Calendarrules.Com, LLC

Trademark Trial and Appeal Board

Aug 9, 2019

87563215 (T.T.A.B. Aug. 9, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Calendarrules.Com, LLC
_____

Serial No. 87563215
_____

Christian W. Liedtke of Acuminis PC,
for Calendarrules.Com, LLC.
Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Heasley, Larkin, and Hudis,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Calendarrules.Com, LLC (“Applicant”) seeks registration on the Principal
Register of the proposed mark DOCKETLAW in standard characters for “software as
a service (SAAS) services featuring software for information distribution, automating
business processes, resource planning, information management, use in database
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management, use in syncing data, data storage, control and transmission,” in
International Class 42.1
The Trademark Examining Attorney refused registration of Applicant’s proposed
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that it is merely descriptive of the services identified in the application. When
the Examining Attorney made the refusal final, Applicant appealed and requested
reconsideration, 4 TTABVUE,2 which was denied. 5 TTABVUE. The appeal is fully
briefed. We affirm the refusal to register.
I. Record on Appeal
The record on appeal includes dictionary definitions of the words “docket” and
“law,” made of record by both the Examining Attorney,3 and Applicant;4 pages from
the websites of the AMERICAN HERITAGE DICTIONARY, the OXFORD DICTIONARIES,
YOURDICTIONARY, and Vocabulary.com, showing the absence of a dictionary

1 Application Serial No. 87563215 was filed on August 10, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce.
2 Citations in this opinion to the briefs and the reconsideration request refer to TTABVUE,
the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
3 November 14, 2017 Office Action at TSDR 2; June 12, 2018 Final Office Action at TSDR 2-
8; 5 TTABVUE 9-10 (December 28, 2018 Denial of Request for Reconsideration). All citations
in this opinion to the application record are to pages in the Trademark Status & Document
Retrieval (TSDR) database of the United States Patent and Trademark Office (USPTO).
4 May 13, 2018 Response to Office Action at TSDR 26-34; 4 TTABVUE 24-34 (December 7,
2018 Request for Reconsideration).
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definition of “docketlaw,” made of record by Applicant;5 pages from Applicant’s
website at calendarrules.com, made of record by the Examining Attorney;6 and pages
from the USPTO’s Trademark Electronic Search System (TESS) database regarding
third-party registrations of marks containing the words “DOCKET” or “LAW,” made
of record by Applicant.7
II. Analysis of Mere Descriptiveness Refusal
A. Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
A mark is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of 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 Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark 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

