Gigit, Inc.

Trademark Trial and Appeal Board

Feb 14, 2020

87069673 (T.T.A.B. Feb. 14, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: November 7, 2019 Mailed: February 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Gigit, Inc.
_____
Serial No. 87069673
_____

Morris E. Turek of YourTrademarkAttorney.com,
for Gigit, Inc.

Jeri Fickes, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____
Before Taylor, Goodman, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background and Applicant’s Request, in the Alternative, to
Amend to the Supplemental Register
Gigit, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
GIGIT, in standard characters, for:
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Staff augmentation services, namely, providing
information technology (IT) support staff; Updating and
maintenance of data in computer databases in
International Class 35; and
Computer and information technology security services,
namely, providing social engineering assessments and
assessing and testing the security posture and
vulnerability of computer networks and the software
applications that run on the networks; Computer and
information technology security consultation services;
Information technology consultation services; Information
technology and computer network engineering services,
namely, designing, configuring, optimizing, and
implementing computer networks; Computer and
information technology support services, namely, help
desk services and monitoring the technological functions
of computer network systems; Data warehousing;
Installation, repair, updating, and maintenance of
computer software; Software design and development;
Information technology project management services;
Consulting in the field of information technology project
management; IT integration services; Computer systems
integration services in International Class 42.1
The Examining Attorney refused registration of Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the
identified services. After the Examining Attorney made the refusal final, Applicant
requested reconsideration and appealed. On reconsideration, the Examining
Attorney maintained the descriptiveness refusal, and added an additional ground
for refusal under Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b), that the mark in the

1 Application Serial No. 87069673 has a filing date of June 13, 2016, and originally was
based on Applicant’s assertion of a bona fide intent to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Applicant filed a statement of use on April
9, 2018, asserting April 8, 2018 as the date of first use of the mark anywhere and in
commerce.
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drawing is not a substantially exact representation of the mark as used on the
specimen.
In its March 26, 2019 Response to Office Action, Applicant stated that “[i]n the
event, the Board affirms Trademark Examining Attorney’s Section 2(e)(1) refusal,
Applicant hereby amends its application to seek registration of its mark on the
Supplemental Register.” In an email to Applicant’s counsel that appears in an April
17, 2019 Note to File, and in her April 17, 2019 Office Action, the Examining
Attorney advised Applicant that following the Board’s decision on appeal,
prosecution cannot be reopened to give Applicant the opportunity to amend to the
Supplemental Register. Applicant did not pursue the matter further.
We do not construe Applicant’s quoted statement as an improper request to
reopen prosecution in the event of a loss on appeal. Rather, we interpret the
statement as a permissible request, in the alternative, to amend to the
Supplemental Register in the event it cannot traverse the descriptiveness refusal on
the merits. Applicant perhaps unadvisedly placed its statement under the heading
“Reservation of Rights.” The Examining Attorney is correct that an applicant may
not “reserve the right” in the future to amend to the Supplemental Register if the
refusal is affirmed on appeal. In re Integrated Embedded, 120 USPQ2d 1504, 1511
(TTAB 2016) (Board stating the “[a]pplicant cannot ‘reserve a right’ that does not
exist”); see also TMEP § 816.04 (Oct. 2018). However, an “applicant may respond by
arguing the merits of the examining attorney’s refusal of registration on the
Principal Register and, in the alternative, request registration on the Supplemental
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Register.” TMEP § 816.04. We view Applicant’s statement as this type of alternative
request because rather than characterizing the request as the potential to amend
in the future, Applicant stated that it “hereby amends” in the event its merits
arguments at the Board did not succeed.
Typically with such an amendment in the alternative, an examining attorney
would afford an applicant the option of approval for “registration on the
Supplemental Register or going forward with the appeal on the underlying refusal,”
and place a note to the file indicating which option the applicant selected. TMEP
§ 816.04. Although that did not occur here, no harm results because Applicant
clearly conveyed in the Response to Office Action its intention to “resum[e] its
appeal with the Trademark Trial and Appeal Board” if the Examining Attorney
made the Section 2(e)(1) refusal final. The Examining Attorney gave no indication
that she considered the mark ineligible for registration on the Supplemental
Register. Thus, we treat Applicant’s request as a viable request, in the alternative,
for registration on the Supplemental Register.
The Examining Attorney then made both the Section 2(e)(1) and drawing-based
refusals final, and the appeal resumed. Applicant and the Examining Attorney filed
briefs, and an oral hearing took place. As explained below, we affirm the
descriptiveness refusal but reverse the drawing-based refusal.
II. Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods of the applicant is merely
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descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-
Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In
re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). “The
major reasons for not protecting such [merely descriptive] marks are: (1) to prevent
the owner of a mark from inhibiting competition in the sale of particular goods [or
services]; and (2) to maintain freedom of the public to use the language involved,
thus avoiding the possibility of harassing infringement suits by the registrant
against others who use the mark when advertising or describing their own products
[or services].” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed.
Cir. 2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
1978)).
Descriptiveness must be assessed “in relation to the [services] for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the [services]
because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing Abcor Dev., 200 USPQ at 218). The
descriptiveness analysis concentrates on the recitation of services set forth in the
application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636
(Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Comp. Servs., Inc., 918 F.2d
937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)). Evidence that a term is merely
Serial No. 87069673
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descriptive to the relevant purchasing public “may be obtained from any competent
source, such as dictionaries, newspapers, or surveys.” Bayer AG, 82 USPQ2d at
1831.
A. Arguments and Evidence
The Examining Attorney contends that the proposed mark merely describes
“that the services pertain to the information technology (IT) sector, and that
applicant is offering services on a gig, or temporary, basis.”2 The Examining
Attorney introduced online dictionary entries for “gig” and “IT” including the
following relevant definitions:3
gig: …
a job usually for a specified time; especially : an
entertainer’s engagement
IT:
Stands for “information technology,” and is
pronounced “I.T.”… Many companies now have IT
departments for managing the computers,
networks, and other technical areas of their
businesses. IT jobs include computer programming,
network administration, computer engineering,
Web development, technical support, and many
other related occupations.
Applicant’s identification corroborates this definition of “IT,” by defining it the first
time it appears as “providing information technology (IT) support staff,” and then
later using “IT” in the identification with integration services. The Examining
Attorney also introduced screenshots of Applicant’s website, which shows the

