Fabasoft AG

Trademark Trial and Appeal Board

Aug 8, 2007

No. 79008774 (T.T.A.B. Aug. 8, 2007)

Mailed:
8 August 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fabasoft AG
________

Serial No. 79008774
_______

Stewart J. Bellus of Collard & Roe, P.C. for Fabasoft AG.

Giselle M. Agosto, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Drost, Cataldo, and Taylor, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 21, 2004, Fabasoft AG (applicant) applied
to register the mark EGOV-APPS in standard character form
on the Principal Register for the following goods and
services:
Computer software for business process management and
workflow management, namely, automating, systematizing
and structuring the administration and management of
large industrial enterprises and public authorities,
telecommunication enterprises, and the services
involved with financial and planning services;
computer software for document and information
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 79008774
2
management, storage, archiving and retrieval; data
processing equipment, namely, computer hardware,
keyboards, monitors, mouse, printers, scanners and
computer peripherals; magnetic data carriers, namely,
pre-recorded compact discs featuring software for
business process management and workflow management,
namely, automating, systematizing and structuring the
administration and management of large industrial
enterprises and public authorities, telecommunication
enterprises, and the services involved with financial
and planning services; compact discs and DVDs for data
processing; computers; computer software for use in
database management and for word processing in the
fields of business process management and workflow
management, namely, automating, systematizing and
structuring the administration and management of large
industrial enterprises and public authorities,
telecommunication enterprises, and the services
involved with financial and planning services in Class
9.

Maintenance and repair of computer hardware in Class
37.
Education services, namely, classes, seminars,
conferences and workshops in the field of computer and
software training, word and data processing in Class
41.
Professional consultation in the field of information
technology; computer consultation; computer programming
for others in Class 42.
Serial No. 79008774. The application (extension of
protection) was filed under the provision of 15 U.S.C.
§ 1141f(a), Section 66a of the Trademark Act.
The examining attorney has refused to register
applicant’s term on the ground that the mark is merely
descriptive for the identified goods and services under
Ser. No. 79008774
3
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).
The examining attorney argues (Brief at unnumbered
p. 5) that:
The mark consists of the terms EGOV and APPS joined by
a hyphen. EGOV is a frequently used acronym
recognized in commerce that stands for the term
“Electronic government.” There are no other known
meanings of the term. There is evidence that both the
acronym and the term “electronic government” are
descriptive terms.

Furthermore, the examining attorney submitted a definition
of “apps” as meaning “computer application” and she argues
that “applicant uses the term in connection with computer
software, computer software training, data processing,
information technology and computer programming. As such,
applicant is using the term in connection with goods and
services which are tools used in egov.” Brief at
unnumbered p. 6.
In turn, applicant argues that “[n]o consumer seeing
the EGOV-APPS mark would immediately grasp the goods and
services with which Applicant’s mark is used.” Brief at
unnumbered p. 5. Applicant also points to several other
registrations and argues that those marks indicate that its
mark is not merely descriptive.
After the examining attorney made the refusal final,
applicant filed a notice of appeal.
Ser. No. 79008774
4
For a mark to be merely descriptive, it must
immediately convey “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007). See also In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Quik-
Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
While we must consider the mark in its entirety, “[i]t is
perfectly acceptable to separate a compound mark and
discuss the implications of each part thereof … provided
that the ultimate determination is made on the basis of the
mark in its entirety.” In re Hester Industries, Inc., 230
USPQ 797, 798 n.5 (TTAB 1986).
We begin by summarizing the evidence (emphasis added)
that the examining attorney has submitted to support her
argument that the mark is merely descriptive. First,
“Egov” and “E-Gov” are acronyms for “electronic
government.” www.acronymnfinder.com.
Second, E-Government is defined as:
Ser. No. 79008774
5
[T]he use by government agencies of information
technologies (such as Wide Area Networks, the
Internet, and mobile computing) that have the ability
to transform relations with citizens, businesses and
other arms of government. These technologies can
serve a variety of different ends: better delivery of
government services to citizens, improved interactions
with business and industry, citizen empowerment
through access to information, or more efficient
government management. The resulting benefits can be
less corruption, increased transparency, greater
convenience, revenue growth, and/or cost reduction.

www.worldbank.org

Third, the examining attorney also submitted other
evidence to show how the terms E-Gov, Apps, and application
are used or defined.
e-
electronic
http://encarta.msn.com

