Brand Institute, Inc.

Trademark Trial and Appeal Board

Oct 13, 2000

No. 74656196 (T.T.A.B. Oct. 13, 2000)

Paper No. 25
HRW
10/13/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Brand Institute, Inc.
________
Serial No. 74/656,196
_______
Jay H. Begler of Buchanan Ingersoll PC for Brand Institute,
Inc.
Hannah Fisher, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Hanak, Wendel and Holtzman, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Brand Institute, Inc. has filed an application to
register the mark BRANDSEARCH for “trademark screening
services.”1
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)
of the Trademark Act. Applicant and the Examining Attorney

1 Serial No. 74/656,196, filed April 5, 1995, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
Ser No. 74/656,196
2
have filed briefs. An oral hearing was scheduled several
times but finally waived by applicant.
The Examining Attorney maintains that the designation
BRANDSEARCH merely describes the subject matter and nature
of applicant’s trademark screening services. As support
for her position, the Examining Attorney has made of record
a listing in Roget’s International Thesaurus showing use of
the term “brand” as a synonym for “mark,” an entry from the
Office information directory showing that the areas in the
Office for screening or examining existing trademarks and
patents are called “search” facilities, and several Nexis
excerpts showing third-party use of the term “brand search”
in a generic manner. In her brief, she referred
additionally to dictionary definitions for “brand” as “a
trademark or distinctive name identifying a product...” and
for “search” as “to look over carefully in order to find
something.”2
Applicant argues that the phrase BRANDSEARCH is the
coupling of two ordinary words which, although suggestive,
does not merely describe or convey the essence of
applicant’s services. Applicant insists that the consumer,

2 Inasmuch as we may take judicial notice of dictionary
definitions, we have considered these definitions, even though
not earlier made of record by the Examining Attorney.
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3
upon seeing the mark BRANDSEARCH would not know exactly
what applicant’s services consist of without further
description; that imagination would be required to reach a
conclusion as to the nature of applicant’s services.
Applicant further argues that competitors will be fully
able to describe their services without the use of the term
BRANDSEARCH and that in fact applicant cannot preempt
others from using either “brand” or “search” per se.
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
or services with which it is being used. Whether or not a
particular term is merely descriptive is not determined in
the abstract, but rather in relation to the goods or
services for which registration is sought, the context in
which the designation is being used, and the significance
the designation is likely to have, because of the manner in
which it is used, to the average purchaser as he encounters
the goods or services bearing the designation. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978).
We find the evidence made of record by the Examining
Attorney fully adequate to establish that the designation
BRANDSEARCH is merely descriptive of the trademark
Ser No. 74/656,196
4
screening services of applicant. Both the thesaurus
reference and the dictionary definition show the
equivalence of the terms “brand” and “trademark.” The
Office information directory demonstrates use of the term
“search” in reference to the review of trademark records,
i. e. the Trademark Search Branch. Even if potential
purchasers of applicant’s services are not aware of this
use of the term “search” in the trademark vernacular, we
believe the descriptive significance of the term in its
ordinary dictionary meaning would be readily apparent, when
used in connection with a screening process which would
necessarily involve the review and examination of existing
trademarks.3 We fail to see where any mental gymnastics or
even imagination would be required in order to make an
association between the designation BRANDSEARCH and the
services which applicant intends to offer under this
designation. The many cases cited by applicant involving
suggestive marks are irrelevant to our determination to the
descriptiveness of this particular designation when used
with these particular services.

3 We take judicial notice of the following definitions found in
Webster’s Third New International Dictionary (1993)
screen 4 b(1) to examine usu. methodically in order
to make a separation into different groups;
(3) to select by a screening process;
(4) to eliminate by or as if by a screening
process.
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5
Moreover, as has frequently been pointed out by the
Board and our reviewing court, the descriptiveness of a
mark is not determined in the abstract, but rather as used
in connection with the particular services at issue. The
question is not what the significance of the designation
BRANDSEARCH is per se, but what the significance is when
used in connection with a trademark screening (brand
searching) operation. The descriptiveness is obvious.
Furthermore, the mere joinder of the two words “brand” and
“search” is clearly insufficient to avoid the proscription
of Section 2(e)(1), so long as the combined term is likely
to be perceived by purchasers as the equivalent of the
separate terms, as is the case here. See In re State
Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985) and
the cases cited therein.
Although applicant argues that competitors will be
adequately able to describe their similar services by using
other terms, this does not overcome the fact that
BRANDSEARCH is a descriptive designation which should be
available for all to use, in the absence of any showing of
acquired distinctiveness. Although it is unclear from the
severely excerpted Nexis articles made of record by the
Examining Attorney as to the exact manner of use of the
phrase “brand search” in these articles, it is at least
Ser No. 74/656,196
6
evident that the phrase is a recognized term in the field
of trademarks. As such, it should be available for use by
all in any manner which is descriptive, which obviously
would not be the case if applicant were permitted to
register the joined term BRANDSEARCH.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
E. W. Hanak
H. R. Wendel
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board

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