IA Corp.

Trademark Trial and Appeal Board

Oct 11, 2000

No. 75419109 (T.T.A.B. Oct. 11, 2000)

Paper No.
14
GDH/gdh
10/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re IA Corporation
________
Serial No. 75/419,109
_______
Elliot B. Aronson, Esq. for IA Corporation.
Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Hanak, Hohein and McLeod, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
IA Corporation has filed an application to register
the mark "INFOXTRACT" for "computer software for extracting
selected data content from computer formats, namely, print data
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/419,109
2
streams, report formats and database formats, and user manuals
sold as a unit."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant's goods, the
mark "INFOXTRACT" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not held. We reverse the refusal to
register.
By way of background, applicant notes that its goods
are what are more commonly known as "data mining" programs. As
explained by applicant:
This type of software is typically used
by large enterprises that have large
computerized archives of data about their
customers, vendors, and business operations.
The software is used to search the company's
data stores and retrieve data meeting
specified criteria. Large enterprises
usually have massive amounts of data stored
in various places on a number of computers
and in a variety of formats[,] ranging from
common database formats for commercially
popular database software to customized
report formats specific to the enterprise,
that are usually being continually revised.
The identification of the goods enumerates
print data streams, report formats and
database formats to convey the idea that
[the] software is intended to be used for
such massive collections of varied data.