2 8 TTABVUE 5.
3 TSDR May 16, 2018 Office Action at 2-14.
Serial No. 87069673
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logo and states, “Our Staff Augmentation Service is a uniquely
positioned service that allows GigIT to be fully engaged in our customers [sic]
projects. Our goal is to provide the appropriate engineers and IT solutions to fit
each customer’s needs.”4 In addition, the record includes the specimen described as
“screenshots of Applicant’s website,” which displays the same logo and refers to
“GigIT consultants” and “GigIT’s vendor neutral approach.” The website promotes
the availability of “300+ Engineers, Consultants, Project Managers, and IT
Professionals” for “Long and Short-Term assignments,”5 which the Examining
Attorney relies on as evidence that Applicant offers IT-related services on a
temporary basis.
Applicant concurs that GIGIT describes a feature of its services, but argues that
“the issue in this case is whether Applicant’s mark is a double entendre with a
second suggestive meaning,”6 so as to avoid mere descriptiveness. Applicant
introduced another definition of “gig” from the online Oxford Dictionary7 that
includes the following entry:
VERB
[NO OBJECT]
informal
1 Perform a gig or gigs.
‘two or three nights a week we were gigging’

4 TSDR May 16, 2018 Office Action at 15.
5 TSDR April 9, 2018 Statement of Use at 7.
6 6 TTABVUE 5 (Applicant’s Brief).
7 TSDR July 22, 2018 Response to Office Action at 6.
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Applicant also submitted numerous third-party registrations of marks that include
“IT.”8 According to Applicant, “[t]he second suggestive meaning of Applicant’s mark
combines the verb form of ‘gig’ with the pronoun ‘it.’ Customers needing assistance
… can just ‘gig it’ and find temporary staffing solutions….”9
B. Analysis
A “double entendre” is defined as “ambiguity of meaning arising from language
that lends itself to more than one interpretation.” In re The Place Inc., 76 USPQ2d
1467, 1470 (TTAB 2005) (quoting WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY (1993)). “For trademark purposes, a ‘double entendre’ is an expression
that has a double connotation or significance as applied to the goods or services.”
TMEP § 1213.05(c) cited in In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB
2017). The multiple interpretations that make an expression a ‘double entendre’
must be associations that the public would make fairly readily, and must be readily
apparent from the mark itself. In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1105
(TTAB 2018); Calphalon, 122 USPQ2d at 1163-64; TMEP § 1213.05(c).
We do not find a readily apparent double entendre in GIGIT. Neither Applicant’s
website evidence nor any other evidence of record shows use of the expression “gig
it,” as a verb command or otherwise. See In re Virtual Indep. Paralegals, 2019
USPQ2d 111512, *2 (TTAB 2019) (“Evidence of the public’s understanding of a term
may be obtained from ‘any competent source, such as … dictionaries, newspapers

