Grape Technology Group, Inc.

Trademark Trial and Appeal Board

Aug 2, 2007

No. 76578484 (T.T.A.B. Aug. 2, 2007)

Mailed:
August 2, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Grape Technology Group, Inc.
________

Serial No. 76578484
_______

Joseph Sofer of Sofer and Haroun, LLP for Grape Technology
Group, Inc.

Tanya L. Amos, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney)
_______

Before Bucher, Walsh, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Grape Technology Group, Inc. filed an intent-to-use
trademark application for the mark TEXT DIRECT, in standard
character format, for services ultimately identified as
“wireless messaging services for directory assistance
information.”1 During the prosecution of the application,
applicant filed an amendment to allege use claiming March
19, 2004 as its dates of first use anywhere and first use
in commerce.

1 Application Serial No. 76578484, filed March 1, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 76578484
2
The Trademark Examining Attorney refused registration
on the ground that applicant’s mark TEXT DIRECT, when used
in connection with “wireless messaging services for
directory assistance information,” is merely descriptive.
Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§1052(e)(1). The Examining Attorney contends that
applicant’s mark is merely descriptive because TEXT DIRECT
features the direct transmission of text from one mobile
phone to another. In other words, TEXT DIRECT “refers to a
messaging service that allows one to submit text messages
directly to devices such as cellular phones, PDAs and
pagers.”2 The Examining Attorney submitted evidence that
she asserts demonstrates that the term TEXT DIRECT is used
to refer to text messaging services that are sent directly
to wireless devices.3
Applicant argues that the descriptiveness refusal is
based on the false premise that it provides a
telecommunications service, rather than a directory
assistance service. Accordingly, a consumer must use some
level of imagination, thought, and perception to link the

2 Examiner’s Brief, unnumbered page 3.
3 Examiner’s Brief, unnumbered pages 4-7.
Serial No. 76578484
3
mark TEXT DIRECT with applicant’s directory assistance
services.4
As background, applicant explained that, through its
exclusive licensee,5 it is a premier provider of directory
assistance and other information services. Applicant uses
the latest technology to provide information to wireless,
landline, cable telephony, and VoIP providers. Applicant
offers a suite of directory assistance services, including
TEXT DIRECT in which the requested telephone number is sent
directly to a customer’s wireless handset.6
Text Direct™ takes directory assistance
to the next level. A short text
message with the requested phone number
can be sent directly to the mobile
caller’s handheld device for later
access.7

The appeal has been fully briefed. For the reasons
set forth below, we affirm the refusal.
In support of the descriptiveness refusal, the
Examining Attorney submitted excerpts from a number of
foreign websites. There is no per se rule that information
originating from foreign websites or foreign news
publications that are accessible to the public in the

4 Applicant’s Brief, pp. 7, 9-11.
5 Applicant’s Brief, p. 11.
6 Applicant’s November 7, 2005 amendment to allege use;
Applicant’s Brief, p. 9
7 Applicant’s November 7, 2005 amendment to allege use.
Serial No. 76578484
4
United States are inadmissible. Such evidence may be
relevant to show how United States consumers perceive a
mark. The probative value, if any, of foreign information
sources must be evaluated on a case-by-case basis. In re
Bayer Aktiengesellschaft, ___ F.3d ____, 82 USPQ2d 1828
(Fed. Cir. 2007). See also In re King Koil Licensing Co.,
79 USPQ2d 1048, 1050 (TTAB 2006); In re Remacle, 66 USPQ2d
1222, 1224 n.5 (TTAB 2002).
For example, it is reasonable to assume
that professionals in medicine,
engineering, computers,
telecommunications and many other
fields are likely to utilize all
available resources, regardless of
country of origin or medium. Further,
the Internet is a resource that is
widely available to these same
professionals and to the general public
in the United States. Particularly in
the case before us, involving
sophisticated medical technology, it 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.