Gov – Government
www.acronymnfinder.com

apps – “computer application”
application – “7. Computer Science. A computer
program with a user interface.”
http://dictionary.com

The Orkand Corporation … “is an emerging leader in e-
government (e-Gov) electronic records management…”
Thomas & Herbert
“e-Gov solutions”
www.fedpage.com

Oracle
Enterprise Architecture Breakthroughs Drive E-Gov,
Homeland Security
www.softechmag.com

Mobile – new frontiers for enterprise apps UI in India
The architecture is pretty simple. The backend
enterprise/e-gov apps may be in 32EE (or .NET). With
Ser. No. 79008774
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the connectivity to the backend services… With e-gov
apps coming up in a big way, most of the apps can be
extended to villages…
www.jroller.com1

eGovernment (a contraction of electronic government,
which is also known as e-gov, digital government,
online government or transformational government) is
the application of information and communications
technology to enhance the effectiveness of the
legislature, judiciary or administration.
www.wikipedia.org

eGov is the linchpin for all five of the President’s
Management Agenda initiatives.
www.xml.gov

The coverage of IJEGR [International Journal of
Electronic Government] is international and focused on
original research in electronic government
applications, management, and policy. Areas of
interest include, but are not limited to the
following:
- Best practices in e-government
- Electronic government applications
http://mailman.isi.edu

E-Government applications definitely are getting more
comprehensive and complex.
www.techflow.com

The role of government in delivering better services
is perceptible with many public organizations
transforming their strategies and deploying eGov
applications.
www.ccsr.cse.dmu.ac.uk

1 We note that some of these articles may be from foreign sources
but potential purchasers of applicant’s goods and services are
likely to seek information on the internet from both U.S. and
foreign sources. Therefore, we will give these references some
weight. In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002)
([I]t is reasonable to consider a relevant article from an
Internet web site, in English, about medical research in another
country, Great Britain in this case, because that research is
likely to be of interest worldwide regardless of its country of
origin”).
Ser. No. 79008774
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The examining attorney’s evidence demonstrates that
the term “e-” is an abbreviation for “electronic,” “Gov” is
an abbreviation of “Government,” and “Apps” is an
abbreviation for “computer applications.” Thus, the term
EGOV-APPS would be an a shortening of the combined term
electronic government computer applications.
In this case, we do not rely on just the fact that the
dictionary as well as the acronym dictionary indicate that
the individual terms would have a descriptive meaning when
the terms are combined. There is evidence that the
combined term EGOV would be recognized as the term
“electronic government.” See, e.g., www.fedpage.com (“an
emerging leader in e-government (e-Gov) electronic records
management”) and www.xml.gov (“eGov is the linchpin for all
five of the President’s Management Agenda initiatives”).
Thus, the term “EGOV” when it is combined with “Apps” would
refer to electronic government applications. Finally,
there is evidence of the descriptive use of the combined
term EGOV-APPS and E-GOV applications.
Also, the addition of the hyphen is not significant.
In re Vanilla Gorilla, L.P., 80 USPQ2d 1637, 1640 (TTAB
2006) (presence of punctuation mark (a hyphen) in the mark
“3-0'S” does not negate mere descriptiveness of mark); In
re S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984)
Ser. No. 79008774
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(presence of slash in the mark “designers/fabric” does not
negate mere descriptiveness of mark).
Next, we must determine if prospective purchasers
would understand that the term EGOV-APPS is merely
descriptive of applicant’s goods and services. The test is
not whether these purchasers, when presented with the term,
can correctly guess what the goods and services are.
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)
(“Appellant’s abstract test is deficient – not only in
denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”). Therefore, we must consider the
mark in relation to applicant’s goods and services.
The examining attorney argues that “applicant uses the
term in connection with computer software, computer
software training, data processing, information technology
and computer programming. As such, applicant is using the
term in connection with goods and services which are tools
used in egov.” Brief at unnumbered pp. 6-7. Applicant’s
goods include computer software for automating the
Ser. No. 79008774
9
administration of public authorities as well as other
software that would be described as computer applications
used in electronic government. Applicant’s services
involving professional consultation in the field of
information technology; computer consultation; computer
programming for others; maintenance and repair of computer
hardware; and computer and software training are all broad
enough to include these services in the area of electronic
government computer applications. When these prospective
purchasers encounter the term EGOV-APPS in the context of
applicant’s goods and services, regardless of what other
meanings the terms may have in a different context, they
will immediately understand that the goods and services are
related to electronic government computer applications. In
re Polo International Inc., 51 USPQ2d 1061, 1063 (TTAB
1999) (“If applicant produced goods related to the medical
field, or specifically related to physicians, then the term
‘DOC’ would be readily understood by the public as
referring to ‘doctor.’ However, here applicant's goods are
computer software for document management, and ‘DOC’ will
be readily understood as referring to documents”). See
also In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087
(TTAB 2001):
Ser. No. 79008774
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We disagree, however, with applicant's conclusion that
AGENTBEANS is suggestive or fanciful and find that the
terms “agent” and “beans” when combined are no less
descriptive than the terms are individually,
considered in conjunction with applicant's goods.
See, e.g., In re Copytele Inc. 31 USPQ2d 1540 (TTAB
1994) (combination of SCREEN FAX PHONE held merely
descriptive and without incongruity resulting from
combination, and In re Lowrance Electronics, 14 USPQ2d
1251 (TTAB 1989) (generic terms COMPUTER and SONAR
held just as generic and not incongruous when used in
combination).

