International Business Machines Corp.

Trademark Trial and Appeal Board

Dec 18, 2008

No. 77074831 (T.T.A.B. Dec. 18, 2008)

Mailed:
December 18, 2008
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Business Machines Corp.
________

Serial No. 770748311
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Gina M. Lyons for International Business Machines Corp.

Jill C. Alt, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______

Before Walsh, Mermelstein and Ritchie, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

International Business Machines Corp. (applicant) has
applied to register the mark shown below on the Principal
Register for goods and services now identified as:
computer software for use in manipulating and
transforming web content, creating custom
interfaces and personal preference
accommodations; computer software for use in
enlarging text and reducing visual clutter of web
pages, reading web page text aloud, and enhancing
ease of use of the web browser, mouse and

1 Application Serial No. 77074831 filed January 3, 2007, claiming
a bona fide intention to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77074831
2
keyboard; computer software for assisting visual,
hearing or motor impaired users with access and
use of web content and computers; and instruction
manuals sold as a unit therewith, in
International Class 9;

providing online tutorials, online educational
demonstrations, in International Class 41; and

philanthropic and charitable services, namely,
providing free or discounted computer technology
to schools and not-for-profit organizations;
computer consultation and computer systems design
services for others; technical support services,
namely, troubleshooting of computer hardware and
computer software problems; installation,
updating and maintenance of computer software;
providing online help features in the field of
computer software, in International Class 42.

The application also includes the following statement:
“The mark consists of a stylized ‘W’ followed by a vertical
line followed by the two lines of the text ‘web adaptation
technology.’”
The Examining Attorney has finally refused
registration based on the determination (1) that the
wording WEB ADAPTATION TECHNOLOGY in the mark merely
describes the goods and services under Trademark Act
Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and therefore (2)
Serial No. 77074831
3
that applicant must disclaim WEB ADAPTATION TECHNOLOGY
under Trademark Act Section 6, 15 U.S.C. § 1056. Both
applicant and the Examining Attorney have filed briefs. We
affirm.
Before addressing the merits of the refusal, we must
attend to two evidentiary objections.
First, applicant objects to our consideration of
evidence the Examining Attorney submitted only with the
office action dated July 17, 2008, and applicant also
requests that we not consider any arguments based on that
evidence.
The Examining Attorney characterizes the office action
in question as a response to a request for reconsideration.
Applicant filed a request for reconsideration on April 2,
2008, at the same time it filed its notice of appeal. On
April 8, 2008, the Examining Attorney responded, denied the
request and maintained the final refusal. On April 15,
2008, the Board advised applicant that the appeal was
resumed and that its brief was due in sixty days.
Applicant then submitted its appeal brief on June 11, 2008.
On June 12, the Board noted that applicant had filed its
brief and forwarded the file to the Examining Attorney for
preparation and filing of her brief.
Serial No. 77074831
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Instead of filing a brief, on July 17, 2008, the
Examining Attorney issued another response to a request for
reconsideration with more evidence. The Examining Attorney
did so after the time for filing her brief had expired.
The Board subsequently, based on limited information, reset
the time for the Examining Attorney to file her brief, and
the Examining Attorney filed her brief within that time.
In her brief the Examining Attorney attempts to
explain the second response to a request for
reconsideration stating, “At this point there was an
electronic glitch in the proceedings that made it appear as
if the applicant had the right to file a second request for
reconsideration.” Examining Attorney’s Brief at 2. The
Examining Attorney does not claim that a second request for
reconsideration was ever filed, nor do we find any evidence
of such a request in the record. The Examining Attorney’s
July 17, 2008 Office action begins by stating, “Applicant
is requesting reconsideration of a continuation of a final
refusal mailed 4-8-08.” The only paper applicant filed
between April 8 and July 17 was its appeal brief.
Accordingly, we find no evidence of a “glitch,” electronic
or otherwise, in the record, nor do we find evidence of any
other basis for the issuance of the July 17, 2008 office
action. Therefore, we sustain the objection and exclude
Serial No. 77074831
5
from consideration any evidence which was submitted only
with the July 17, 2008 Office action. Furthermore, under
the circumstances, we conclude that it would be improper
for us to consider the Examining Attorney’s brief. If the
Examining Attorney had good cause to request additional
time to file her brief, she should have filed a request for
additional time with the Board, rather than issue an action
in response to a “phantom” request for reconsideration.
The Examining Attorney made no such request.2 Therefore, we
have not considered the Examining Attorney’s brief.
Secondly, the Examining Attorney has also objected to
evidence she asserts was filed only with applicant’s brief
on the basis that the evidence is untimely under Trademark
Rule 2.142(d), 37 C.F.R. § 2.142(d). Applicant has not
responded to this objection. The evidence in question
consists of a listing of results from a search of the
Google Search Engine for the term “web adaptation
technology” and web pages from three parties, other than
applicant, discussing products similar to those applicant
identifies in the application. Applicant had submitted

