Cooperative Educational Service Agency No. 6

Trademark Trial and Appeal Board

Mar 18, 2015

No. 85919178 (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. 85919178
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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.
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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 LESSONPLANNER4SCHOOLS (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 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 LESSONPLANNER4SCHOOLS merely describes
lesson planning application software and related services for 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).
As its specimen of use, Applicant submitted a document it identified as “product
use instructions.” The heading of the instructions displays Applicant’s mark as
shown below:

The instructions also include what appears to be a screen shot shown below:
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Finally, the instructions explain that there are three levels of users: (i) Lesson Plan
Administrators who set up the templates; (ii) Lesson Plan Reviewers who monitor
teachers; and (iii) Lesson Plan Users who create lesson plans.
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 LESSONPLANNER4SCHOOLS software as shown below:

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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.3 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 2011-2012 Products and Services Book, the mark is displayed
in upper and lower case letters as LessonPlanner4Schools 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.4
Thus, Applicant’s mark LESSONPLANNER4SCHOOLS is a compressed version
of the term LESSON PLANNER 4 SCHOOLS without a space between the terms. It
is clear from the way Applicant displays its mark LESSONPLANNER4SCHOOLS
that Applicant intends to engender the commercial impression that its mark refers
to a software application for creating lesson plans used in schools. The combination

3 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).
4 In addition, the specimen features a screen shot that displays the term “LessonPlanner” in
a different color than the term “4Schools” further differentiating the terms.
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of the terms “LESSON,” “PLANNER,” “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 four terms instead of two, but the legal analysis remains
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,
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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, based on Applicant’s own specimen and website, we find
that Applicant’s mark LESSONPLANNER4SCHOOLS 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.5 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)

5 Although it may have been useful for the Examining Attorney to have submitted evidence
regarding the definition of a “lesson planner” and of third-party use of “lesson planner,”
such additional evidence is not necessary to our finding.
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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 the mark is suggestive, not descriptive, for the reasons set
forth below:
At best, the mark may convey some sort of connection to a
school-related user, but there is nothing in the mark
which describes 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, who would
use it, who would benefit by its use, what lessons it
encompasses, what grade levels it may apply to and why
someone would use it and to what result. 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 knowing 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."6
First, a mark may be found to be merely descriptive if it describes a feature,
function, purpose or use of the goods. The mark LESSONPLANNER4SCHOOLS
directly imparts to potential consumers and users that the product is a lesson
planning tool used by schools.

6 Applicant’s Brief, pp. 4-5.
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Second, the test is not whether someone can guess the goods upon seeing the
mark.7 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 lesson plans 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 LESSONPLANNER4SCHOOLS mark is
applied for. Applicant's mark should not be treated differently than currently
existing registrations.”8 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 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

7 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
LESSONPLANNER4SCHOOLS directly imparts to potential consumers that the product,
whatever it may be, is a lesson planning tool used by schools.
8 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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prior registrations that include the “4 something” formative, these registrations do
not conclusively prove that the mark LESSONPLANNER4SCHOOLS, in its
entirety, is not merely descriptive.
Decision: The refusal to register Applicant’s mark WEBOFFICE4SCHOOLS is
affirmed.