1 Ser. No. 75/419,109, filed on January 16, 1998, which alleges a bona
fide intention to use such term in commerce.
Ser. No. 75/419,109
3
Search and retrieval software used to deal
with such a problem has come to be referred
to in the industry as "data mining"
software. ....
While further noting that the Examining Attorney, in
support of the refusal to register, has made of record
definitions from WWWebster Dictionary (1999) which define "info"
as a noun meaning "information" and list "extract" in relevant
part as a verb signifying "1 a : to draw forth (as by research)
" and "5 a : to select (excerpts) and copy out or
cite," applicant maintains that the mark "INFOXTRACT" is not
merely descriptive of a feature, purpose or use of its goods, as
contended by the Examining Attorney, but is only suggestive
thereof. Citing language from In re Quik-Print Copy Shop, Inc.,
616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980), that (footnote
omitted) "[a] mark is merely descriptive if it immediately
conveys to one seeing or hearing it knowledge of the
ingredients, qualities, or characteristics of the goods or
services with which it is used; whereas, a mark is suggestive if
imagination, thought, or perception is required to reach a
conclusion on the nature of the goods or services," applicant
insists that mere descriptiveness of a mark "requires immediacy
in the conveyance of the feature, purpose or use" of the
associated goods or services. According to applicant, if a mark
"requires a modicum of imagination or thought before one is able
Ser. No. 75/419,109
4
to determine the nature of applicant's product," then the mark
is at most highly suggestive of the goods or services with which
it is used, citing BellSouth Corp. v. Planum Technology Corp.,
14 USPQ2d 1555, 1556 (TTAB 1990).
In light of the above, applicant contends that the
Examining Attorney "has not focused on the immediacy of the
meaning or on any quantum of imagination, thought or perception,
but rather on the strength of the suggestion" imparted by the
mark "INFOXTRACT." While applicant concedes that such mark,
with respect to its computer software for extracting selected
data content from computer formats, "strongly suggests a
property or function of the goods," applicant asserts that
because "a quantum of imagination, thought or perception is
required, there is no immediacy" as to the meaning of the mark
"INFOXTRACT" and hence it is not merely descriptive of the
goods. In particular, applicant urges that not only does the
mark "INFOXTRACT" not have any dictionary meaning or any usage
in the data mining software field, but the Examining Attorney
"has not shown or asserted that the term has any well understood
and recognized meaning in the field or that it is even used at
all in the field" by others.
Applicant also argues that the effects of certain
visual and phonetic elements of its mark preclude the immediate
Ser. No. 75/419,109
5
recognition of any merely descriptive significance. Applicant
specifically maintains, in this regard, that:
In addition, the sound and appearance
of the mark give the mark a distinct
trademark look and feel beyond any
suggestive or descriptive overtones. The
mark has a design integrity achieved because
of the central position of "X" for the
English syllable "ex" which has the visual
effect of a fulcrum balancing "info" to the
left and "tract" to the right. That is, the
mark is more than a misspelled juxtaposition
of two English words; it has a visual design
aspect to it that is not lost on consumers
and that contributes to the quantum of
imagination, thought or perception needed to
understand the meaning conveyed by the mark.
As a word of the English language or
juxtaposition of two words, the mark is
ungrammatical. Grammatically correct
constructions are "info-extracting" software
or "info-extraction" software. The only
reasonable reaction to hearing "INFOXTRACT
software" is that it is a marketing name for
a kind of software that probably has
something to do with extracting information
from something. But even here the nature of
the software suggested by the mark is
ambiguous. Is it statistical-analysis
software used to look for trends in data and
thereby extract information from the data,
or is it data-mining (search and retrieval)
software used to extract raw data from files
stored on computer media (without regard to
any information that the data may contain).
The whole point of a suggestive mark is to
suggest something about the goods. If the
meaning is not immediate, the mark is not
merely descriptive.
Here the meaning is not immediate
because (a) the appearance of the mark (the
use of X for "ex" and the contraction into a
single word), which has the commercial
Ser. No. 75/419,109
6
impression of a made-up term in a
characteristic trademark format; (b) the
ungrammatical construction, which is not
even in the form of any readily apparent
non[-] grammatical vernacular usage; [and]
the ambiguity of meaning (information-
analysis software or data-mining software).
It takes a modicum of thought and perception
if not imagination to sort it out.
The Examining Attorney, on the other hand, contends
that because a principal purpose, function or use of applicant's
software "is extraction of information," the term "INFOXTRACT"
is merely descriptive thereof. In particular, the Examining
Attorney argues that:
The dictionary definitions of the terms
"info" and "extract" provided in the final
office action ... include the following
meanings: "information," and "to select
(excerpts) and copy out or cite." The
applicant's goods are computer software for
the purpose, at least in part, of extracting
selected data or information. The software
provides the toll [sic] by which information
is selected and extracted. The goods in
fact serve the purpose, function and/or use
of extracting information and as such the
proposed mark is highly likely to be
recognized by prospective purchasers as
identifying such function, feature, purpose
and/or use.
With respect to applicant's remaining arguments, the
Examining Attorney contends that:
A slight misspelling of a word will not
turn a descriptive word into a non-
descriptive mark. See C-Thru Ruler Co. v.
Needleman, 190 USPQ 93 (E.D. Pa. 1976) (C-
THRU held to be the equivalent of "see-
through" and therefore merely descriptive of
Ser. No. 75/419,109
7
transparent rulers and drafting aids). The
fact that a term, such as "INFOXTRACT," is
not found in the dictionary is not
controlling on the question of
registrability where the examining attorney
can show that the term is highly likely to
have a well understood and recognized
meaning for purchasers and/or users of the
goods based upon the meaning of the term as
[a] whole. See In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987)
(SCREENWIPE held generic for premoistened
antistatic cloths for cleaning computer and
television screens); In re Orleans Wines,
Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPREAD
held merely descriptive of jellies and
jams).
In consequence thereof, the Examining Attorney concludes that
the term "INFOXTRACT" is merely descriptive of applicant's goods
inasmuch as:
The average purchaser of the
applicant's goods is highly likely to
understand that the term "extract" as it
appears in the proposed mark "INFOXTRACT" is
meant to convey functional aspects of the
goods. The term "extract" has specific
meaning in relation to the applicant's
software that provides a means to gather
information. Through the use of applicant's
software, the user of these goods will be
able to extract information through the use
of a computer. .... Purchasers and users
of these goods are highly likely to
comprehend this meaning and realize that the
applicant's software is, at least in part[,]
a tool for the purpose of extracting
information.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
Ser. No. 75/419,109
8
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987) and In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary
that a term describe all of the properties or functions of the
goods or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not 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 those 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. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product [or service]
is from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re
Ser. No. 75/419,109
9
Abcor Development Corp., supra at 218, and In re Mayer-Beaton
Corp., 223 USPQ 1347, 1349 (TTAB 1984). As has often been
stated, there is a thin line of demarcation between a suggestive
mark and a merely descriptive one, with the determination of
which category a mark falls into frequently being a difficult
matter involving a good measure of subjective judgment. See,
e.g., In re Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS
Corp. of the Americas, 200 USPQ 57, 58 (TTAB 1978). The
distinction, furthermore, is often made on an intuitive basis
rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd., 228
USPQ 57, 58 (TTAB 1985).
In the present case, we are constrained to agree with
applicant that, in light of the use of the term "INFO" instead
of the word "INFORMATION" and the utilization of the letter "X"
in place of the syllable "EX" in the word "EXTRACT," the
phonetic and visual effects imparted thereby to the mark
"INFOXTRACT" are sufficient to slow or delay recognition of the
pertinent meaning of the mark, even among the technically
knowledgeable purchasers and users of applicant's goods.
Specifically, while those in the field of computer software for
data mining would readily understand information extraction as a
purpose, function or use of such goods, the combination of the
word "INFO" with the terminology "XTRACT" results in a mark,
Ser. No. 75/419,109
10
when first encountered, would just as immediately be regarded as
if it were "IN-FOX-TRACT" rather than "IN-FO-X-TRACT." Stated
otherwise, the amalgam formed by joining the term "INFO" and the
terminology "XTRACT" is more than simply a slight misspelling of
the designation "INFOEXTRACT" (which combination would tend to
be pronounced the same as if it were the separate words "INFO
EXTRACT"). Instead, the mark "INFOXTRACT" creates just enough
of an initial ambiguity as to require a modicum of imagination,
perception or thought in order for even sophisticated customers,
such as those who would utilize applicant's computer software
for extracting selected data content from computer formats, to
pause slightly before comprehending that the mark designates a
product designed to extract info from a database. As such the
mark "INFOXTRACT" is no more than highly suggestive of
applicant's data mining software. See, e.g., In re C. J. Webb,
Inc., 182 USPQ 63, 64 [term "Brakleen" held suggestive rather
than merely descriptive of a chemical composition for cleaning
and degreasing automotive brake parts].
At the very least, we have doubt that applicant's mark
immediately conveys the purpose, function or use of its goods.
In view thereof, we resolve such doubt, in accordance with the
Board's practice, in favor of the publication of applicant's
mark for opposition. See, e.g., In re Conductive Systems, Inc.,
220 USPQ 84, 86 (TTAB 1983); In re Morton-Norwich Products,
Ser. No. 75/419,109
11
Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet Bakers, Inc.,
173 USPQ 565 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
reversed.
E. W. Hanak
G. D. Hohein
L. K. McLeod
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board