Zscaler, Inc.

Trademark Trial and Appeal Board

Mar 8, 2021

88197150 (T.T.A.B. Mar. 8, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Zscaler, Inc.
_____

Serial No. 88197150
_____

Seth L. Hudson of Clements Bernard Walker PLLC,
for Zscaler, Inc.
Jaime Batt, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Bergsman, Coggins, and Hudis,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Zscaler, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
ZSCALER PRIVATE ACCESS (in standard characters) for “cloud computing
featuring software for use in policy-based, secure access to the private applications
and network resources,” in International Class 42.1

1 Application Serial No. 88197150 was filed on November 16, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as January 1, 2017.
Serial No. 88197150
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s
failure to comply with a requirement to disclaim the wording PRIVATE ACCESS.
The Examining Attorney maintains this term is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), when used on or in connection
with Applicant’s services, and therefore must be disclaimed apart from the mark as
shown. When the Examining Attorney made the refusal final, Applicant appealed
and requested reconsideration. After the request for reconsideration was denied, the
appeal was resumed. Applicant and the Examining Attorney filed briefs.2 We affirm
refusal to register in the absence of a disclaimer of PRIVATE ACCESS.
I. Evidentiary Issue
Applicant attached to its appeal brief excerpts from three websites
(californiabeaches.com, nextcity.org, and platformsnightclub.com) which were
“accessed October 27, 2020.”3 This material is untimely. Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d). See also, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1207.01 (2020). However, inasmuch as Applicant submitted
with its July 30, 2020 Request for Reconsideration copies of these websites which

2 Citations to the briefs and other materials in the appeal record refer to the Board’s
TTABVUE docket system. Before the TTABVUE designation is the docket entry number and
after the designation are the page numbers. Citations to the prosecution file refer to the
downloadable .pdf version of the TSDR record. In re Consumer Protection Firm PLLC, 2021
USPQ2d 238, *3 n.3 (TTAB 2021).
3 Brief, p. 12 (13 TTABVUE 13); Exhibits A, B, and C (13 TTABVUE 15-39).
Serial No. 88197150
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were accessed and printed on July 24, 2020,4 we will consider the earlier, timely
versions of those websites. See In re Michalko, 110 USPQ2d 1949, 1950-1 (TTAB
2014) (attaching previously-filed evidence to a brief instead of citing to original
submission creates an inconvenience for the Board; it requires examination of the
attachment and then an attempt to locate the same evidence in the record developed
during prosecution of the application, requiring more time and effort than necessary
had citation directly to the prosecution history been used). See also TBMP § 1203.01
(“When referring to the record, the applicant and examining attorney should cite to
the prosecution history for the application, currently the TSDR database.”).
II. Applicable Law
Under Section 6(a) of the Trademark Act, “[t]he Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
Merely descriptive terms are unregistrable under Section 2(e)(1) of the Trademark
Act, and therefore are subject to a disclaimer requirement if the mark is otherwise
registrable. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed.
Cir. 2005). Failure to comply with a disclaimer requirement is a basis for refusing
registration of the entire mark. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332,
116 USPQ2d 1262, 1265 (Fed. Cir. 2015); In re Am. Furniture Warehouse CO,
126 USPQ2d 1400, 1403 (TTAB 2018).
A term is “merely descriptive” within the meaning of Section 2(e)(1) “if it
immediately conveys information concerning a feature, quality, or characteristic of

4 See July 30, 2020 Request for Reconsideration TSDR 11-38.
Serial No. 88197150
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the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). 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 attribute,
function or property of the goods [or services].” In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)).
Whether a term is merely descriptive is “evaluated ‘in relation to the particular
goods [or services] for which registration is sought, the context in which the mark is
used, and the possible significance the term would have to the average consumer
because of the manner of its use or intended use,”’ In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting Bayer,
82 USPQ2d at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys
Water Sports, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978)). “In other words, we evaluate whether someone
who knows what the goods [or services] are will understand the mark to convey
information about them.” Id. at 1515 (citing DuoProSS Meditech Corp. v. Inviro Med.
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)).5

