Cooperative Educational Service Agency No. 6

Trademark Trial and Appeal Board

Mar 18, 2015

No. 85919158 (T.T.A.B. Mar. 18, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cooperative Educational Service Agency No. 6
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Serial No. 85919158
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Joseph S. Heino of Davis & Kuelthau, S.C.,
for Cooperative Educational Service Agency No. 6.
Dominic Ferraiuolo, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Quinn, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Cooperative Educational Service Agency No. 6 (“Applicant”) seeks registration
on the Principal Register of the mark CALENDAR4SCHOOLS (in standard
characters) for “computer software that provides web-based access to applications
and services through a web operating system or portal interface,” in Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on

1 Application Serial No. 85919158 was filed on April 30, 2013, under Section 1(a) of the
Trademark Act of 1946, 15 U.S.C. § 1052(a), based upon Applicant’s claimed use of its mark
anywhere and in commerce at least as early June 2009.
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the ground that Applicant’s mark CALENDAR4SCHOOLS merely describes
calendar software applications designed for use by schools.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.
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,
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

2 Trademark Examining Attorney’s Brief, p. 3 [unnumbered].
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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 products listed in the description of goods. Rather, the question is
whether someone who knows what the goods are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
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).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
538, 543 (1920). See also In re Tower Tech, Inc., 64 USPQ2d at 1318
(SMARTTOWER merely descriptive of commercial and industrial cooling towers);
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In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer programs for use in developing and deploying application
programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of news and information services in the
food processing industry). However, a mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a unique, non-descriptive meaning, or if the composite has a bizarre or
incongruous meaning as applied to the goods or services. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery
products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow
removal hand tool having a handle with a snow-removing head at one end, the head
being of solid uninterrupted construction without prongs”).
“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 at 364-365; In re
Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
The word “calendar” is defined, inter alia, as follows:
1. a table or register with the days of each month and
week in a year;
2. any of various systems of reckoning time, especially
with reference to the beginning, length, and divisions of
the year;
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3. a list or register, especially one arranged
chronologically, as of appointments, work to be done, or
cases to be tried in court.3
As its specimen of use, Applicant submitted a document it identified as “product
use instructions.” The first page of the instructions is shown below:

3 Dictionary.com derived from the RANDOM HOUSE DICTIONARY (2015).
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During the prosecution of the application, Applicant submitted a copy of an
excerpt from its website.4 Shown below is an excerpt from Applicant’s “Web
Applications” webpage:

At the outset, we must consider that Applicant's mark, presented in standard
character form, is not limited to any special form or style as displayed in connection
with its software.5 See Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971) (“The drawing in the instant application shows the mark
typed in capital letters, and … this means that [the] application is not limited to the
mark depicted in any special form.”). See also Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not
limited to any particular rendition of the mark); and INB National Bank v.
Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992). Although as indicated by its
specimen of use and “Web Applications” webpage, Applicant’s mark is displayed in
upper and lower case letters as Calendar4Schools creating a visual separation
between the terms, it is clear from our precedents that when a mark is presented in

4 February 7, 2014 Response to Office Action.
5 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (January 2015).
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standard character form, the Board must consider all manners in which Applicant
could depict its mark.6
Thus, Applicant’s mark CALENDAR4SCHOOLS is a compressed version of
CALENDAR 4 SCHOOLS without a space between the terms. It is clear from the
way Applicant displays its mark CALENDAR4SCHOOLS that Applicant intends to
engender the commercial impression that its mark refers to a software application
for creating calendars designed for use in schools. The combination of the terms
“CALENDAR,” “4,” and “SCHOOLS” to form Applicant’s mark does not evoke a new
and unique commercial impression. Numerous cases have held that telescoping two
words which as a whole are merely descriptive of the goods or services into a single
term does not avoid a finding of mere descriptiveness for the combined term. See,
for example, In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987) (FIRSTIER, the equivalent of “first tier,” is merely descriptive of banking
services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897, n.2 (TTAB 2001)
(“the compound term RUSSIANART is as merely descriptive as its constituent
words, ‘Russian art.’”); In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985)
(SUPEROPE merely descriptive of wire rope); In re Gagliardi Bros., Inc., 218 USPQ
181 (TTAB 1983) (BEEFLAKES is merely descriptive of thinly sliced beef); and In
re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED is merely
descriptive of jellies and jams). In this case, Applicant has telescoped three terms
instead of two, but the legal analysis remains the same.