Applicant also argues (Brief at unnumbered p. 3) that
the Office:
[H]as allowed registration of the EGOV SOLUTIONS mark
(Reg. No. 2,969,010) for “designing and implementing
websites for other” as well as the EGOV.NET mark (Reg.
No. 2,868,064) for goods nearly identical to those in
this application for EGOV-APPS. The EGOV USER GROUP
mark (Registration No. 2,822,855) was also registered
for use with similar goods and services… Furthermore,
Applicant respectfully points out its EGOV-ACADEMY
mark (Registration No. 3,086,962) for which no
disclaimer was required.

The examining attorney has offered the followed
analysis of these registrations (Denial of Request for
Reconsideration at 2) in response to applicant’s argument
that these registrations support applicant’s argument that
its mark is not merely descriptive:
EGOV.NET (This mark was only allowed for registration
in the Supplemental Register. This is an admission
that the mark is merely descriptive of the goods and
services identified in the application, which are the
same as those identified in [the] present
application…)

EGOV SOLUTIONS (The term EGOV was seen as descriptive
in this case and was disclaimed. The mark was carried
Ser. No. 79008774
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onto the Principal Register by the term SOLUTIONS.
This case is not analogous to the present case because
the individual components of the composite term EGOV-
APPS are both descriptive.)2

EGOV-ACADEMY (The mark was initially refused on the
Principal Register because the individual parts of the
composite were found to be descriptive. Only after
applicant deleted Class 41 educational services, was
the application allowed on the Principal since the
term ACADEMY was no longer descriptive. The term EGOV
was not disclaimed because the hyphen, connecting both
terms, created a physical connection between the
individual parts of the composite. In the present
case, the term APPS is descriptive for all goods and
services identified).

EGOV USER GROUP (The record does not explain why the
term EGOV was not disclaimed…)

To the extent that we consider other records in
determining descriptiveness in this case, it would seem
that the registrations that applicant introduced provide
more support for the examining attorney’s position than
applicant’s. One is on the Supplemental Register (No.
2,868,064) and, in another, the term EGOV has been
disclaimed (No. 2,969,010). Such registrations would tend
to support the examining attorney’s position. In re
Historic Wharf's Associates, Inc., 222 USPQ 92, 93 n.1
(TTAB 1984) (“[E]ven if the additional evidence had been
considered, it could hardly have altered our conclusions in

2 This registration appears to be owned by a third party. The
other registrations are apparently owned by applicant.
Ser. No. 79008774
12
this case since the third party registrations comprised
concededly descriptive marks or matter (i.e., two were
Supplemental Register registrations and one involved a
disclaimer of descriptive matter analogous to ‘WOODEN BOAT
SHOW’)”). The fact that applicant has one registration for
a different EGOV mark does not foreclose a determination
that its current mark is merely descriptive.
We agree that the registrations in the record, if they
were considered, would not dictate a different result in
this case. “It is well settled that each case must be
taken on its own facts.” Sun Microsystems, 59 USPQ2d at
1087. See also In re Best Software Inc., 63 USPQ2d 1109,
1113 (TTAB 2002).
The evidence here shows that EGOV-APPS is an
abbreviation for the term “electronic government
applications.” When this term is used in association with
applicant’s goods and services, we have no doubt that
potential purchasers would immediately understand that
applicant’s term merely describes those goods and services.
Decision: The refusal to register is affirmed.