5 A term is suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach a
conclusion about their nature from the term. See, e.g., Fat Boys Water Sports, 118 USPQ2d
at 1515.
Serial No. 88197150
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In support of his argument that the term PRIVATE ACCESS immediately conveys
information about a feature or function of Applicant’s cloud computing services, the
Examining Attorney points to dictionary definitions of record of PRIVATE and
ACCESS.6 Applicant complains that “the Examining Attorney has dissected PUBLIC
ACCESS and provided definitions of the individual terms;”7 however, that is an
acceptable starting point. Because the term PRIVATE ACCESS involves the
combination of words, we are “required to examine the meaning of each component
individually, and then determine whether the [term] as a whole is merely
descriptive.” DuoProSS, 103 USPQ2d at 1758.
If the words PRIVATE and ACCESS are individually descriptive of the services in
the application, we must determine whether their combination in Applicant’s mark
“conveys any distinctive source-identifying impression contrary to the
descriptiveness of the individual parts.” In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370, 1372 (Fed. Cir. 2003). If each word instead “retains its merely
descriptive significance in relation to the goods [and services], the combination
results in a composite that is itself merely descriptive.” Fat Boys Water Sports, 118
USPQ2d at 1516 (citing In re Tower Tech., Inc., 64 USPQ2d 1314, 1317-18 (TTAB
2002)); see also In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953-55 (TTAB
2018).

6 Examiner’s Statement, unnumbered p. 5 (15 TTABVUE 6).
7 13 TTABVUE 10.
Serial No. 88197150
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Evidence that a term is merely descriptive to the relevant purchasing public may
be obtained from any competent source, such as dictionaries or advertising materials.
Mecca Grade Growers, 125 USPQ2d at 1953 (citing Bayer, 82 USPQ2d at 1831 and
Abcor Dev., 200 USPQ at 218). “It also may be obtained from websites and
publications, and an applicant’s own specimen of use and any explanatory text
included therein.” In re Omniome, Inc., 2020 USPQ2d 3222, *4 (TTAB 2019)
(citing N.C. Lottery, 123 USPQ2d at 1710).
The record contains the following dictionary definitions made of record by the
Examining Attorney:
 PRIVATE:8
o intended for or restricted to the use of a particular
person, group, or class;
o unsuitable for public use or display;
o having to do with or for the use of a single person or
group: not public.

 ACCESS:9
o permission, liberty, or ability to enter, approach, or pass
to and from a place or to approach or communicate with
a person or thing;
o freedom or ability to obtain or make use of something;
o the act or instance of accessing something;
o to open or load (a computer file, an Internet site, etc.);
o a way by which a thing or place may be approached or
reached.

The Examining Attorney also points to several websites of record, including
Applicant’s own website, to support the argument that the each of the words

8 MERRIAM-WEBSTER (merriam-webster.com), July 5, 2019 Office Action TSDR 29, 30, 34.
9 Id., TSDR 36, 37.
Serial No. 88197150
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PRIVATE and ACCESS are individually descriptive of the same or similar services
to those recited in the subject Application. For example:
 (zsclaer.com)10
Get fast, secure, and direct access to your apps–without
appliances.
[T]he Zscaler global cloud delivers the entire gateway
security stack as a service. By securely connecting users to
their applications, regardless of device, location, or
network.
A new approach to remote access. Get the experience users
want, with the security you need.
 (wikipedia.org)11
Network Access Control (NAC) is a computer networking
solution that uses a set of protocols to define and
implement a policy that describes how to secure access to
network nodes by devices when they initially attempt to
access the network.
NAC solutions allow network operators to define policies,
such as the types of computers or roles of users allowed to
access areas of the network, and enforce them in switches,
routers, and network middleboxes.
 (solarwinds.com)12
Monitor server performance with over 1,200 monitoring
templates across your private, public, and hybrid cloud
environments. Get continuous server monitoring, cross-
stack correlation for your hybrid IT data, and the flexibility
to monitor custom applications.

10 July 5, 2019 Office Action TSDR 43, 44, 46-47.
11 August, 25, 2020 Request for Reconsideration Denied TSDR 4, 5.
12 Id., TSDR 34.
Serial No. 88197150
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 (barracuda.com)13
Remote access is the ability to access a system or network,
whether it’s a personal device or office server, without
being physically present. This allows employees to work
off-site, such as at home or in another location, while still
maintaining secure access to a distant computer or
network.
As the first step in our analysis, we find that the individual words PRIVATE and
ACCESS are descriptive of Applicant’s services. Indeed, each word appears in the
identification of services. See In re Taylor & Francis [Publishers] Inc., 55 USPQ2d
1213, 1215 (TTAB 2000) (word “psychology” in the identification of goods is probative
that word “psychology” in the mark PSYCHOLOGY PRESS is merely descriptive of
“nonfiction books in the field of psychology”).
In the context of Applicant’s services, PRIVATE means “intended for or restricted
to the use of a particular person, group, or class” such as a specific group of computer
users, and “having to do with or for the use of a single person or group: not public;”
and ACCESS means “permission . . . [and] ability . . . to approach or communicate
with a . . . thing” such as a private application or other network resource, “ability to
obtain or make use of something” such as a private application or other network
resource, “to open or load (a computer file, an Internet site, etc.)” such as a private
application or other network resource, and “a way by which a thing [such as a private
application or other network resource] . . . may be . . . reached.” There is no question
that the words PRIVATE and ACCESS are individually descriptive of the services.

