe all of the identified goods or services. Rather, a finding of mere descriptiveness is proper with respect to all of the identified goods or services in an International Class if the mark is merely descriptive of any of the goods or services in that class. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Stereotaxis Inc., 77 USPQ2d at 108. It is the Examining Attorney’s burden to prove that a term is merely descriptive of an Applicant’s goods or services. In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). The determination that a term is merely descriptive is a finding of fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). The Examining Attorney contends that the term PROTOTYPE FUND is merely descriptive of the identified services: The term “PROTOTYPE” in relation to “FUND” describes a purpose, feature, and function of the services because applicant is providing financial support for educational and entertainment resources to inventors of new products, tools, and ideas. It does not require any imagination or leap in logic to immediately understand that the applicant’s services are such. Therefore, the wording “prototype fund” is highly descriptive of a use, purpose, function and feature of applicant’s services, and should not be registered as proprietary by any one entity.2 We turn then to the evidence of record. Applicant’s original specimen of use is reproduced below. 2 7 TTABVUE 6. Serial No. 86340693 - 5 - Serial No. 86340693 - 6 - Applicant’s substitute specimen of use is reproduced in part below.3 3 Applicant’s April 26, 2015 communication at 24-30. Serial No. 86340693 - 7 - The Examining Attorney introduced into the record several dictionary definitions, including the following: PROTOTYPE – an original or first model of something from which other forms are copied or developed;4 the first form of something new, made before it is produced in large quantities;5 FUND – an amount of money that is used for a special purpose; an amount of something that is available for use: a supply of something.6 4 May 15, 2015 final Office Action at 13 (merriam-webster.com). 5 Id. at 18 (macmillandictionary.com/dictionary/American). 6 Id. at 56 (Merriam-webster.com). Serial No. 86340693 - 8 - In addition, the Examining Attorney submitted the following entry for PROTOTYPE from the open-source Internet encyclopedia Wikipedia.org: A prototype is an early sample, model, or release of a product built to test a concept or process or to act as a thing to be replicated or learned from. It is a term used in a variety of contexts, including semantics, design, electronics, and software programming. A prototype is designed to test and trial a new design to enhance precision by system analysts and users. Prototyping serves to provide specifications for a real, working system rather than a theoretical one.7 The Examining Attorney further made of record screenshots from third-party Internet websites, of which we find the following to be most probative: 7 November 3, 2014 first Office action at 5. Because the Wikipedia evidence was submitted with the Examining Attorney’s initial Office action, Applicant had an opportunity to rebut it. See In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007). Serial No. 86340693 - 9 - 8 8 May 15, 2015 final Office action at 31-2. Serial No. 86340693 - 10 - 9 9 Id. at 39. Serial No. 86340693 - 11 - 10 10 Id. at 45-6. Serial No. 86340693 - 12 - 11 Based on the record before us, we find that relevant purchasers will not perceive the wording PROTOTYPE FUND in Applicant’s mark as merely describing Applicant’s educational and entertainment services “in the fields of journalism, media, community engagement, community development, arts and culture, education, and human services.” The dictionary evidence of record clearly indicates that a PROTOTYPE FUND is an amount of money used to develop an original or first 11 Id. at 49. We recognize from its content and website address that this Internet website originates in Ireland. “Information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007). Serial No. 86340693 - 13 - model or form of something new. Based upon these definitions, there is nothing inherent in the term PROTOTYPE FUND that merely describes a function, feature or characteristic of the recited services. So the definitions themselves do not support the requirement. Turning to Applicant’s specimens and informational pages from its Internet web site, and the above-noted third-party Internet websites discussing an Invention Prototype Fund and Prototype Development Fund, we similarly find insufficient support for the Examining Attorney’s contention that PROTOTYPE FUND merely describes Applicant’s services. That is to say, the term identifies a source of money to develop the first iteration of something new, i.e., to fund a prototype, but not the recited services. The mere fact that Applicant’s specimen and website display the applied-for mark in connection with providing a source of funding to develop a prototype is insufficient for us to conflate those activities with Applicant’s educational and entertainment services “in the fields of journalism, media, community engagement, community development, arts and culture, education, and human services.” The evidence of record suggests that private concerns as well as state, local and Federal agencies provide funding for new ideas and that individuals seek such funding for inventions and entrepreneurship. The evidence further establishes that Applicant provides funding for first iterations of such inventions and ideas. However, the entirety of the evidence relied upon by the Examining Attorney, including any evidence not specifically discussed herein, does not appear to support her position Serial No. 86340693 - 14 - that PROTOTYPE FUND describes a function, feature or characteristic of the recited services. In summary, the record before us falls somewhat short of supporting the Examining Attorney’s requirement of a disclaimer of the term PROTOTYPE FUND on the ground that this term is merely descriptive of the Applicant’s services.12 Accordingly, we reverse the Examining Attorney’s refusal of registration. Decision: The refusal to register is reversed. 12 We observe nonetheless that on a different record, such as might be adduced in an opposition proceeding, we might reach a different conclusion.