8 TSDR July 22, 2018 Response to Office Action at 10-50; 4 TTABVUE 9-52.
9 6 TTABVUE 6 (Applicant’s Brief).
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and other publications.’”) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am.,
Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)). More importantly, the
only evidence Applicant introduced in support of this verb use of “gig” explicitly
states that the verb has “NO OBJECT,”10 meaning that it is intransitive.11 Thus,
the second meaning advocated by Applicant consists of a grammatically illogical
expression in which the intransitive verb “gig” would improperly be followed by an
object, the pronoun “it.” Absent any evidence of use of this expression, even as
slang, we find that consumers of information technology services would not view
GIGIT as “gig it,” but instead only would understand the mark as “gig I.T.”
DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (“must consider the mark as a whole and do so in the
context of the goods or services at issue.”).

10 TSDR July 22, 2018 Response to Office Action at 6.
11 We take judicial notice of the merriam-webster.com entry for “intransitive,” accessed
February 11, 2020, which defines it as “not transitive – especially: characterized by not
having or containing a direct object// an intransitive verb,” and in the additional
explanation states:
A transitive verb is a verb that requires a direct object, which is a noun, pronoun, or
noun phrase that follows the verb and completes the sentence's meaning by
indicating the person or thing that receives the action of the verb. The direct object
typically answers the question what? or whom?:
The kids like pickles.
That really annoys me.
Have they sold their house yet?
An intransitive verb is not used with a direct object.
See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may
take judicial notice of online dictionaries that exist in printed format or have regular fixed
editions).
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We have considered, but do not find persuasive, Applicant’s third-party
registration evidence. Applicant maintains that the third-party marks show “that
the it/I.T. double meaning is so commonly used that most people (and Applicant’s
customers in particular) are already familiar with and appreciate the wordplay.”12
First, registrations are “not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them.” In re i.am.symbolic, llc,
116 USPQ2d 1406, 1412 (TTAB 2015) (quoting In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed.
Cir. 2017). Thus, the registrations cannot establish direct consumer exposure to the
marks. However, Applicant properly may rely on them to “show[] how language is
generally used,” in the manner of a dictionary. Cf. In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987) (registrations may be used in the manner of a
dictionary to show that a mark or a portion thereof is suggestive or descriptive).
Second, considering the registrations in this manner, we disagree with
Applicant’s assertion that the third-party marks for information technology-related
goods or services “clearly employ the same wordplay as Applicant’s GIGIT mark”.13
In fact, a perusal of the third-party marks Applicant emphasizes in its Brief14
reveals that none of them are for grammatically incorrect, unused expressions such
as Applicant’s “gig it” suggestion. Rather, contrary to Applicant’s contention that

12 6 TTABVUE 8.
13 6 TTABVUE 6.
14 6 TTABVUE 6-7.
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these marks “do not include phrases that are commonly used,”15 we find that the
third-party marks generally consist of or draw on recognizable expressions using
the pronoun “it,” such as “MAKING IT POSSIBLE,” “HIRE A KNOW IT ALL,”
“GET IT RIGHT,” “THE HEART OF IT,” and “BECAUSE IT MEANS BUSINESS.”
Thus, the registrations do not support construing GIGIT as a double entendre, and
instead, most serve as contrasting examples of true double entendre expressions
using the pronoun “it” that are readily apparent from the marks and that the public
would understand fairly readily.
Applying the appropriate standard whether someone familiar with the identified
services will understand the mark to describe features of them, Applicant’s mark is
merely descriptive. See DuoProSS Meditech 103 USPQ2d at 1757; Abcor Dev., 200
USPQ at 218. The above definitions of each word show that consumers would
understand GIGIT to describe information technology-related services (IT) offered
on a temporary basis (gig).
Applicant has not submitted any evidence to suggest that the combination of
these individually descriptive terms GIG and IT takes on any different meaning, or
a new and unique commercial impression. “In considering a mark as a whole, the
Board may weigh the individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its various components.” In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). If
the combination retains the descriptive significance of the individual parts, as we