13 Id., TSDR 65.
Serial No. 88197150
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Now, we must determine whether their combination as PRIVATE ACCESS
conveys any distinctive source-identifying impression contrary to the descriptiveness
of the individual words. Oppedahl & Larson LLP, 71 USPQ2d at 1372. In support of
the argument that the term PRIVATE ACCESS is merely descriptive and must be
disclaimed, the Examining Attorney points to additional websites of record in which
third-parties use the term for the same or similar services. For example:
 (wandera.com)14
Private Access[:] Enable Simple, secure and fast Zero Trust
Network Access to any type of corporate resource[.] Cloud-
hosted secure access to your applications in the date center
or in the cloud, built from the ground up on ZTNA
principles.
Wandera Private Access (WPA) eliminates the broad
discoverability and reachability of data and apps that users
shouldn’t have access to, and limits access to specific
server/application ports, reducing exposure due to server
vulnerabilities. It applies adaptive access based on real-
time context, to restrict access to sensitive apps and data
from compromised devices.
WPA is a cloud-based service which requires no on-premise
equipment. Our service edge dynamically scales to handle
unlimited client connections. WPA avoids the cost of full
tunneling all traffic, but without losing visibility and
control of what is being accessed (i.e.[,] policy without
routing).
 (netskope.com)15
Netskope Private Access provides zero trust network
access to private applications and data in hybrid IT (public
cloud and data center) environments. It is an integral
capability of the Netskope Security Cloud and offers
seamless connectivity for authenticated users, supports

14 August, 25, 2020 Request for Reconsideration Denied TSDR 69, 70, 71.
15 Id., TSDR 80, 81, 83.
Serial No. 88197150
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any application and protocol, reduces business risk, and
simplifies IT infrastructure.
Protection for private applications: Ensure that
applications hosted in public and private cloud are never
exposed to the Internet. Avoid the brand damage, fines,
and remediation costs associated with private application
breaches.
Netskope Private Access is a cloud-based zero-trust
network access solution that provides fast and secure
access to private applications that are hosted in public
clouds or enterprise data centers.
Contrary to Applicant’s statement that “[t]he Examining Attorney did not provide
any evidence of the phrase PRIVATE ACCESS at all,”16 the Wandera and Netskope
websites excerpted above show third-party use of “private access” in connection with
cloud computing services featuring secure access to private applications and network
resources – that is, in the same context as Applicant’s services. Further, Applicant
describes its own service with much of the same language that Wandera and
Netskope use to describe their services. For example:
Zscaler Private Access (ZPA) is a cloud service from Zscaler
that provides zero trust, secure remote access to internal
applications running on cloud or date center. With ZPA,
applications are never exposed to the internet, making
them completely invisible to unauthorized users.17
Zscaler Private Access delivers policy-based, secure access
to private applications and assets without the cost, hassle,
or security risks of a VPN. *** Access to private apps from
anywhere.18

16 13 TTABVUE 9.
17 November 16, 2018 Specimen TSDR 2.
18 June 18, 2019 Specimen TSDR 3, 4.
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Internet evidence of third-party websites, an applicant’s specimen, and an
applicant’s own online use may be offered as evidence of descriptiveness. See N.C.
Lottery, 123 USPQ2d at 1710; Omniome, Inc., 2020 USPQ2d 3222 at *4; In re Promo
Ink, 78 USPQ2d 1301, 1303 (TTAB 2006). Here, the third-party evidence, and
Applicant’s own use, demonstrate the context in which PRIVATE ACCESS is used,
and the possible significance that term would have to the average consumer of cloud
computing services featuring secure access to applications and network resources.
Based on the dictionary definitions and websites, the Examining Attorney argues
that “the term [PRIVATE ACCESS] immediately indicates that the broadly identified
[cloud computing service featuring] software [for use in policy-based, secure access to
private applications and network resources] provides consumers with a means to
open their private or restricted software applications.” Particularly, “the wording
‘PRIVATE ACCESS’ would . . . immediately indicate that [Applicant’s] software
features the ability to open or load software restricted to a particular person or
group.”19 We agree. The combined term PRIVATE ACCESS does not convey a
distinctive source-identifying impression contrary to the descriptiveness of the
individual words PRIVATE and ACCESS.
Applicant’s lead argument against the disclaimer requirement is that “PRIVATE
ACCESS, by itself, is often used to describe an entry point to a real property location,

