Onsite Network, Inc.

Trademark Trial and Appeal Board

Aug 5, 2008

No. 77049437 (T.T.A.B. Aug. 5, 2008)

Mailed:
5 August 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Onsite Network, Inc.
________

Serial No. 77049437
_______

Maurice U. Cahn of Cahn & Samuels, LLP for Onsite Network,
Inc.

Rudy R. Singleton, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Holtzman, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 22, 2006, Onsite Networks, Inc.
(applicant) filed an intent-to-use application (Serial No.
77049437) to register the mark ONSITE NETWORK, in standard
character form, on the Principal Register for the following
services: “broadcasting services and provision of access
to video and audio content provided via the Internet” in
Class 38. Applicant has disclaimed the term “Network.”
The examining attorney has refused registration on the
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77049437
2
ground that the term “Onsite Network” is merely descriptive
of applicant’s services. 15 U.S.C. §§ 1052(e)(1). The
examining attorney argues that the term “Onsite Network”
merely describes applicant’s services as “broadcasting
related services that originate from the location of the
particular activity broadcasted.” Brief at unnumbered p.
8.1 In addition, the examining attorney refused
registration on the ground that the identification of goods
and services was “unacceptable and required clarification.”
Brief at 11.
After the examining attorney made the refusals final,
applicant appealed to this board.
Identification of services
Under 15 U.S.C. § 1051(b)(2), a trademark application
must include a “specification of … the goods in connection
with which the applicant has a bona fide intention to use
the mark.” To “specify” means “to name in an explicit
manner. The identification of goods or services should set
forth common names, using terminology that is generally
understood.” TMEP § 1402.01 (5TH ed. rev. September 2007).
In this case, the examining attorney has objected to

1 Applicant has also filed application Serial No. 77049419 for
the mark ONSITE NETWORK and design for services in Class 35.
Inasmuch as the services are not the same and the evidence is
different, we will issue separate opinions for these appeals.
Ser. No. 77049437
3
applicant’s current identification of services
(“broadcasting services and provision of access to video
and audio content”) because the identification “could
include goods/services in Classes 9, 38 and” 41. Brief at
12. The examining attorney points out that applicant’s
identified services can be included in the following
classes:
Class 9 - Provision of access to video and audio
content provided via the Internet namely downloadable
films and TV programs featuring {indicate subject
matter} provided via a video-on-demand service

Class 38 - Broadcasting services and provision of
telecommunication access to video and audio content
provided via a video-on-demand service via the
Internet

Class 41 - Provision of access to video and audio
content provided via the Internet, namely provision of
non-downloadable films and TV programmes [sic] via a
video-on-demand service

The Office may require more specificity in an
identification of goods or services when the identification
as written may be included in more than one International
Class. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544
(Fed. Cir. 2007) (“In sum, the scope of the term
‘chronographs’ is ambiguous for registration purposes, for
it includes both watches and time recording devices. Omega
states that the only chronographs with which it uses the
mark are ‘watches.’ The PTO has discretion to determine
Ser. No. 77049437
4
whether and how a trademark registration should include a
more particularized statement of the goods for which the
mark is [to] be used”).
Applicant relies on In re Thor Tech Inc., 85 USPQ2d
1474 (TTAB 2007) and argues that the examining attorney’s
“requirement for adoption of a less accurate recitation of
the services to match those contained in the Acceptable
Identification of Goods and Services Manual should be
reversed.” Brief at 2-3. However, Thor Tech does not
provide much support for applicant’s argument. In that
case, the examining attorney objected to the term “park
trailers.” The issue in that case was whether these goods
could include recreational vehicles in Class 12 and mobile
homes in Class 19. The Thor Tech applicant submitted
evidence that “park trailers” was a term understood to
refer to recreational vehicles. Therefore, the goods would
not be classified in more than one class. In the present
case, applicant has provided no evidence that the
“provision of access to video and audio content via the
Internet” is understood to refer to services only in Class
38. Indeed, the identification could include access to
video content through downloadable and non-downloadable
content, which are clearly in two classes.
Ser. No. 77049437
5
We add that the examining attorney’s basic objection
concerns the fact that applicant’s services as currently
identified may be classified in more than one class. To
the extent that applicant does not believe that the
examining attorney’s suggested changes to the language of
the identification of goods and services are accurate, it
was incumbent on applicant to propose a more accurate
identification of goods and services that would clarify
that the services in each class are properly limited.
Inasmuch as applicant’s present identification of
goods and services includes goods and services in more than
one class, we affirm the examining attorney’s refusal to
register applicant’s mark as the services are currently
identified.
Descriptiveness
The next question is whether the term ONSITE NETWORK
is merely descriptive for the identified services. “A term
is merely descriptive if it immediately conveys knowledge
of a quality, feature, function, or characteristic of the
goods or services with which it is used.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007). See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
Ser. No. 77049437
6
Courts have long held that to be “merely descriptive,” a
term need only describe a single significant quality or
property of the goods. Gyulay, 3 USPQ2d at 1009; Meehanite
Metal Corp. v. International Nickel Co., 262 F.2d 806, 120
USPQ 293, 294 (CCPA 1959). “Descriptiveness of a mark is
not considered in the abstract. Rather, it is considered
in relation to the particular goods for which registration
is sought, the context in which it is being used, and the
possible significance that the term would have to the
average purchaser of the goods because of the manner of its
use or intended use.” Bayer, 82 USPQ2d at 1831. See also
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
The examining attorney has submitted evidence from the
internet (emphasis added) that shows that the term “on-
site” is used to describe a type of broadcasting services:
On-site broadcasting for your company's major events.
www.wsradio.com