2 If the Examining Attorney had cause to issue another office
action at this point, the Examining Attorney should have
requested a remand from the Board for that purpose. Once the
Board resumed the appeal, the Examining Attorney lacked
jurisdiction to issue a further action. The Examining Attorney
did not request a remand.
Serial No. 77074831
6
this same evidence previously with its request for
reconsideration. The earlier submission was timely.
Accordingly, we overrule this objection.
We now turn to the merits. 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. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987); and In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute or function of the
goods or services. See In re H.U.D.D.L.E., 216 USPQ 358,
359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338, 339
(TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
identified in the application, and the possible
significance that the term would have to the average
purchaser or user of the goods or services. In re Polo
Serial No. 77074831
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International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Applicant argues that WEB ADAPTATION TECHNOLOGY is not
merely descriptive of its goods and services because, “…WEB
ADAPTATION TECHNOLOGY could suggest multiple possible
meanings when used in connection with Applicant’s goods and
services.” Applicant’s Brief at 3. Applicant argues
further that, “… consumers will not know which of the
various meanings, if any, are intended by the Mark.” Id.
at 4. Applicant also argues that when one views WEB
ADAPTATION TECHNOLOGY in its entirety, rather than the
component words individually, the unitary phrase possesses
a unique, nondescriptive meaning, citing cases, such as In
re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not
merely descriptive of 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”).
Applicant specifically disputes the Examining Attorney’s
determination that “web adaptation” has a common
descriptive meaning as applied to applicant’s goods and
services.
With the first Office action of March 7, 2007, the
Examining Attorney provided dictionary definitions of
“adaptation” meaning “… the act or process of adapting…”
Serial No. 77074831
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and “technology” meaning “… a manner of accomplishing a
task especially using technical processes, methods or
knowledge…” Attachments to March 7, 2007 Office Action.
We take judicial notice of the fact that “WEB” refers to
the “WORLD WIDE WEB” in this context.3 Applicant’s
identification of goods likewise uses “web” descriptively
in this sense.
With the April 8 response to applicant’s request for
reconsideration, the Examining Attorney provided evidence
from various web sites to support her conclusion that WEB
ADAPTATION TECHNOLOGY is merely descriptive of the
identified goods and services. Applicant correctly points
out that the examples fail to show use of either WEB
ADAPTATION TECHNOLOGY or WEB ADAPTATION, as such. The
evidence does include an example of the use of “adaptation”
in the general context of the identified goods and
services: an excerpt from webopedia.com states, “The
Internet Content Adaptation Protocol (ICAP) enables
enterprises to choose the best of breed applications and
infrastructure…” Attachment to Office Action of April 8,
2008.