19 15 TTABVUE 6-7.
Serial No. 88197150
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such as a beach, office, condominium, or club.”20 Applicant further contends that
“[t]he phrase PRIVATE ACCESS does not result in immediate recognition of ‘cloud
computing featuring software for use in policy-based, secure access to the private
applications and network resources.’”21 However, as indicated above, the question is
not whether someone presented with only the mark could guess what the services
are; rather, the question is whether someone who knows what the services are will
understand PRIVATE ACCESS to convey information about them. See DuoProSS,
103 USPQ2d at 1757. Therefore, the question of descriptiveness is evaluated in
relation to Applicant’s cloud computing services, and not “by itself” (i.e., in the
abstract) or in relation to beach access or night clubs. See Fat Boys Water Sports,
118 USPQ2d at 1513. We must “evaluate whether someone who knows what
[Applicant’s services] are will understand the [term PRIVATE ACCESS] to convey
information about them.” Id. (citing DuoProSS, 103 USPQ2d at 1757).
As a final argument, Applicant asserts that its mark ZSCALER PRIVATE
ACCESS is unitary because it is incongruous. Applicant posits that because the
“meaning [of] PRIVATE is commonly used in association with a real property location
or structure, such as a park or house,” and “[t]he most common definition for
ACCESS” involves “a place,” the mark ZSCALER PRIVATE ACCESS becomes
“incongruous as the average consumer understands they would not be granted access

20 13 TTABVUE 7, citing californiabeaches.com and nextcity.org (using “private access” in
connection with beaches) and platformsnightclub.com (using “private access” in connection
with a night club), attached to the July 7, 2020 Request for Reconsideration TSDR 12-39.
21 13 TTABVUE 8.
Serial No. 88197150
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to an entry point to a real property location or structure, such as a beach, office,
condominium, or club.” “Applicant’s mark uses wordplay and ambiguity to create
numerous possible meanings and interpretations. As such, the mark is a unitary
whole.”22 We are not convinced by this argument.
The test for what constitutes a unitary phrase involves an inquiry into whether
the elements of a mark, or portion thereof, are so integrated or merged together that
they cannot be regarded as separable. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB
1983); In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981). A focus is placed
on “how the average purchaser would encounter the mark under normal marketing
of such [services] and also . . . what the reaction of the average purchaser would be to
this display of the mark.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21
USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184
USPQ 125, 126 (TTAB 1974)). The Court of Appeals for the Federal Circuit has set
forth the elements of a unitary mark:
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a unitary
mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own
independent of the meaning of its constituent elements. In
other words, a unitary mark must create a single and
distinct commercial impression.
Dena Corp., 21 USPQ2d at 1052.
Even assuming for purposes of Applicant’s final argument that the term PUBLIC
ACCESS is itself unitary, we find that ZSCALER PRIVATE ACCESS is not a unitary

22 13 TTABVUE 11, 12.
Serial No. 88197150
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term in the context of the identified services. There is no definition or evidence of
third-party use of ZSCALER in the record, nor does Applicant otherwise address the
meaning of the term ZSCALER or explain how that term is part of a unitary whole
when it precedes the term PUBLIC ACCESS. There is no evidence in the record
showing that consumers would view the term ZSCALER as being so incompatible in
meaning with PRIVATE ACCESS or their combination as so bizarre or
counterintuitive as to create the impression of a noticeable incongruity.
Based on the record as a whole, including the dictionary definitions, third-party
websites, and Applicant’s website and specimens, we find that the Examining
Attorney established prima facie that the term PRIVATE ACCESS is merely
descriptive of Applicant’s cloud computing services. Neither Applicant’s beach- or
night club-related evidence nor its arguments in response to this showing rebut the
prima facie descriptiveness of the term.
III. Decision
The refusal to register Applicant’s mark ZSCALER PRIVATE ACCESS based on
the requirement, made under Trademark Act § 6(a), for a disclaimer of the wording
PRIVATE ACCESS is affirmed. However, if Applicant submits a disclaimer of
PRIVATE ACCESS to the Board within thirty days of the mailing date of this
decision, the requirement for the disclaimer will have been met and the application
will proceed. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); TBMP § 1218 (2020). The
disclaimer should read as follows: “No claim is made to the exclusive right to use
PRIVATE ACCESS apart from the mark as shown.”