The other important matches [computer games], around
100 matches, in four cyber spaces which are dedicated
to on-site broadcasting for the general spectators
will be provided through the website…
www.worldcybergames.com

He has even expanded his curriculum - complete with a
video series of knowledge leaders - through Monterrey
Tec's on-site broadcasting studio delivering to some
200 sites through Latin America + digital on-line
delivery worldwide.
www.entovation.com
Ser. No. 77049437
7

…12 hours broadcasting of the Dubai World Cup, the
world’s richest horse race and onsite broadcasting
from Dubai 2005; the ninth international aerospace
exhibition and Arabian Travel Market.
www.ameinfo.com

The examining attorney, with the first Office action,
also included a definition of “On-site” as “at site of
activity: taking place or provided at the location where
work or some other activity is being carried out.” In
addition, the same Office action included a definition of
“network” as, inter alia:
System of computers: a system of two or more
computers, terminals, and communication devices linked
by wires, cables, or a telecommunications system in
order to exchange data. The network may be limited to
a group of users in a local area local area network,
or be global in scope, as the Internet is.

The examining attorney also included the following
information from applicant’s website
(www.onsitenetwork.net):
Onsite’s system is designed to engage customers with
an entertaining and interactive viewing experience.
Utilizing new proprietary technology, Onsite Network
delivers commercial TV and real-time content,
advertising and marketing to large HDTV screens
simultaneously. We do this without in any way
obstructing or interfering with your commercial
television program choices. In fact, our system is
designed to build upon and enhance the television
experience.

Placed in a variety of high traffic venues including
restaurants, bars, colleges & university bookstores,
hotels and healthcare facilities, OnSite Network’s
multi-subject play list offers exclusive programming
Ser. No. 77049437
8
and targeted content customized to serve each
location’s individual business needs. In addition to
entertainment for patrons, OnSite will provide venues
additional advertising, marketing and revenue
opportunities.

