SpanLink Communi-cations

Trademark Trial and Appeal Board

Nov 27, 2000

No. 75023266 (T.T.A.B. Nov. 27, 2000)

Paper No. 26
HRW
11/27/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SpanLink Communications
________
Serial No. 75/023,266
_______
Richard A. Arrett of Vidas, Arrett & Steinkraus, P.A.
for SpanLink Communications.
Mark Sparacino, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Cissel, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Spanlink Communications has filed an application to
register the mark WEBCALL for a “computer program for
allowing users of global computer information network sites
to leave a message requesting telephone contact.”1

1 Serial No. 75/023,266, filed November 22, 1995, based on an
allegation of a bona fide intention to use the mark in commerce.
An amendment to allege use was filed March 14, 1997, setting
forth a first use date and first use in commerce date of June 24,
1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/023,266
2
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)
of the Trademark Act.2 The refusal was appealed and both
applicant and the Examining Attorney have filed briefs.3 An
oral hearing was not requested.
The Examining Attorney maintains that the proposed
mark WEBCALL is merely descriptive of the purpose or use of
applicant’s software. He points out that the software, as
identified, allows users of global information network
sites to leave a message requesting “telephone contact.”
He then goes on to argue that this phrase “telephone
contact” may refer to either contact by a traditional
telephone or “contact via an internet phone using an
internet telephony system.” (Brief p. 3) He cites the

2 Concurrent with the filing of its amendment to allege use and
in response to the first final refusal issued by the Examining
Attorney, applicant filed a “declaration showing distinctiveness
under 37 CFR 2.41” in support of its claim that its mark WEBCALL
had become distinctive of its goods. The Examining Attorney
refused to accept the claim, stating that applicant had failed to
properly amend its application to set forth a claim of
distinctiveness under Section 2(f). The Examining Attorney also
stated that the evidence which had been submitted by applicant
was insufficient to support such a claim. In applicant’s
subsequent responses and its brief, no mention was made of a
claim under Section 2(f). Accordingly, the Examining Attorney
has found no need to address the issue in his brief. We consider
any claim of distinctiveness to have been withdrawn.
3 After applicant filed its initial brief, the application was
remanded to the newly-assigned Examining Attorney for purposes of
supplementing the record with recently available evidence. When
the refusal was again made final, applicant was allowed to file a
supplemental brief and the Examining Attorney then submitted his
brief.
Ser No. 75/023,266
3
Nexis article from Computer Telephony (December 1996),
which he made of record in his action of April 8, 1999, for
its description of applicant’s software as that which would
in fact include both regular telephone call back and
Internet phone callback. In relevant part, the article
reads:
Spanlink ... demonstrated on stage how their Web-
Call product links web browsers to agents, either via
phone or Internet phone, just by a customer clicking a
button on a company’s web page labeled ‘Talk to a Real
Person.’ On the other end, an agent gets a mirrored
pop.
When a web-based customer elects to call up a Web-
Call form and fills out a form to request a callback,
the customer sees an approximate callback time for the
appropriate agent group. The customer then chooses to
communicate via either an Internet phone or telephone.
...
The WebCall agent form shows the information the
customer provided, pages visited, and the customer’s
choice for phone or Internet phone callback. When the
agent is ready, WebCall automatically calls back the
customer. ...
This being the case, the Examining Attorney argues
that WEBCALL is merely descriptive of applicant’s software,
because, as identified, the product encompasses return
telephone contact via an Internet phone. He maintains that
the term “web call” is descriptive in general as applied to
a telephone call via the Internet. Moreover, as he points
out, applicant has specifically stated that “[i]f
Applicant’s goods description were directed to an internet
telephony system (i.e., a system in which direct person-to-
Ser No. 75/023,266
4
person voice communications occurs over the internet),
descriptiveness would be conceded.” (Supplemental Brief, p.
3).4 Although applicant followed this statement with the
assertion that its goods, as identified, are not directed
to an Internet telephony system, the Examining Attorney
contends that not only would the identification of goods,
as worded, encompass “telephone contact” of this nature,
but also that the cited Nexis article demonstrates that
applicant’s software is intended to cover callback and
further communication over Internet phone or, in other
words, contact using an Internet telephony system.
In addition, the Examining Attorney has made of record
Nexis excerpts showing use of the term “web call” in
reference to Internet telephone calls, and in particular
Internet telephone calls directed to a call center, such as
the following:
... The ICC software allows users to browse a Web page
and talk to a call center agent simultaneously, over a
single analog phone line. Costs for the software and
installation range from about $120,000 for 20
concurrent Web calls to $190,000 for 60 concurrent
calls. Sales & Marketing Management (Sept. 1998);