5 4 TTABVUE 12-23 (December 7, 2018 Request for Reconsideration).
6 November 14, 2017 Office Action at TSDR 3-4; 5 TTABVUE 11-17 (December 28, 2018
Denial of Request for Reconsideration).
7 May 13, 2018 Response to Office Action at TSDR 39-86.
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USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)).
Whether a mark 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 being used, and the possible significance that 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, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978)). We ask “‘whether someone who knows what
the goods and services are will understand the mark to convey information about
them.’” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d
1370, 1374 (Fed. Cir. 2018) (quoting DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (internal quotation
omitted)). A mark 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 mark. See, e.g., Fat Boys, 118
USPQ2d at 1515.
We “must consider the commercial impression of a mark as a whole,’ ‘viewed
through the eyes of a consumer.’” Real Foods, 128 USPQ2d at 1374 (quoting
DuoProSS, 103 USPQ2d at 1757 (citation omitted)). Applicant’s proposed mark
DOCKETLAW combines two words. “In considering [a] mark as a whole, [we] ‘may
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not dissect the mark into isolated elements,’ without ‘consider[ing] . . . the entire
mark,’” Real Foods, 128 USPQ2d at 1374 (quoting DuoProSS, 103 USPQ2d at 1757),
but we “‘may weigh the individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its various components.’” Id.
(quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed.
Cir. 2004)). Indeed, we are “required to examine the meaning of each component
individually, and then determine whether the mark as a whole is merely descriptive.”
DuoProSS, 103 USPQ2d at 1758.
If the words DOCKET and LAW in the proposed mark are individually descriptive
of the identified services, we must then determine whether their combination
“‘conveys any distinctive source-identifying impression contrary to the
descriptiveness of the individual parts.’” Fat Boys, 118 USPQ2d at 1515-16 (quoting
Oppedahl & Larson, 71 USPQ2d at 1372). If each word instead “retains its merely
descriptive significance in relation to the goods, the combination results in a
composite that is itself merely descriptive.” Id. 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).
“‘Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listing in
dictionaries, trade journals, newspapers[,] and other publications.’” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
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publications and use ‘in labels, packages, or in advertising material directed to the
goods [or services].’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200
USPQ at 218).
B. Applicant’s and the Examining Attorney’s Arguments
1. Applicant
Applicant’s fundamental argument in its main brief is that the “Examining
Attorney did not use the Board’s standard three-prong test to determine whether
DOCKETLAW is merely descriptive.” 10 TTABVUE 4 (citing No Nonsense Fashions,
Inc. v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985)). According to
Applicant:
Pursuant to this test, a mark is descriptive if it: A. conveys
to consumers an immediate idea of the ingredients,
qualities or characteristics of the goods or services; B. has
been used so frequently by others that consumers are
unlikely to perceive the term when used in the manner of
a trademark as indicating source or origin; or C. deprives
competitors of an apt description of their goods.
Id. at 4-5 (citing No Nonsense Fashions, 226 USPQ at 507). Applying this “standard
three-prong test,” Applicant’s main brief includes lengthy sections entitled “Under
the Degree of Imagination Test, Applicant’s DOCKETLAW Trademark is
Suggestive,” id. at 5-13, “Under the Competitive Use Test, Applicant’s DOCKETLAW
Trademark is Suggestive,” id. at 13-14, and “Under the Competitors’ Need Test,
Applicant’s DOCKETLAW Trademark is Suggestive.” Id. at 14-17. Applicant
“submits that when applying these tests here it is clear that the Examining Attorney
has not met her burden of showing that DOCKETLAW is merely descriptive of the
goods and services identified in the subject Application.” Id. at 5. Applicant’s reply
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brief similarly criticizes the Examining Attorney for her “failure to analyze the
DOCKETLAW mark pursuant to the correct standards.” 13 TTABVUE 2.
It is Applicant, however, who has failed “to analyze the DOCKETLAW mark
pursuant to the correct standards.” Id. “The three-part test described in No Nonsense
Fashions has been superseded in the Federal Circuit by the rule . . . enunciated in In
re Gyulay, 3 USPQ2d 1009, In re Chamber of Commerce of the U.S., 102 USPQ2d
1217, and DuoProSS, 103 USPQ2d 1753; see In re Carlson, 91 USPQ2d 1198, 1203
(TTAB 2009) (rejecting the tests set out in No Nonsense Fashions). . . .” Fat Boys, 118
USPQ2d at 1514. “The correct test is whether the phrase forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or
use of the goods [or services].” Id. Applicant only notes a variant of this test in a
passing reference to a treatise. 10 TTABVUE 6 (citing S. Kane, KANE ON TRADEMARK
LAW A PRACTITIONER’S GUIDE § 2:1.1 (6th ed. 2016)). Applicant never mentions the
Federal Circuit’s controlling Gyulay, Chamber of Commerce, and DuoProSS cases
setting forth “the rule that we apply here.” Fat Boys, 118 USPQ2d at 1514.8
Because Applicant applies the wrong test, many of its arguments fail as a matter
of law, particularly its arguments that “the Examining Attorney has not provided an