3 We take judicial notice from Merriam-Webster’s Collegiate
Dictionary (11th ed. 2003). University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 77074831
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Applicant does not seriously dispute the relevant
meanings of the individual words which make up the mark.
We find wholly unpersuasive applicant’s argument that the
combination of the words to form WEB ADAPTATION TECHNOLOGY
results in a distinctive mark. Quite the contrary, the
phrase WEB ADAPTATION TECHNOLOGY directly describes the
identified goods and services. This is a case where the
dictionary meanings of the component words are sufficient
to establish that the entire phrase WEB ADAPTATION
TECHNOLOGY is merely descriptive of the identified goods
and services.
Applicant’s identification of goods includes “computer
software for use in manipulating and transforming web
content, creating custom interfaces and personal preference
accommodations software.” This software is “technology”
which enables a “web” user to “adapt” his or her computer
to certain circumstances. The identification also provides
an example of the type of circumstances where the
“adaptation” might not only be useful but necessary, that
is, in the case of “visual, hearing or motor impaired
users.”
There is nothing at all incongruous or otherwise
distinctive about the combination of words. See, e.g., In
re Tower Tech, Inc., 64 USPQ2d 1314, 1317 (TTAB 2002)
Serial No. 77074831
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(SMARTTOWER merely descriptive of commercial and industrial
cooling towers). No multistage reasoning process is
required to arrive at the plain meaning of WEB ADAPTATION
TECHNOLOGY as applied to the identified goods.
Accordingly, we conclude that WEB ADAPTATION TECHNOLOGY is
merely descriptive of applicant’s goods.
Applicant has not raised any specific arguments in
relation to the service mark classes covered by the
application. Nor did the Examining Attorney discuss the
services specifically in any of the office actions.
We also conclude that WEB ADAPTATION TECHNOLOGY is
merely descriptive of applicant’s educational services in
Class 41, which are identified as, “providing online
tutorials, online educational demonstrations.” Although
the subject matter of the educational services is not
specified, in the absence of any limitation which would
exclude applicant’s software, we conclude that the subject
matter of the education services includes the identified
software. Therefore, WEB ADAPTATION TECHNOLOGY is merely
descriptive of the Class 41 services also.
We conclude likewise that WEB ADAPTATION TECHNOLOGY is
merely descriptive of the Class 42 services, identified as,
“philanthropic and charitable services, namely, providing
free or discounted computer technology to schools and not-
Serial No. 77074831
11
for-profit organizations; computer consultation and
computer systems design services for others; technical
support services, namely, troubleshooting of computer
hardware and computer software problems; installation,
updating and maintenance of computer software; providing
online help features in the field of computer software.”
For example, the “consulting” and “installation” services
could include such services related to the type of software
identified in Class 9 in the application. As such, WEB
ADAPTATION TECHNOLOGY also merely describes those and other
services identified in Class 42.
Furthermore, although applicant argues that WEB
ADAPTATION TECHNOLOGY could identify many types of
technology, this is simply because the term is a broad one.
That is, WEB ADAPTATION TECHNOLOGY is broad enough to
describe not just the goods and services applicant
identified here, but other goods and services in the same
general category. That fact in no way contradicts our
conclusion that WEB ADAPTATION TECHNOLOGY merely describes
the goods and services applicant identified here.
Also, as we stated above, it is axiomatic that we must
evaluate the mark in relation to the goods and services
identified, not in the abstract. In re Bright-Crest, Ltd.,
204 USPQ at 593. Also, the fact that the mark may have
Serial No. 77074831
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meanings, even nondescriptive meanings, in another context
is not relevant for purposes of our determination here. In
re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB
2007).
We likewise reject applicant’s arguments that, because
others have not used WEB ADAPTATION TECHNOLOGY to identify
products similar to those of applicant, the term is not
merely descriptive. The Board has stated:
… a word need not be in common use in an industry
to be descriptive, and the mere fact that an
applicant is the first to use a descriptive term
in connection with its goods, does not imbue the
term with source-identifying significance. In re
National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983) (the fact that the
applicant may be the first to use a merely
descriptive designation does not “justify
registration if the term projects only merely
descriptive significance.”).

In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006).
Also, the mere absence of a dictionary entry for the
relevant term does not establish that the term is not
merely descriptive. See In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Orleans Wines,
Ltd., 196 USPQ 516 (TTAB 1977).
Decision: We affirm the refusal to register under
Trademark Act Section 2(e)(1) and the requirement for a
disclaimer of WEB ADAPTATION TECHNOLOGY under Trademark Act
Section 6. However, if applicant files the disclaimer of
Serial No. 77074831
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WEB ADAPTATION TECHNOLOGY within thirty days of the mailing
date of this decision, we will set this decision aside and
return the application to processing. The required form
for the disclaimer is as follows: “No claim is made to the
exclusive right to use WEB ADAPTATION TECHNOLOGY apart from
the mark as shown.” See Trademark Rule 2.142(g), 37 C.F.R.
§ 2.142(g).