4 As noted by the Examining Attorney, applicant earlier stated in
its response of October 12, 1999, that “there is quite a bit of
software on the market that allows a person to actually place a
phone call through the internet. As to this type of application,
the term WEBCALL would be merely descriptive, because it would
describe a function of the product, i.e., make a phone call using
the internet.”
Ser No. 75/023,266
5
Internet telephony programs and links to service
bureaus are combining to offer a new opportunity to
Web site operators. For those users with the right
bandwidth and software, a single click can put a live
operator onto a Web call, offering the benefits of a
real sales experience. Computer Economic Research
and Analysis (January 1998).
As previously noted, applicant strongly denies any
connection of its software with Internet telephony.
Applicant argues that its mark WEBCALL is used in
connection with software which allows a user of a global
computer information network site to e-mail a call center,
leaving a non-voice message which is used by a service
representative to telephone the user back “using the plain
old telephone system.”5 (Reply brief, p. 1) Applicant
insists that the Examining Attorney is incorrectly
attributing to applicant’s software the feature of
permitting a person to actually telephone and speak to a
person to request a return telephone call. Applicant
argues that not only is its software not directed to an

5 Applicant, in its reply brief, has requested that if the Board
finds the present identification does not make it clear that the
message is left by e-mail and not direct voice contact, the
identification be amended to read: computer program for allowing
users of global computer information network sites to e-mail a
non-voice message requesting telephone contact.
In the first place, the proffered amendment is untimely and
hence will not be considered. Furthermore, the clarification
which applicant seeks to make has no effect on the scope of the
term “telephone contact,” which is the basis for the Examining
Attorney’s refusal under Section 2(e)(1). Thus, the proffered
amendment is immaterial with respect to the present refusal.
Ser No. 75/023,266
6
Internet telephony system, it is not even limited in the
identification of goods to usage on the Internet or World
Wide Web.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
with which it is being used. Whether or not a particular
term is merely descriptive is determined not in the
abstract, but rather in relation to the goods for which
registration is sought, the context in which the mark is
being used, and the significance the mark is likely to
have, because of the manner in which it is used, to the
average purchaser as he encounters the goods bearing the
mark. See In re Abcor Development Corp., 588 F.2 811, 200
USPQ 215 (CCPA 1978). It is not necessary that the term
describe all the characteristics or features of the goods
in order to be merely descriptive; it is sufficient if the
term describes one significant attribute thereof. See In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
We find the evidence of record is adequate to support
the Examining Attorney’s position that the term WEBCALL is
merely descriptive when used in connection with applicant’s
software as identified in the application. We agree that
it is the breadth of the term “telephone contact,” as used
Ser No. 75/023,266
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in the identification of applicant’s goods, which renders
the term WEBCALL descriptive. Even if we were to accept
applicant’s argument that its software product only allows
the Internet user to leave a non-voice message requesting a
call back, and not to use Internet telephony in making the
initial contact with the call center, the term WEBCALL,
when used in connection with this software, is descriptive
thereof. As demonstrated by the article about applicant’s
new software product, its WEBCALL software is designed to
cover callback either by the “plain old telephone” or by
Internet phone. Despite applicant’s arguments to the
contrary, the goods as identified encompass both types of
telephone contact. It has been shown by the evidence of
record that the term “web call” would be readily recognized
as referring to Internet phone calls. Thus, we are
convinced that the correlation by purchasers of the term
WEBCALL with a software product which permits callback by
means of an Internet phone call would be obvious. The term
WEBCALL, when used in connection with applicant’s software,
immediately conveys information as to this callback feature
of the goods.
Applicant’s further argument that in the
identification of goods the software is not limited to use
on the Internet or World Wide Web is without merit. In the
Ser No. 75/023,266
8
application as originally filed, applicant identified its
program as a “computer program for allowing users on the
World Wide Web ... .” At the Examining Attorney’s request,
applicant changed the wording “World Wide Web” to the
terminology accepted by the Office at that time, namely,
“global computer information network.” Applicant is
clearly estopped from arguing a broader scope for this
latter terminology than that covered by its original
identification. See TMEP 804.09(b). Applicant’s software
product is limited to use on the Internet or World Wide
Web. Even if it were not, the descriptiveness of the term
WEBCALL would not be avoided, since the software could be
used on the Web.
Applicant has also advanced the argument that, even
considering the identification of goods, WEBCALL has
multiple connotations and thus creates an ambiguity making
the mark suggestive rather than merely descriptive. For
example, applicant argues, the term WEBCALL might be
thought to refer to a program that actually allows the
caller to call via Internet telephone to request the
callback, or to a program for the user’s computer which
directs the computer to dial a site and leave a prerecorded
message requesting telephone contact in conjunction with
web usage.
Ser No. 75/023,266
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The fact that applicant’s goods may be have been so
broadly identified that the term WEBCALL might describe
more than one feature of goods encompassed thereby does not
remove the term from the realm of mere descriptiveness. If
the identification of goods covers a software product which
allows the user of the Web site to leave a message via
Internet telephone, which in fact it does, then WEBCALL is
merely descriptive of this feature of the software. If
each possible interpretation of WEBCALL merely describes
some feature of the software which lies with the scope of
the goods identified in this application, the term is
merely descriptive of the goods for which registration is
sought. See In re Vehicle Information Network Inc., 32
USPQ2d 1542 (TTAB 1994).
Accordingly, we find the term WEBCALL to be merely
descriptive when used in connection with the computer
program identified in the application.
Ser No. 75/023,266
10
Decision: The refusal to register under Section
2(e)(1) is affirmed.
R. F. Cissel
G. D. Hohein
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser No. 75/023,266
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