8 Applicant also incorrectly describes the Examining Attorney’s burden of proof. Applicant
cites In re Kopy Kat, Inc., 498 F.2d 1379, 182 USPQ 372 (CCPA 1974), for the proposition
that “the Examining Attorney must make a substantial showing based on clear evidence of
descriptive use,” 10 TTABVUE 17, but Kopy Kat says no such thing and there is no such
requirement. A “clear evidence” standard applies in genericness cases, not descriptiveness
cases. See, e.g., Mecca Grade Growers, 125 USPQ2d at 1952-56 (applying “clear and
convincing evidence” standard on abandonment refusal, but not on descriptiveness refusal)
(citations omitted). In descriptiveness cases, “[i]t is the Examining Attorney’s burden to show,
prima facie, that a mark is merely descriptive of an applicant’s goods or services.” Fat Boys,
118 USPQ2d at 1513 (citing Gyulay, 3 USPQ2d at 1010).
Serial No. 87563215
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iota of evidence showing that anyone other than Applicant (who does so in a source
identifying manner) uses the term DOCKETLAW for anything, let alone the goods and
services at issue,” 10 TTABVUE 13, and that the Examining Attorney “has also not
shown that competitors need to use the DOCKETLAW trademark.” Id. at 15.
“Under the current standard, there is no requirement that the Examining
Attorney prove that others have used the mark at issue or that they need to use it,
although such proof would be highly relevant to an analysis under Section 2(e)(1).”
Fat Boys, 118 USPQ2d at 1514. The “fact that Applicant may be the first or only user
of [DOCKETLAW] does not render that term distinctive, if it otherwise meets the
standard [for descriptiveness] set forth in In re Gyulay, In re Chamber of Commerce,
and DuoProSS.” Id. To the extent that Applicant’s other arguments may be relevant
under the correct test for descriptiveness, we will address them in our analysis below.
2. Examining Attorney
The Examining Attorney argues that “the applied-for mark merely describes a
feature or function of applicant’s services.” 12 TTABVUE 3. She points to dictionary
definitions of the word “docket,” which she contends “merely describes a feature or
function of applicant’s software services, that is, applicant’s software can be used for
managing, storing, distributing and transmitting contents of a document, a schedule
or dockets,” id. at 4, and of the word “law,” which she contends makes LAW merely
descriptive of Applicant’s services “because it describes the subject matter or field of
applicant’s services.” Id. She argues that “the composite result of the applied-for
mark, is also merely descriptive of applicant’s services because the mark merely
Serial No. 87563215
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describes the function of applicant’s software services that features software for use
in managing dockets in the field of law,” id., and the words together in the mark “do
not create a unique, incongruous, or nondescriptive meaning in relation to the
services.” Id. at 5.
The Examining Attorney points to Applicant’s website, which she claims “shows
that applicant’s ‘DOCKETLAW’ software is a tool that provides docket calculators
and date calculators, and that applicant’s software services enables [sic] users to
search various courts and specific trials within the selected court to access court rules
and read event summaries about trials.” Id. She argues that the “significance of the
terms ‘DOCKET’ and ‘LAW’ with respect to applicant’s docketing software would be
obvious to its purchasers, who would know that their use of the software is for
managing dockets in the field of law or obtaining court or trial information.” Id.
C. Discussion of Mere Descriptiveness
As discussed above, in analyzing descriptiveness we “must consider a mark in its
commercial context to determine the public’s perception,” N.C. Lottery, 123 USPQ2d
at 1709 (internal quotation omitted), and we may look to Applicant’s actual use of the
DOCKETLAW mark on the pages from Applicant’s website that are in the record. Id.
at 1709-10.9 We reproduce below pages from Applicant’s website regarding the
DOCKETLAW SAAS services:

9 Applicant argues that reliance on its website is misplaced because “the subject application
was made pursuant to Section 1(b) of the Lanham Act,” 10 TTABVUE 11, but we may
consider Applicant’s actual use of the proposed mark, which reflects the mark in its
“commercial context,” N.C. Lottery, 123 USPQ2d at 1709, even though Applicant’s intent-to-
use application was not amended to allege use prior to the filing of this appeal.
Serial No. 87563215
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10

10 5 TTABVUE 11-12 (December 28, 2018 Denial of Request for Reconsideration). Applicant
suggests in its main brief that we should determine the descriptiveness of DOCKETLAW in
all capital letters rather than as the mark is displayed on Applicant’s website as
“DocketLaw.” 10 TTABVUE 11 (“the Examining Attorney’s reliance on the alleged
capitalization of the letters D and L in the subject trademark as currently used is misplaced”
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We reproduce below a close-up view of the mobile phone depicted on the DocketLaw
page:

11

because “the trademark application in issue here is a standard character mark”). It is
Applicant’s argument that is misplaced because Applicant “may use both uppercase and
lowercase letters” in displaying the standard character DOCKETLAW mark, Trademark
Manual of Examining Procedure (TMEP) Section 807.03(a) (Oct. 2018) (citing Trademark
Rule 2.52(a), 37 C.F.R. Section 2.52(a)), in the manner in which it has displayed the mark in
use.
11 Id. at 12. The images from Applicant’s website that are in the record do not have sharp
resolution, so our reproductions of them are also somewhat blurry.
Serial No. 87563215
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Applicant uses the proposed DOCKETLAW mark in a manner that is consistent
with the dictionary meanings of each of the two words in the mark. The noun “docket”
means, inter alia, a “schedule of things to be done,”12 and an “agenda or list of things
to be done,”13 while the verb “docket” means, inter alia, “to enter in a court calendar
or in a record of court proceedings,”14 and to “make an entry in a docket.”15 The word
“law” means, inter alia, an “individual rule as part of a system of law,” and “systems
of laws as subject of study or as the basis of the legal profession.”16
Applicant argues that DOCKETLAW “evokes many different associations none of
which give away anything about the services in connection with which Applicant’s
mark is intended to be used.” 10 TTABVUE 9. To the extent that Applicant claims
that the services cannot be identified from the mark itself, its argument is misplaced.
“[T]he question is not whether someone presented only with the mark could guess the
goods or services listed in the identification. Rather, the question is whether someone
who knows what the goods and services are will understand the mark to convey
information about them.” Mecca Grade Growers, 125 USPQ2d at 1953. Applicant
acknowledges in any event that “[t]he word ‘docket,’ as would be understood in the
context of legal services, could refer to either the verb form: to ‘enter (a case or suit)

12 June 12, 2018 Office Action at TSDR 6 (YOURDICTIONARY.COM).
13 Id. at TSDR 2 (ENGLISH OXFORD LIVING DICTIONARIES (oxforddictionaries.com)).
14 November 14, 2017 Office Action at TSDR 2 (AMERICAN HERITAGE DICTIONARY
(ahdictionary.com)).
15 June 12, 2018 Office Action at TSDR 6 (YOURDICTIONARY.COM).
16 5 TTABVUE 9 (December 28, 2018 Denial of Request for Reconsideration) (ENGLISH
OXFORD LIVING DICTIONARIES (oxforddictionaries.com)).
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onto a list of those to be heard,’ or the noun form: as a ‘calendar or list of cases for
trial,’” while the “word ‘law’ would be understood to be a[n] ‘individual rule as part of
a system of law.’” 13 TTABVUE at 5. Applicant’s use of DOCKETLAW makes it clear
that “in the context of legal services,” id., the SAAS services offered under the mark
generate personal “court calendars,” or “schedules of things to be done” in lawsuits,
comprising deadlines and dates calculated by the software application based on the
rules of the courts in which the lawsuits are pending. The combination of DOCKET
and LAW in DOCKETLAW thus describes the function of the SAAS services, namely,
to enable legal professionals to docket rules-based deadlines and dates in lawsuits in
which they are involved, and to display the resulting dockets on their mobile phones.
“The commercial context here demonstrates that a consumer would immediately
understand the intended meaning of [DOCKETLAW].” N.C. Lottery, 123 USPQ2d at
1710.
Applicant argues that a “word or expression capable of more than one
interpretation is a ‘double entendre,’” 10 TTABVUE 8, but Section 1213.05(c) of the
TMEP, cited by Applicant, 10 TTABVUE 9, defines a double entendre “[f]or
trademark purposes [as] an expression that has a double connotation or significance
as applied to the goods or services.” “‘The multiple interpretations that mark an
expression a ‘double entendre’ must be associations that the public would make fairly
readily, and must be readily apparent from the mark itself.’” In re Calphalon Corp.,
122 USPQ2d 1153, 1163 (TTAB 2017) (quoting TMEP § 1213.05(c)). The double
entendre cases cited by Applicant, 10 TTABVUE 8-9, involve marks consisting of a
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common phrase, expression, or name in American English, a clever play on words, or
both. DOCKETLAW falls into none of these categories. Applicant argues that there
is no evidence that “anyone other than Applicant . . . uses the term DOCKETLAW for
anything,” 10 TTABVUE 13, and DOCKETLAW is not a play on the words DOCKET
and LAW, but rather a merely descriptive combination of them. See Calphalon, 122
USPQ2d at 1163-64 (discussing the nature of the double entendres in four of the cases
cited by Applicant, In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA
1968) (SUGAR & SPICE for bakery goods evoked the nursery rhyme “sugar and spice
and everything nice”); In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 (TTAB
2008) (THE FARMACY for retail store services featuring natural herbs and organic
products was “a play on the natural or farm-fresh characteristics” of the goods); In re
Del. Punch Co., 186 USPQ 63, 64 (TTAB 1975) (THE SOFT PUNCH for a
noncarbonated soft drink possessed “a degree of ingenuity in its phraseology which is
evident in the double entendre it projects”); and In re National Tea Co., 144 USPQ
286, 287 (TTAB 1965) (NO BONES ABOUT IT for fresh pre-cooked ham had “a double
connotation or significance as applied to hams which might well attract the attention
of a prospective customers”)).17