In re Remacle, supra.
Applicant, a provider of directory assistance
services, “delivers customer-focused solutions . . . to
wireless, landline, cable telephony, and VoIP providers, as
Serial No. 76578484
5
well as corporations and educational institutions.”8 In
other words, applicant renders its TEXT DIRECT services to
any company or institution that needs to provide directory
assistance information. There is no explanation or
rationale why applicant’s target companies or institutions
need to research foreign websites and/or publications to
learn about directory assistance services, nor is there any
explanation regarding the effect of such websites on
domestic consumers. Accordingly, while we do not entirely
discount the impact of the foreign websites, we find them
to be of little probative value in this case, and we will
not discuss them further.9
The Examining Attorney also submitted evidence
demonstrating that the term “direct text messaging” is used
to describe text messages sent directly from one wireless
device to another. This information was not particularly
useful in our determination of whether TEXT DIRECT is
merely descriptive although it did provide background

8 Applicant’s amendment to allege use (specimen).
9 Applicant has argued that some of the foreign websites display
TEXT DIRECT used as a trademark and, therefore, show that the
term may function as a trademark. That argument and the
supporting websites address the issue of whether TEXT DIRECT is
capable of functioning as a trademark, not whether the term is
merely descriptive.
Serial No. 76578484
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information regarding the transmission of text messages
directly between wireless devices.10
On the other hand, we found the following evidence
helpful in our analysis:
1. A definition of “text messaging” from Wĕbopēdia,
an online encyclopedia of computer technology:
Sending short text messages to a device
such as a cellular phone, PDA or pager.
Text messaging is used for messages
that are no longer than a few hundred
characters. The term is usually
applied to messaging that takes place
between two or more mobile devices.

(www.pcwebopedia.com);
2. A definition of the word “direct” as meaning
“straight without diversion: straight from one place or
person to another, without a stop or diversion.”
(http://encarta.msn.com); and,

10 There was no useful evidence regarding the term “text direct.”
The reference in Business Week Online (October 10, 2003),
attached to the May 4, 2005 Trademark Office Action, referenced a
text, direct-marketing message. The reference to “text direct,”
in a chat room communication from a person in Rotterdam,
Netherlands, in the Cellular-News website(www.cellular-news.com),
attached to the September 23, 2004 Trademark Office Action, did
not show use of the term by a U.S. citizen. Moreover, it did not
reference “text direct” as a unitary term. It referenced the
writer’s desire to send text directly from one phone to another.
Likewise, the Textyper website (www.textper.com), attached to the
May 4, 2005 Trademark Office Action (“Text direct from our Office
or Home PC), showed use of “text direct” to reference sending
text messages directly from your office or Home PC, rather than
as a unitary term describing the transmission of wireless
messages between portable devices.
Serial No. 76578484
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3. Third-party registrations for marks consisting,
in part, of the word “direct” used in connection with
communications services. In these registrations, the
exclusive right to use “direct” is disclaimed. Third-party
registrations may be used to show that a particular term
has descriptive significance as applied to certain
services. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694-695 (CCPA 1976); United Foods Inc.
v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987).
Representative registrations include the following:
Registration
Number
Mark Services
2095828 AT&T DIRECT International long distance
telephone service; operator
assisted international long
distance telephone service;
international long distance
telephone service provided by
automated response system
2238164 networkMCI
Direct
Telecommunications services,
namely, the electronic
transmission of voice, data,
and information services,
namely, long distance, local
toll calling, and
international calling
2606643 DIRECT TALK Wireless telephone
communication services
featuring a rate plan
2823734 FRONTIERNET
DIRECT
Telecommunications services,
namely, connectivity services
related to data traffic
control on a global computer
network
Serial No. 76578484
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Registration
Number
Mark Services
2692280 DYNAMICS
DIRECT
Electronic transmission of
advertising messages and data
to businesses and individuals
through global computer
networks, extranets, local
computer networks, wireless
devices and other hand-held
electronic devices

A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(1), if it
directly conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978). Also, a
mark that describes how a product is used or the method in
which the services are rendered is merely descriptive. In
re International Spike, Inc., 196 USPQ 447, 450 (TTAB
1977).
Whether a term is merely descriptive is not determined
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with the goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use; that a term may have
Serial No. 76578484
9
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
In other words, the question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them (i.e., whether
someone familiar with applicant’s “wireless messaging
services for directory assistance information” will
understand TEXT DIRECT to convey information about the
services). In re Tower Tech Inc., 64 USPQ2d 1314, 1317
(TTAB 2002).
One of the definitions of the word “text” is to send
text messages:
1. To send a text message to: She
texted me when she arrived.