6 In addition, the specimen features a screen shot that displays the word “Calendar” in a
different color than the term “4Schools” further differentiating the terms.
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The use of the numeral “4” in lieu of the word “For” does not turn Applicant’s
mark into a suggestive term because a slight misspelling of a word will not turn a
descriptive term into a non-descriptive mark. See Armstrong Paint & Varnish
Works v. Nu-Enamel Corp., 305 U.S. 315, 39 USPQ 402 (1938) (NU-ENAMEL; NU
found equivalent of “new”); In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ
505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is no legally
significant difference here between ‘quik’ and ‘quick’”); In re ING Direct Bancorp,
100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT
generic for direct electronic funds transfers including electronic payment services
between individuals); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding
URBANHOUZING, in standard character form, would be perceived by consumers
as the equivalent of the descriptive term URBAN HOUSING, rather than as
including the separate word ZING).
In view of the foregoing, we find that Applicant’s mark CALENDAR4SCHOOLS
used in connection with “computer software that provides web-based access to
applications and services through a web operating system or portal interface”
directly conveys to potential purchasers the nature of Applicant’s software and the
users for whom it is intended. See In re Cox Enterprises, Inc., 82 USPQ2d 1040
(TTAB 2007) (applicant's proposed mark THEATL is merely descriptive of
applicant's magazines, newspapers, and directories, since (i) at least one class of
relevant purchasers are residents of Atlanta, Georgia, and visitors to Atlanta area,
(ii) the evidence of record shows that term THE ATL would be recognized by
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Atlanta residents and visitors as nickname for Atlanta, (iii) THE ATL describes
significant feature or characteristic of applicant's publications, which will feature,
in part, news, activities, events, and attractions of interest to residents of Atlanta
and tourists and visitors, and (iv) because THEATL is simply a compressed version
of THE ATL that is equivalent in sound, meaning, and impression, it is equally
descriptive).
Applicant argues that its mark is not descriptive because
CALENDAR4SCHOOLS “does not convey an immediate impression of the goods.”7
[T]he meaning of the terms “CALENDAR” and
“SCHOOLS” are general enough that an ordinary
consumer would not generate the immediate and direct
idea of the nature of the goods which is necessary to cast
the mark as merely descriptive. … At best, the mark may
convey some sort of connection to a school-related user,
but there is no element of a computer-science nature in the
mark which would describe Applicant’s goods, namely,
computer software. An ordinary consumer simply could
not imply that the goods are computer software merely by
looking at the mark and, more importantly, knowing that
the goods are computer software, the same consumer
would not know:
● the purpose to which the software is put (i.e. what dates
are docketed and why; are the dates administrative
meeting dates, class dates, deadline dates for
accomplishing certain tasks?);
● who would use it (i.e. is this a tool for administrators,
educators, students or some combination of them?);
● who would benefit by its use (i.e. does this tool benefit
administrators, educators, students or some combination
of them?);

7 Applicant’s Brief, p. 3.
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● what type of calendar it encompasses (i.e. is this a
rolling calendar or a static calendar and how far our art
its dates projected?);
● what grade levels it applies to; and
● to what result or benefit is the tool used.
In short, the mark is still suggestive because the goods,
i.e., computer software, are still unknown to the person
seeing only the mark. Once it is known by the “reasonably
informed buyer” that the mark has something to do with
software, there are still too many questions that must be
answered in order to determine that the mark is merely
descriptive of the goods with which the mark is used.
That is, the impression given by the mark requires the
exercise of some imagination on the part of a person
perceiving the mark. Thus, because some imagination is
required, the mark is not "merely descriptive."8
First, Applicant’s mark is CALENDAR4SCHOOLS not CALENDAR SCHOOLS.
When the mark is used to identify “computer software that provides web-based
access to applications and services through a web operating system or portal
interface,” the mark in its entirety engenders the commercial impression that
Applicant’s product is a calendar software application designed for use by schools.
Second, a mark may be found to be merely descriptive if it describes a feature,
function, purpose or use of the goods or the intended user of the goods.9 The mark
CALENDAR4SCHOOLS directly imparts to potential consumers and users that the

8 Applicant’s Brief, pp. 4-5.
9 A term that identifies a group to whom the applicant directs its goods or services is merely
descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely
descriptive of risk management services in the field of pricing and purchasing natural gas);
Hunter Publ'g Co. v. Caulfield Publ'g Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER
found merely descriptive of a trade journal directed toward users of large data processing
systems); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER
held merely descriptive of retail mail-order services in the field of outdoor equipment and
apparel).
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product is a calendar software application designed to be used by schools. In this
regard, the excerpt from Applicant’s “Web Applications” webpage states that
“Calendar4Schools will allow district personnel to maintain their calendars from
one centralized system.”
Finally, the test is not whether someone can guess the goods upon seeing the
mark.10 Rather the question is whether someone who knows what the goods are will
understand the mark to convey information about them. In this case the goods are
“computer software that provides web-based access to applications and services
through a web operating system or portal interface.” That description of goods is
broad enough to encompass software for creating and maintain calendars used by
schools; Applicant’s mark directly conveys to potential customers the nature and
purpose of the goods, as well as the intended user.
Applicant further contends that “[t]here are any number of ‘4-something’ marks
that have not been deemed descriptive, including many in Int’l Class 9, which is the
same class in which the Applicant’s CALENDAR4SCHOOLS mark is applied for.
Applicant's mark should not be treated differently than currently existing
registrations.”11 Applicant’s mark is not being treated any differently than any
other application pending before the USPTO. The Board must decide each case on

10 In this case, a potential consumer could identify the nature of the goods and the intended
user from the mark alone because, as indicated above, the mark CALENDAR4SCHOOLS
directly imparts to potential consumers that the product, whatever it may be, is a calendar
software application designed to be used by schools.
11 Applicant’s Brief, p. 6. Applicant submitted copies of numerous registrations of “4-
something” marks attached to its February 7, 2014 and August 28, 2014 Responses to
Office Actions.
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its own merits. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227
USPQ 417, 424 (Fed. Cir. 1985). Even if some prior registrations had some
characteristics similar to Applicant’s mark, the PTO's allowance of such prior
registrations does not bind the Board. In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). In this case, while the record contains many
prior registrations that include the “4 something” formative, these registrations do
not conclusively prove that the mark CALENDAR4SCHOOLS, in its entirety, is not
merely descriptive.
Decision: The refusal to register Applicant’s mark CALENDAR4SCHOOLS is
affirmed.