Cooperative Educational Service Agency No. 6

Trademark Trial and Appeal Board

Mar 18, 2015

No. 85905178 (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
_____

Trademark Trial and Appeal Board
_____

In re Cooperative Educational Service Agency No. 6
_____

Serial No. 85905178
_____

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 WEBOFFICE4SCHOOLS (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. 85905178 was filed on April 16, 2013, based upon Applicant’s bona
fide intent to use the mark pursuant to Section 1(b) of the Trademark Act of 1946, 15
U.S.C. § 1052(b).
Serial No. 85905178
- 2 -

the ground that Applicant’s mark WEBOFFICE4SCHOOLS merely describes “web
office software for use by and in 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].
Serial No. 85905178
- 3 -

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);
Serial No. 85905178
- 4 -

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 Trademark Examining Attorney contends that the evidence submitted with
his August 7, 2013 Office Action, listed below, “shows that ‘web office software’ is a
type of software used for a web [sic] applications, such as accessing online office
Serial No. 85905178
- 5 -

applications and functions, such as word processing and spreadsheets.”3 The
following are examples of how the term is used by third parties:
1. Trends I’m Watching website (trendsimwatching.com)
“Web-based office software”
Trend: Software as a service is about to become much
more visible as web-based office software (word
processing, spreadsheet, and presentation applications)
become functional and available.
* * *
Collaboration
That’s a key point – that office tools on the Web are about
enabling users to more easily share information and
collaborate.
* * *
Another positive for Web-based office software is that it
makes integrating with other web-based software easier,
via open Web standards and formats.
* * *
Productivity
Business decision makers are interested in productivity –
and – Web Office software potentially increases that.
2. Filesland.com website
This website lists the functions of “Web Office Software,” including “create web
site,” “paperless office,” and “browser-based web editor.” It also lists what are
presumably web office software systems such as “Able Web OfficeView,” “GRCLive,”
and “Able OfficeView Pro.”

3 Trademark Examining Attorney’s Brief, p. 3 [unnumbered].
Serial No. 85905178
- 6 -

3. BZWB Web Office Software v2.7 website (atbcode.com)
This website introduces Version 2.7 of the BZWB Web Office Software.
According to the introduction, “[u]sers can see all the information on the home page,
such as personal messages, notifications, the backlog of work, personal attendance,
returned check information, and so on. Along with simple and practical applications
for a variety of personal, SMS, personal calendars, personal address books, personal
arrangements, such as modules.
As part of its February 7, 2014 Response to an Office Action, Applicant
submitted an excerpt from its 2011-2012 Products and Services book which
describes its WEBOFFICE4SCHOOLS software.

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
Serial No. 85905178
- 7 -

with its software.4 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
Applicant’s 2011-2012 Products and Services book, the mark is displayed with
upper and lower case letters as WebOffice4Schools creating a visual separation
between the terms, it is clear from our precedents that when a mark is presented in
standard character form, the Board must consider all manners in which Applicant
could depict its mark.
Thus, Applicant’s mark WEBOFFICE4SCHOOLS is a compressed version of the
term WEB OFFICE 4 SCHOOLS without a space between the terms. It is clear
from the evidence that WEBOFFICE4SCHOOLS will be understood by the intended
users of Applicant’s software that the mark refers to software for providing web-
based access to office software applications designed for use by schools. The
combination of “WEB,” “OFFICE,” “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

4 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).
Serial No. 85905178
- 8 -

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 four terms instead of two, but the legal analysis is the
same.
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
Serial No. 85905178
- 9 -

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
WEBOFFICE4SCHOOLS 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 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 “[a]n 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, who would use it, who would benefit by its
Serial No. 85905178
- 10 -

use, where it may be used. In short, the consumer, faced with the term
‘WEBOFFICE’ would not know, nor could he or she know, what that term even
means. Thus, the mark is not ‘merely descriptive.’"5 However, as indicated above,
the test is not whether the consumer can guess what the goods are by looking at the
mark; the question is whether someone who knows what the goods are will
understand the mark to convey information about them. In this regard a consumer
shopping for “computer software that provides web-based access to applications and
services through a web operating system or portal interface” upon encountering the
mark WEBOFFICE4SCHOOLS will know without the need for any mental
gymnastics or application of logic that the mark merely describes office software
that provides a web-based solution designed for use in schools.
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 WEBOFFICE4SCHOOLS mark is applied for.
Applicant's mark should not be treated differently than currently existing
registrations.”6 Applicant’s mark is not being treated any differently than any other
application pending before the USPTO. The Board must decide each case on 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

5 Applicant’s Brief, p. 5.
6 Applicant submitted copies of numerous “4-something” marks attached to its February 7,
2014 Response to an Office Action.
Serial No. 85905178
- 11 -

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 WEBOFFICE4SCHOOLS, in its entirety, is not merely
descriptive.
Decision: The refusal to register Applicant’s mark WEBOFFICE4SCHOOLS is
affirmed.