17 The other cases cited by Applicant similarly involved marks that immediately evoked such
associations. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55, 60
(2d Cir. 1961) (POLY PITCHER for plastic pitchers was “reminiscent or suggestive of Molly
Pitcher of Revolutionary time”); In re Grand Metro. Foodservice Inc., 30 USPQ2d 1974 (TTAB
1994) (MUFFUNS (stylized) for mini muffins projected “a dual meaning or suggestiveness
that of muffins and of the ‘fun’ aspect of applicant’s food product”); In re Priefert Mfg. Co., 222
USPQ 731, 733 (TTAB 1984) (HAY DOLLY for self-loading trailers for hauling bales was
“reminiscent of the famous Broadway hit ‘HELLO DOLLY’”); In re Simmons Co., 189 USPQ
352, 353 (TTAB 1976) (THE HARD LINE for mattresses and bed springs connoted “an
unyielding, and therefore uncomfortable, state” inconsistent with comfortable bedding
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In addition, it does not matter that in other contexts, “the term ‘DOCKET’ can
refer to a document or label showing what jobs have been done, or a list of items to
be discussed with [sic] at a meeting, or a list of cases to be dealt with in a particular
court,” while the “term ‘LAW’ may refer to a government rule, the police, or a
principle.” 10 TTABVUE 10. See Franklin Cty. Historical Soc’y, 104 USPQ2d 1085,
1087 (TTAB 2012) (“That a term may have other meanings in different contexts is
not controlling”). As shown by Applicant’s use of DOCKETLAW, in the context of the
identified services, it has a straightforward meaning describing the function of
Applicant’s SAAS services of creating a docket of deadlines and dates in lawsuits.
Applicant also argues that DOCKETLAW “is most accurately considered
incongruous and therefore registrable.” 13 TTABVUE 4. “For purposes of Section
2(e)(1), incongruity exists, for example, where a term evokes an immediate
association with something unrelated to the goods or services,” Calphalon, 122
USPQ2d at 1163, or has a “bizarre or incongruous meaning as applied to the goods
[or services].” TMEP § 1209.03(d).18 DOCKETLAW does not evoke “an immediate

