Broadview Networks, Inc.

Trademark Trial and Appeal Board

Jun 19, 2015

No. 86031265 (T.T.A.B. Jun. 19, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Broadview Networks, Inc.
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Serial No. 86031265
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Michael G. Crilly of the Law Offices of Michael Crilly
for Broadview Networks, Inc.
Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Seeherman, Bergsman and Goodman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Broadview Networks, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark OFFICESUITE (in standard characters) for
Providing temporary use of on-line non-downloadable
programs, namely, software and applications for voice
communications, for data communications, for email
communications, for information management, for
creating spreadsheets, for creating tables, for creating
graphs, for creating charts, for organizing and analyzing
data, for word processing, for creating and displaying
presentations, for electronic mail and instant messaging,
for calendaring and scheduling, for desktop publishing,
for project management, for customer management, for
business planning, for direct mail and business financial
Serial No. 86031265
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management, for online document collaboration, for
storage and editing services, for operating systems, for
messaging, for file sharing, for desktop management, for
task management, for address book management, for
anti-spam protection, for anti-virus protection, for
running development programs and application programs
in a common development environment, for data backup
and recovery, in International Class 42.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act of 1946, on the ground that
Applicant’s mark is merely descriptive because “consumers will understand the
term ‘OFFICESUITE’ to mean a group of software applications with particular
productivity features and functions.”2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
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,

1 Application Serial No. 86031265 was filed on August 7, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. On February 18, 2014, Applicant filed an Amendment to Allege Use, but
withdrew it on June 3, 2014. Subsequently, on June 25, 2014, Applicant filed a second
Amendment to Allege Use which was ultimately accepted. Applicant claimed first use of its
mark anywhere and in commerce on May 14, 2014.
2 9 TTABVUE 8. Applicant has devoted a section of its brief to arguing that the mark is not
generic. This was apparently due to the fact that the Examining Attorney had issued a
genericness refusal when Applicant had amended its application to the Supplemental
Register. That amendment was later withdrawn, and “mere descriptiveness” then became
the basis for refusal of the application on the Principal Register. The Examining Attorney
has made clear in her brief that mere descriptiveness is the only ground for refusal.

Serial No. 86031265
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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 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 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). This requires consideration
of the context in which the mark is used or intended to be used in connection with
those goods or services, and the possible significance that the mark would have to
the average purchaser of the goods or services in the relevant marketplace. See In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re
Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285
(TTAB 1985). The question is not whether someone presented only with the mark
could guess the activities listed in the description of services. Rather, the question is
whether someone who knows what the activities are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Serial No. 86031265
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Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
“If one must exercise mature thought or follow a multi-stage reasoning process
in order to determine what characteristics the term identifies, the term is
suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199
USPQ 496, 497 (TTAB 1978). See also In re Shutts, 217 USPQ 363. 364-365 (TTAB
1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
II. The record with analysis.
The term “Office Suite” is defined as follows:
A set of business applications with the same style of user
interface that is sold as a single product. The primary
programs are word processing, spreadsheet and
presentation graphics, although there are various options
available.3
Applicant’s description of services includes providing downloadable software for
spreadsheets, word processing, and for creating and displaying presentations and

3 TheFreeDictionary.com entry for “Office Suite” derived from the COMPUTER DESKTOP
ENCYCLOPEDIA (2013) attached to the November 27, 2013 Office Action. See also the
Wikipedia entry for “Office Suite” attached to the November 27, 2013 Office Action, the
About.com entry attached to the January 9, 2014 Office Action, the DICTIONARY OF
COMPUTING (2004) entry for “Office Software Product” attached to the August 29, 2014
Office Action, and the Gizmo Freeware website (techsupportalert.com), “Best Free Office
Suite” entry, attached to the August 29, 2014 Office Action.
Serial No. 86031265
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other applications. Accordingly, the activities in Applicant’s description of services
fall within the definition of an office suite.
In fact, Applicant’s specimen of use submitted with its June 25, 2014
Amendment to Allege Use demonstrates that Applicant’s OFFICESUITE “cloud
computing solutions” includes providing office suite software. Applicant identifies
its “Hosted Applications” as follows:

* * *

Applicant advertises its office suite applications, including word processing
(Word), spreadsheets, (Excel), and presentations (PowerPoint) as shown below:
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Applicant’s advertising is consistent with how its competitors advertise their
office suite software applications. For example, the office suite software applications
listed below are representative:
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1. Corel Office is advertised as a “sleek and simple, Microsoft-compatible office
suite.”4
Microsoft®-compatible office suite
Get Microsoft® Office-compatible word-processing,
spreadsheets and presentations software-for-less-with
Corel® Office!
* * *
A complete office suite
Corel® Office includes everything you expect in an office
suite at a fraction of the price. You get all the office tools
you need to create impressive documents, spreadsheets
and presentations.
2. SSuite Office Software (ssuitesoft.com) advertises “Office Suites for Laptops
and Surface Pro Tablets” as “[a] premium and professional office suite.”5
3. Office Suite X (office-suite-x-software.informer.com) advertises Office Suite X
as “a complete office suite offering similar features to that of its main competitor,
Microsoft Office. Designed for word processing, spreadsheets, presentations, charts,
graphs and more, it will have you covered for all office needs.”6
4. SoftMaker FreeOffice (freeoffice.com) advertises SoftMaker FreeOffice as “a
complete office suite with a word processor, a spreadsheet application, and a
presentation-graphics program.”7

4 March 18, 2014 Office Action.
5 August 29, 2014 Office Action.
6 Id.
7 Id.
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The Trademark Examining Attorney also submitted the About.com website
entry for the “Index of Popular Office Suites and Solutions.”8 Some of the
alternative office suites included, inter alia, (1) Ability Office at a “mid-range price
compared to the major office suites, for mid-range functionality,” (2) Feng Office
which is “focused on group productivity, this office suite originated in Uruguay …
has over 350,000 users,” and (3) iWork Suite, “one of the most popular office suites
among Mac users.” See also the AlternativeTo website (alternativeto.net), “Dropbox
– For Business,” posting which provides alternatives to the Microsoft Office Suite
identified as “the world’s most popular office suite.”9
Because Applicant is providing office productivity software under a single
interface and licensing it as a single product, its OFFICESUITE mark is merely
descriptive.
Applicant explains that the services offered under the OFFICESUITE mark “are
in the nature of cloud computing and specifically software-as-a-service (SaaS)
whereby Applicant’s customers access and use computer programs hosted by
Applicant.”10 Those programs include, inter alia, software for creating spreadsheets,
word processing, and presentations.11 Applicant argues that the relevant public will
not understand the term “‘officesuite’ primarily to refer to Applicant’s cloud

8 Id.
9 Id.
10 7 TTABVUE 10.
11 7 TTABVUE 11-12.
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computing services.”12 However, the Trademark Examining Attorney is not arguing
that the mark OFFICESUITE “refers” to cloud computing services; rather, the
Trademark Examining Attorney argues that OFFICESUITE describes the purpose
of the software Applicant provides through its could computing services. In this
regard, Applicant’s cloud computing services are simply the means by which
Applicant provides office suite type software applications to its customers.
Applicant is, in fact, providing an office suite group of software applications to its
customers. The term OFFICESUITE directly conveys to Applicant’s customers the
nature of the software applications provided whether through cloud computing or
some other medium.13
Applicant further contends that the term OFFICESUITE has multiple meanings
including “a group of rooms where professionals do business.”14 As noted above,
whether 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.
In re Abcor Development Corp., 200 USPQ at 218; In re Remacle, 66 USPQ2d at
1224. In the case before us, Applicant is seeking to register OFFICESUITE to

12 7 TTABVUE 20.
13 It is not necessary that a term describe all of the purposes, functions, characteristics, or
features of a product to be considered merely descriptive; it is enough if the term describes
one significant function, attribute, or property. In re Chamber of Commerce, 102 USPQ2d at
1219; In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004) (“A mark may be merely descriptive even if it does not describe the ‘full scope and
extent’ of the applicant’s goods or services,” citing In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); Gyulay, 3 USPQ2d at 1010;
In re Positec Group Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) (“[I]f the mark is descriptive
of some identified items – or even just one – the whole class of goods still may be refused by
the examiner.”).
14 7 TTABVUE 20.
Serial No. 86031265
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identify “providing temporary use of on-line non-downloadable programs, namely,
software and applications for [inter alia] creating spreadsheets, for creating tables,
for creating graphs, for creating charts, for organizing and analyzing data, for word
processing, for creating and displaying presentations.” In other words, Applicant is
using its mark OFFICESUITE to identify providing office suite software, not
providing office space where professionals do business.
In view of the foregoing, we find that Applicant’s mark OFFICE SUITE for the
services “providing temporary use of on-line non-downloadable programs, namely,
software and applications for [inter alia] creating spreadsheets, for creating tables,
for creating graphs, for creating charts, for organizing and analyzing data, for word
processing, for creating and displaying presentations” is merely descriptive.
Decision: The refusal to register Applicant’s mark OFFICESUITE is affirmed.