15 6 TTABVUE 7.
Serial No. 87069673
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find here, the mark as a whole must be considered merely descriptive. In re
Petroglyph Games Inc., 91 USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely
descriptive for computer game software); see also In re Phoseon Tech., Inc., 103
USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX
merely descriptive of light and UV curing systems composed primarily of light-
emitting diodes for industrial and commercial applications).
We also note that the omission of a space between the two components would not
diminish the descriptiveness of the mark. “It is almost too well established to cite
cases for the proposition that an otherwise merely descriptive term is not made any
less so by merely omitting spaces between the words....” Minn. Mining & Mfg. Co. v.
Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967). See also In re
Aquamar, Inc., 115 USPQ2d 1122, 1125 (TTAB 2015); In re Carlson, 91 USPQ2d
1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, consultation and listing services); In re A La Vieille Russie Inc., 60
USPQ2d 1895, 1897n. 2 (TTAB 2001) (“the compound term RUSSIANART is as
merely descriptive as its constituent words, ‘Russian Art”’).
Accordingly, we find the mark as a whole merely descriptive.
III. Drawing/Specimen Agreement
The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52,
37 C.F.R. § 2.52. As such,
[i]n an application under section 1(b) of the Act, the
drawing of the mark must be a substantially exact
representation of the mark as intended to be used on or in
connection with the goods and/or services specified in the
Serial No. 87069673
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application, and once an amendment to allege use under
§ 2.76 or a statement of use under § 2.88 has been filed,
the drawing of the mark must be a substantially exact
representation of the mark as used on or in connection
with the goods and/or services.
Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b).
As discussed above, the drawing of the standard-character mark is GIGIT, which
covers any “font style, size, or color.” See 37 C.F.R. § 2.52(a). The proposed mark
appears on Applicant’s specimen both as GigIT and as . In explaining
why the drawing is not a substantially exact representation of the mark on the
specimen, the Examining Attorney alleges that the drawing displays the mark as
one word, while the specimen presents it as two words. Even in the specimen’s non-
stylized presentation of GigIT with no space, the Examining Attorney asserts that
“the capitalization used within the applied-for mark creates the impression of two
separate words … presented in compound form.”16
The Trademark Manual of Examining Procedure (TMEP) Section 807.12(e)
addresses compound word marks as follows:
A compound word mark is comprised of two or more
distinct words, or words and syllables, that are
represented as one word (e.g., BOOKCHOICE,
PROSHOT, MAXIMACHINE, PULSAIR). Often, each
word or syllable in a compound word mark is displayed or
highlighted by: (1) capitalizing the first letter of each
word or syllable (e.g., TimeMaster); or (2) presenting the
words or syllables in a different color, script, or size (e.g.,
RIBtype).

16 8 TTABVUE 10 (Examining Attorney’s Brief).
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This examination guidance discusses the presentation of compound word marks in
drawings and specimens, and how the presentation of the mark as one or two words
may raise an issue as to whether the mark on the drawing is a substantially exact
representation of the mark on the specimen. Relevant to this case, the TMEP
provides an example in which the drawing depicts the mark as BOOKCHOICE, and
specifically provides that “a specimen showing the mark as BookChoice would be a
substantially exact representation.” TMEP § 807.12(e). We agree.
In this case, one presentation of Applicant’s standard-character GIGIT mark on
the specimen is GigIT,17 which we find analogous to the BookChoice example from
the TMEP. The USPTO typically displays standard-character marks in all capital
letters, but the standard-character claim encompasses a presentation in “both
uppercase and lowercase letters.” Calphalon, 122 USPQ2d at 1154 n.1 & 1158; see
also In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, n.1 (TTAB 2013) (applied-for
mark displayed with uppercase and lowercase letters treated as standard form
mark in all uppercase letters). Thus, Applicant’s drawing, GIGIT, is a substantially
exact representation of the GigIT mark that appears on the specimen, regardless of
the use of both uppercase and lowercase letters in the mark on the specimen.
Applicant’s drawing therefore complies with the rules and with relevant
examination guidance.

17 As an example of this presentation of the mark, the following is an excerpt from the
specimen at p.5: .
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Decision: We reverse the refusal to register on the ground that the drawing is
not a substantially exact representation of the mark as used on the specimen. We
affirm the refusal to register the mark on the ground that it is merely descriptive of
Applicant’s goods under Trademark Act Section 2(e)(1). In view of Applicant’s
alternative request for registration on the Supplemental Register, the amendment
will be entered and the mark will be approved for registration on the Supplemental
Register in due course.