In its response to the examining attorney’s first
Office action, applicant submitted copies of three
registrations. Two registrations (Nos. 2575196 and
2531263) are for the marks ONSITE ACCESS with different
tower designs for telecommunications and telecommunication
installation services. The registrant in both these cases
is the same, OnSite Access, Inc. The other registration is
for the mark ONSITE SERVICE GATEWAY (No. 2629495) for
telecommunications and electrical and optical transmission
services. However, this mark is registered on the
Supplemental Register, which is an admission that the term
is merely descriptive. Quaker State Oil Refining Corp. v.
Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA
1972) (“We also agree with the observation of the board
that, when appellant sought registration of SUPER BLEND on
the Supplemental Register, it admitted that the term was
merely descriptive of its goods”). See also In re
Consolidated Foods Corp., 200 USPQ 477, 478 n.2 (TTAB 1978)
(“Registration of the same mark on the Supplemental
Register is not prima facie evidence of distinctiveness; in
Ser. No. 77049437
9
fact, such a registration is an admission of
descriptiveness”).
Applicant also argues that it “provided a list of
existing registrations including the word ONSITE in a range
of fields where no disclaimer was required.” Brief at 4.
The examining attorney pointed out (Brief at 9) that “only
three third-party registrations were properly made of
record.” We agree that there are only three registrations
of record. While applicant did include a list of five
additional registrations with its Response dated April 18,
2007 (p. 11), the examining attorney subsequently advised
applicant to “make registrations proper evidence of record,
soft copies of the registrations … must be submitted.”
Final Office Action at 3. “[T]he submission of a list of
registrations is insufficient to make them of record.” In
re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). See also
In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB
1998) (“The Board does not take judicial notice of third-
party registrations, and the mere listing of them is
insufficient to make them of record”). Therefore,
applicant’s list of registrations is not evidence of
record.
We add that applicant’s evidence that there are two
registrations for the same term by the same registrant is
Ser. No. 77049437
10
not much evidence that applicant’s term is not merely
descriptive. “Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO's allowance of such prior registrations does not bind
the Board or this court.” In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also
In re Hotels.com L.P., 87 USPQ2d 1100, 1108 (TTAB 2008)
(“Nor do these third-party registrations establish that
there is an Office practice holding such marks are
generally registrable”). We also point out that the other
registration that applicant has made of record actually
supports the examining attorney’s position inasmuch as the
mark is on the Supplemental Register.
In this case, the term, On-site, means to take place
at the location where an activity is being carried out.
Applicant describes its services as “an internet based
broadcasting service.” Response dated April 18, 2007 at 9.
Applicant’s broadcasting services and provision of access
to video and audio content takes place at the site of its
customers where applicant’s broadcasting services provide
applicant’s “multi-subject play list” as well as
programming for “additional advertising, marketing, and
revenue opportunities.” Applicant’s services are “on-site”
to the extent that it provides “commercial TV and real-time
Ser. No. 77049437
11
content, advertising and marketing” concerning the site’s
restaurant, bar, bookstore, etc. While applicant argues
(Brief at 6) that “on-site” is “not the location or situs
of a network,” in applicant’s case it is because applicant
displays commercial television and site-sponsored
advertising and promotions.
We add that the fact that applicant spells the word
“onsite” without a hyphen is hardly significant. A slight
misspelling, particularly the addition or deletion of a
hyphen, is not sufficient to change a descriptive or
generic word into a suggestive word. See, e.g., Nupla
Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d
1711, 1716 (Fed. Cir. 1997)(CUSH-N-GRIP “which is merely a
misspelling of CUSHION-GRIP, is also generic as a matter of
law”); Weiss Noodle Co. v. Golden Cracknel and Specialty
Co., 290 F.2d 845, 129 USPQ 411 (CCPA 1961) (HA-LUSH-KA
held to be the generic equivalent of the Hungarian word
“haluska”). See also In re Noon Hour Food Products, Inc.,
___ USPQ2d ____ (TTAB April 23, 2008) Serial No. 78618762,
slip op. at 2 n.2 (“Certainly an upper-case letter or the
addition of a hyphen (or a space) cannot obviate the
statutory bar to registration of a generic designation any
more than can a slight misspelling of such a term”). The
word ON-SITE or ONSITE would have no difference in meaning.
Ser. No. 77049437
12
Applicant’s spelling does not appear to be even that
unusual inasmuch as the three registrations that applicant
has made of record apparently spell the term as one word
without a hyphen.
In addition, applicant’s services involve a “network”
inasmuch as they are conducted “via the Internet” and an
“interconnected or interrelated chain, group, or system” of
terminals displaying entertainment and advertising content
at its customers’ sites.2
The next question becomes whether the combination of
the terms “Onsite” and “Network” is merely descriptive. In
re IP Carrier Consulting Group, 84 USPQ2d 1028, 1030 (TTAB
2007) (“Finally, in determining whether a mark is merely
descriptive, we must consider the mark in its entirety”).
When we view the term ONSITE NETWORK in relation to
applicant’s services, we conclude that there is nothing
incongruous about the term. See In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1017 (Fed. Cir. 1987) (SCREENWIPE
generic for a wipe for cleaning television and computer
screens). Applicant’s term immediately informs prospective
purchasers of a feature or characteristic of the services,

2 “To be fair, Applicant does not and cannot reasonably contest
that the word NETWORK is descriptive.” Response dated April 18,
2007 at 10.
Ser. No. 77049437
13
i.e., that its advertising and similar services are
provided through a network for its customers on-site. See
In re Kronholm, 230 USPQ 136, 137 (TTAB 1986) (“It is clear
that applicant's cable television network services will
have, as their subject matter and intended audience,
colleges and universities in this country. The term sought
to be registered [COLLEGE CABLE NETWORK] comprises a
combination of descriptive words which lose no descriptive
significance in the expression, one which aptly describes a
significant feature or characteristic of applicant's
services”).
Applicant argues that it “has no counterpart in the
broadcasting/internet fields” and that the examining
attorney did not introduce any evidence of others using the
term ONSITE NETWORK. These points do not establish that
the term is not merely descriptive. Brief at 7-8. Even
novel ways of referring to a product may nonetheless be
merely descriptive. Clairol, Inc. v. Roux Distributing
Co., Inc., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960):
The record shows that “hair color bath” tells the
potential purchasers only what the goods are, what
their function is, what their characteristics are and
what their use is. Even though “color bath” may have
been a novel way of describing a liquid for coloring
hair, the words were, as used by appellee,
nevertheless descriptive of its hair coloring liquid
at the time when appellant, to more fully describe the
goods, added the common word “hair” thereto. The
Ser. No. 77049437
14
resultant expression is nothing but the normal use of
the English language. The same merchandise may, and
often does, have more than one generic name.

In re Gould, 173 USPQ 243, 245 (TTAB 1972) (“The fact that
applicant may be the first and possibly the only one to
utilize this notation in connection with its services
cannot alone alter the basic descriptive significance of
the term and bestow trademark rights therein”).
Ultimately, we conclude that applicant’s services
include a network that broadcasts a mixture of
entertainment programming with on-site advertising and
promotional content displayed together. As such, the term
ONSITE NETWORK merely describes the on-site advertising
feature of applicant’s network. Therefore, applicant’s
mark is merely descriptive of the identified services.
Decision: The refusal to register under Trademark Act
§ 2(e)(1) is affirmed.