2. To communicate by text message:
He texted that he would be late.

The American Heritage Dictionary of the English Language
(4th ed. 2006)(emphasis in the original).11 Because
applicant’s services entail wireless messaging (i.e., text
messages), the word “text” is merely descriptive.

11 The Board may take judicial notice of dictionary definitions.
B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727,
6 USPQ2d 1719, 1721 (Fed. Cir. 1988).
Serial No. 76578484
10
As indicated above, “direct” means “straight without
diversion: straight from one place or person to another,
without a stop or diversion.” The Encarta dictionary at
encarta.msn.com.12 In this case, “direct” describes a
feature of applicant’s services: that is, directory
assistance information is sent straight to the user or
requestor.
As just discussed, the words “text” and “direct” used
individually are descriptive in connection with applicant’s
services. The question we now face is whether the
descriptive word “text” when combined with the descriptive
word “direct” creates a trademark or merely describes how
the directory assistance information is transmitted. We
find that when TEXT DIRECT is used in connection with
“wireless messaging services for directory assistance
information,” consumers will understand that term to mean
that directory assistance information is sent directly to
the requestor via text messaging. There is no unique or
incongruous meaning created. Nothing requires the exercise
of imagination or multistep reasoning to understand how
applicant’s services are rendered. The descriptive meaning
of the words “text” and “direct” is not lost in the
combined form.

12 Attached to the May 4, 2005 Trademark Office Action.
Serial No. 76578484
11
Applicant’s advertising provides evidence that the
public would perceive TEXT DIRECT as descriptive. An
excerpt from the INFONXX website at www.infonxx.com13 reads
as follows:
INFONXX TextDirect is pioneering
directory assistance services by
allowing consumers to send a directory
assistance inquiry directly from their
wireless phone. Your wireless callers
can join the revolution by sending and
receiving their requested listings via
SMS.14

In other words, consumers can text message directly to
receive their directory assistance information.
While direct wireless messaging may be more commonly
referred to as direct text or direct text messaging (as
shown by the Examining Attorney’s evidence), the mark at
issue TEXT DIRECT is simply the transposition of the words
“direct” and “text, and, in the context of this case, the
transposed words retain the same meaning. See In re
Tedruth Plastics Corporation, 179 USPQ 316 (TTAB 1973)
(“Box Pallet” is the invert of the generic term “Pallet
Box,” and because it retains the same meaning, it is not

13 INFONXX is applicant’s licensee.
14 SMS means short message service. It “permits the sending of
short messages . . . between mobile phones, other handheld
devices and, even, fixed-line phones.” Short message service,
Wikipedia, The Free Encyclopedia, http://en.wikipedia.org/wiki/
text-messaging (visited May 4, 2005)(attached to the May 4, 2005
Trademark Office Action).
Serial No. 76578484
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capable of distinguishing applicant’s pallets). Cf In re
Nationwide Industries, Inc., 6 USPQ2d 1882, 1884 (TTAB
1988) (transposition of words in the marks may serve as a
basis of confusion only if transposed marks create
distinctly different commercial impressions); In re General
Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (the
transposition of the words in the marks SPRINT STEEL RADIAL
and RADIAL SPRINT does not change the commercial impression
fostered by these marks).
The fact that TEXT DIRECT per se does not appear in a
dictionary is not determinative. In re Sun Microsystems
Inc., 59 USPQ2d 1084, 1087 (TTAB 2001). Likewise, the fact
that applicant may be the first and only user of the term
TEXT DIRECT is not dispositive. Id. A term does not need
to be in common usage in a particular industry before it
can be found merely descriptive. Id. Anyone who provides
information by direct text messaging might have occasion to
use the term TEXT DIRECT to convey that fact.
In view of the foregoing, we find that, because the
term TEXT DIRECT describes how applicant renders its
“wireless messaging services for directory assistance
information,” TEXT DIRECT is merely descriptive.
Serial No. 76578484
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Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) of the Trademark Act of
1946 is affirmed.