Careworks of Ohio, Ltd.

Trademark Trial and Appeal Board

Feb 19, 2004

No. 75940225 (T.T.A.B. Feb. 19, 2004)

Mailed: February 19, 2004
Paper No. 20
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Careworks of Ohio, Ltd.
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Serial No. 75940225
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Perry M. Chappano of Chappano Wood PLL for Careworks of
Ohio, Ltd.
Alicia P. Collins, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Careworks of Ohio, Ltd. has filed an application to
register the mark CAREWORKS TECHNOLOGIES for “computer
services in the insurance and financial fields, namely,
computer consultation, computer programming for others,
computer systems analysis, and computer network support,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75940225
2
namely, designing, analyzing, monitoring, programming and
testing of network systems.”1
Applicant has appealed the Trademark Examining
Attorney’s requirement that applicant disclaim TECHNOLOGIES
apart from the mark as shown, and her final refusal to
register the mark absent compliance with the disclaimer
requirement. Trademark Act Section 6(a), 15 U.S.C.
1056(a). Applicant and the Examining Attorney have filed
briefs. No oral hearing was requested.
It is the Examining Attorney’s position that the word
TECHNOLOGIES is merely descriptive of applicant’s services
within the meaning of Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1).
In support of her mere descriptiveness argument, the
Examining Attorney submitted a definition of the word
“technology” taken from The American Heritage Dictionary of
the English Language (3d ed. 1992):
technology: 1. a. The application of science,
especially to industrial or commercial objectives.
b. The scientific method and material used to
achieve a commercial or industrial objective.
The Examining Attorney maintains that the first
definition is most pertinent in this case. Further, the
1 Serial No. 75940225, filed on February 20, 2000, and based on a
bona fide intention to use the mark in commerce. The application
was subsequently amended to allege a date of first use anywhere
and a date of first use in commerce of February 28, 2000.
Ser No. 75940225
3
Examining Attorney made of record excerpts from the Nexis
database and printouts from the Internet that show use of
the word “technology/technologies.” The following are
representative:
With the impending breakup of Microsoft, which
is destined to be upheld on appeal, we are on the
threshold of yet another unprecedented, if not
explosive, expansion of computer programming
technology.
(The Palm Beach Post, June 19, 2000);
But the company contends that computer design
technology and new materials will make it far
different from past models.
(The Washington Post, September 10, 2000);
Some students have made the choice to seek
careers in the computer technologies field.
(www.hometech.com); and
The Coroillis Group is a publishing leader in
the computer technologies field.
(www.siggraph.org).
In addition, the Examining Attorney made of record
copies of third-party registrations for marks which include
a disclaimer of the term “technology/technologies” for
services in the computer field. Examples include
Registration No. 2,477,403 for the mark SANDBOX
TECHNOLOGIES for inter alia “computer consulting services;”
Registration No. 2,484,835 for the mark RIGHTNOW
TECHNOLOGIES for “designing, implementing and maintaining a
network web site for others which will provide interactive
Ser No. 75940225
4
customer self help;” Registration No. 2,510,550 for LANAC
TECHNOLOGY for “computer consulting services; integration
of computer systems and networks; computer programming; and
computer software design and development for others;” and
Registration No. 2,555,267 for MILAN TECHNOLOGY for
“consulting and design services in connection with computer
network connectivity hardware and software; maintenance,
repair and technical support in the field of network
connectivity hardware and software; namely, telephone
support provided to purchasers and users of computer
hardware and software.”
Finally, the Examining Attorney points to applicant’s
own description of its services at applicant’s website as
evidence of the mere descriptiveness of the term
“technologies.”
Applicant maintains that the term TECHNOLOGIES is only
suggestive of its services. Relying on the Federal
Circuit’s decision in In re Hutchinson Technology, 852 F.2d
552, 7 USPQ2d 1490 (Fed. Cir. 1988), applicant argues that
the term encompasses many different scientific fields and
is simply too broad and vague to be descriptive of
applicant’s particular services. Applicant submitted
definitions of the word “technology” taken from several
Ser No. 75940225
5
dictionaries to show that technology may relate to
different scientific fields.
In determining whether TECHNOLOGIES is merely
descriptive of applicant’s recited services, and therefore
must be disclaimed, we apply the following legal
principles. A term is deemed to be merely descriptive of
goods or services within the meaning of Section 2(e)(1) of
the Trademark Act, if it forthwith conveys an immediate
idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchasers of the goods or services because of the manner
Ser No. 75940225
6
of its use. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979).
We have carefully considered the evidence of record
and the arguments made by applicant and the Trademark
Examining Attorney, and we conclude that TECHNOLOGIES is
merely descriptive as applied to applicant’s services, and
that it therefore must be disclaimed. We are aware that
“technology” is a very broad term which may include many
categories of goods/services. Unlike in the Hutchinson
case, the evidence of record establishes that TECHNOLOGIES
merely describes a feature or characteristic of applicant’s
services, i.e., that applicant’s services involve the use
of computer science in the insurance and financial fields.
The dictionary definition of “technology” supports this
conclusion, as do the Nexis excerpts and Internet printouts
which refer to computer programming technology, computer
design techgnology, and the computer technologies field.
Further, we note that applicant describes its services
at its website in the following manner:
We provide professional resources to design,
analyze, program, test and support software and
network systems. CareWorks IT staffing work
with you to bridge technologies to meet your
computer needs.
…….
Two solid years of research and development
helped CareWorks unify all of the necessary
Ser No. 75940225
7
components for successful medical case
management into one integrated system. In
fact, CareWorks has created a technology
model for Ohio’s MCO Industry. (emphasis
added)
Additionally, the above-referenced third-party
registrations for similar services in which the registrants
have disclaimed TECHNOLOGY/TECHNOLOGIES, although not
conclusive evidence, are probative evidence of mere
descriptiveness at least to the extent that they may
suggest that TECHNOLOGY/TECHNOLOGIES has been deemed and/or
acknowleged to be not inherently distinctive by the Office
and/or by the prior registrants.
In view of the foregoing, we find that TECHNOLOGIES is
merely descriptive of applicant’s recited services and that
the Examining Attorney’s disclaimer requirement is proper.
Decision: The requirement for a disclaimer of
TECHNOLOGIES, and the refusal of registration based on
applicant’s failure to submit such a disclaimer, are
affirmed. However, in the event that applicant submits the
required disclaimer within thirty days of the date of this
decision, the refusal to register will be set aside, the
disclaimer will be entered, and the application will
proceed to publication.