products). Applicant also cites In re Kraft, Inc., 218 USPQ 571 (TTAB 1983), and In re Happy
Baby Carrier Co., 179 USPQ 864 (TTAB 1973), 10 TTABVUE 9, but these cases did not
involve a double entendre analysis.
18 See, e.g., In re Getz Found., 227 USPQ 571, 572 (TTAB 1985) (MOUSE HOUSE for museum
services had “no realistic meaning in relation to any products or services”); In re Shutts, 217
USPQ 363, 364-65 (TTAB 1983) (SNO-RAKE for a snow removal hand tool registrable
because “the term ‘rake’ or ‘raking,’ as applied to applicant’s tool, does not readily and
immediately evoke an impression and understanding of applicant’s implement as a snow
removal device” based on dictionary definitions of “rake,” and mere descriptiveness “must
relate to general and readily recognizable word formulations and meanings, either in a
popular or technical usage context, and should not penalize coinage of hitherto unused and
somewhat incongruous word combinations whose import would not be grasped without some
measure of imagination and ‘mental pause’”); In re Tennis in the Round Inc., 199 USPQ 496,
498 (TTAB 1978) (TENNIS IN THE ROUND for providing tennis facilities evoked the phrase
Serial No. 87563215
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association with something unrelated to the goods or services,” Calphalon, 122
USPQ2d at 1163, or have a “bizarre or incongruous meaning,” when it is used for
Applicant’s SAAS services.
Applicant also claims that DOCKETLAW is not merely descriptive because it fails
to describe the services “with a ‘degree of particularity.’” 13 TTABVUE 4 (quoting
Plus Prods. v. Med. Modalities Assocs., Inc., 211 USPQ 1199, 1205 (TTAB 1981) and
citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972)). We disagree. Unlike
the term PLUS in the marks Zn-PLUS, Mn-PLUS, and CA-PLUS for nutritional
supplements in Plus Prods., which was indefinite because it connoted only
“something more,” 211 USPQ at 1205, or the mark THE LONG ONE for bread in
Gourmet Bakers, which was indefinite as to the length of the goods, 173 USPQ at 565,
DOCKETLAW is not indefinite or vague, but rather directly describes the function of
Applicant’s SAAS services in creating a docket of deadlines and dates in lawsuits.
Finally, Applicant points to 12 third-party registrations of marks containing the
words DOCKET(S), 10 TTABVUE 19-20, or LAW, id. at 21-23, in which the words
are not disclaimed. Applicant argues that these registrations “are relevant and
admissible to show a term’s meaning or the USPTO past registration practice with
regard to that term.” Id. at 24. Applicant cites Professor McCarthy’s treatise for the
proposition that “‘[t]he fact that the U.S.P.T.O. registered a number of marks

“theater in the round” and created “an incongruity because applicant’s tennis facilities are
not in fact at all analogous to those used in a ‘theater-in-the-round’” because “applicant’s
facilities do not involve a tennis court in the middle of an auditorium (or in the middle of an
arrangement of stands) with an audience seated on all sides of the court”).
Serial No. 87563215
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containing the same designation without requiring proof of secondary meaning is
some evidence that the PTO considers the designation not descriptive.’” Id. (quoting
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:20 (5th ed. 2019)).
Applicant concludes that “the fact that the USPTO already registered numerous
marks which, like Applicant’s valuable DOCKETLAW trademark, incorporate the
elements DOCKET and LAW incongruously with another element is compelling
evidence that the USPTO should do so here again.” 13 TTABVUE 11.
These registrations do not aid Applicant. “While we recognize that ‘consistency is
highly desirable,’ consistency in examination is not itself a substantive rule of
trademark law, and a desire for consistency with the decisions of prior examining
attorneys must yield to proper determinations under the Trademark Act and rules.”
In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) (quoting
In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007)). We “must
assess each mark on its own facts and record.” Id. “Third-party registrations are not
conclusive on the questions of descriptiveness,” In re theDot Commc’ns Network LLC,
101 USPQ2d 1062, 1067 (TTAB 2011), and we agree with the Examining Attorney
that the registrations here “only support that the individual terms in applicant’s
mark can be combined with other non-descriptive wording and create a mark that is
unitary and non-descriptive in relation to its goods and services.” 12 TTABVUE 8.
The USPTO “is required to examine all trademark applications for compliance
with each and every eligibility requirement,” In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1635 (Fed. Cir. 2016), and “a mark that is merely descriptive
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should not be registered on the Principal Register simply because other such marks
appear on the register.” theDot Commc’ns Network, 101 USPQ2d at 1067 (citing In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)). See also
In re Datapipe, Inc., 111 USPQ2d 1330, 1336-37 (TTAB 2014). DOCKETLAW is
merely descriptive of the services identified in the involved application, and it is thus
ineligible for registration on the Principal Register in the absence of a showing of
acquired distinctiveness.
Decision: The refusal to register is affirmed.